DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
With regard to Claims 19-20, the applicant specification does not mention the use or lack thereof of an adsorbent and more specifically activated carbon as an adsorbent. In the specification, paragraph [0002] merely mentions that patent literature 1 discloses a technique of performing decolorization using activated carbon as an adsorbent but does not further describe the use of and/or lack therefor activated carbon as an adsorbent in the present invention.
With regard to Claim 21, the applicants specification has no disclosure of the use or lack thereof of a catalyst in the present invention.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4, 11-13, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Goussevskaia et al. (herein referred to as Goussevskaia, WO 2009033247 A2) in view of Miller (“Oxidation of food grade oils”) with evidence from Ren et al. (herein referred to as Ren, “Study on the optimization of the decolorization of orange essential oil”)
With regard to Claim 4, Goussevskaia teaches the chemical deterpenation by means of the catalytic oxidation of the essential oils of citric fruits (the citrus oil of the instant claims) through a controlled catalytic oxidation (abstract). Goussevskaia teaches oxidizing a citrus essential oil, specifically a grapefruit essential oil, wherein the oxidation step include oxygen gas to contact the essential oil (page 4 lines 5-15, page 5 lines 12-14). Thus reading on the instant claims “ventilation” step. Further Goussevskaia teaches the ventilation step is performed within a range of 25° to 120℃ (page 5 lines 27-32). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); With regard to the oxygen gas, Goussevskaia teaches using an oxygen bubbler for the ventilation step and mechanically stirring (page 5 lines 27-32). It would have been obvious to one with ordinary skill in the art that through routine optimization of the oxygen bubbler and mechanical stirring to adjust the flow and stirring to achieve the desired volume of oxygen gas. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Goussevskaia teaches the method focuses on the oxidation of limonene a
monoterpenic chemical compound which is present in orange essential oils in an amount from 90 to 96 wt% (page 1 lines 6-9 and lines 18-19). It is well known in the art that the decrease of limonene results in a decolorized orange essential oil. This is evidenced by Ren that shows a decrease in limonene and an increase in oxygenated compounds, linalool and citral, results in a decolorized orange essential oil (“Color stability of crude and discolored orange
essential oil treated with activated clay”). Therefore, one with ordinary skill in the art would recognize that the method taught by Goussevskaia would inherently decolorize the grapefruit essential oil. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.
Goussevskaia teaches limonene is highly reactive and easily decomposed under the action of light, humidity, and high temperatures (page 1 lines 18-20). However Goussevskaia is silent to the light shielding condition. Applicant does not provide a definition for light shielding in their specification. Therefore, the examiner is interpreting the meaning by what would be common in the art, which means light shielding is defined as light is blocked either partially or fully from the reaction.
Miller teaches oxidation progresses at different rates depending on factors such as temperature, light, availability of oxygen (“What is oxidation?”). When oil oxidizes it produces a series of breakdown products in stages, starting with primary oxidation products (peroxides, dienes, free fatty acids), then secondary products (carbonyls, aldehydes, trienes) and finally tertiary products (“What is oxidation?”). Miller teaches light (UV) can trigger the oxidative degenerative cascade. Reduce the exposure of the oil to direct light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing of the claimed invention to modify Goussevskaia in view of Miller to control the exposure of the oil to light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”). By using brown glass/plastic containers or black plastic bags, Miller is clearly teaching the technique of light shielding. Through routine optimization, one with ordinary skill in the art would be able to find the correct amount of light exposure or amount of light shielding (i.e., Lux) necessary to progress the oxidative process enough to prevent or encourage the production of the ideal primary, secondary, or tertiary products desired. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With regard to Claim 11, Goussevskaia teaches the claimed method and therefore would inherently produce a decolorized oil. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
With regard to Claims 12 and 13, Goussevskaia teaches the method produces fragrant compounds for cosmetics, cleaners and personal hygiene products, flavor intensifiers for beverages and other food products (page 5 lines 15-19).
With regard to Claims 19 and 20, Goussevskaia teaches the method does not use an adsorbent and more specifically does not use activated carbon as an adsorbent (whole document).
Claim 21 is are rejected under 35 U.S.C. 103 as being unpatentable over Gajic et al. (herein referred to as Gajic, (“Influence of Air on Essential Oil Constituents”) in view of Goussevskaia (WO 2009033247 A2), Miller (“Oxidation of food grade oils”) with evidence from Ren ( “Study on the optimization of the decolorization of orange essential oil”).
With regard to Claim 21, Gajic teaches the major constituents of essential oils are categorized in two structural families with regard to hydrocarbon skeleton: terpenoids (monoterpenes, sesquiterpenes, diterpenes) and phenyl-propanoids (29.1 Introduction). Gajic teaches Terpenes, that is, mono- and sesquiterpenes, are commonly used as fragrance chemicals of natural origin and are widely used in perfumery, pharmaceutical, domestic, and occupational products (29.1 Introduction). Gajic teaches terpenes are susceptibility to oxidation upon air exposure, that is, autoxidation which could be shortly referred to as radical chain process that generates numerous primary and secondary oxidation products (29.1 Introduction). One with ordinary skill in the art would recognize autooxidation is a method of oxidation wherein no catalyst is required.
However, Gajic is silent to the oxidation of terpenes decolorizing the essential oil.
Goussevskaia teaches the chemical deterpenation by means of the catalytic oxidation of the essential oils of citric fruits (the citrus oil of the instant claims) through a controlled catalytic oxidation (abstract). Goussevskaia teaches oxidizing a citrus essential oil, specifically a grapefruit essential oil, wherein the oxidation step include oxygen gas to contact the essential oil (page 4 lines 5-15, page 5 lines 12-14). Thus reading on the instant claims “ventilation” step. Further Goussevskaia teaches the ventilation step is performed within a range of 25° to 120℃ (page 5 lines 27-32). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); With regard to the oxygen gas, Goussevskaia teaches using an oxygen bubbler for the ventilation step and mechanically stirring (page 5 lines 27-32). It would have been obvious to one with ordinary skill in the art that through routine optimization of the oxygen bubbler and mechanical stirring to adjust the flow and stirring to achieve the desired volume of oxygen gas. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Goussevskaia teaches the method focuses on the oxidation of limonene a
monoterpenic chemical compound which is present in orange essential oils in an amount from 90 to 96 wt% (page 1 lines 6-9 and lines 18-19). Goussevskaia teaches that by deterpenating citric fruit essential oil by converting limonene into oxygenated compounds there is greater economic and chemical interest (page 5 lines 20-23). It is well known in the art that the decrease of limonene results in a decolorized orange essential oil. This is evidenced by Ren that shows a decrease in limonene and an increase in oxygenated compounds, linalool and citral, results in a decolorized orange essential oil (“Color stability of crude and discolored orange
essential oil treated with activated clay”). Therefore, one with ordinary skill in the art would recognize that the method taught by Goussevskaia would inherently decolorize the grapefruit essential oil. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.
Therefore, it would have been obvious to one with ordinary skill in the art to modify Gajic to utilize the autoxidation method on grapefruit essential oil as taught by Goussevskaia to decolorize the essential oils and impart a greater is greater economic and chemical interest.
Goussevskaia teaches limonene is highly reactive and easily decomposed under the action of light, humidity, and high temperatures (page 1 lines 18-20). However Goussevskaia is silent to the light shielding condition. Applicant does not provide a definition for light shielding in their specification. Therefore, the examiner is interpreting the meaning by what would be common in the art, which means light shielding is defined as light is blocked either partially or fully from the reaction.
Miller teaches oxidation progresses at different rates depending on factors such as temperature, light, availability of oxygen (“What is oxidation?”). When oil oxidizes it produces a series of breakdown products in stages, starting with primary oxidation products (peroxides, dienes, free fatty acids), then secondary products (carbonyls, aldehydes, trienes) and finally tertiary products (“What is oxidation?”). Miller teaches light (UV) can trigger the oxidative degenerative cascade. Reduce the exposure of the oil to direct light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing of the claimed invention to modify Goussevskaia in view of Miller to control the exposure of the oil to light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”). By using brown glass/plastic containers or black plastic bags, Miller is clearly teaching the technique of light shielding. Through routine optimization, one with ordinary skill in the art would be able to find the correct amount of light exposure or amount of light shielding (i.e., Lux) necessary to progress the oxidative process enough to prevent or encourage the production of the ideal primary, secondary, or tertiary products desired. See MPEP 2144.05(II)(A) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Response to Arguments
Applicant's arguments filed 27 April 2026 have been fully considered but they are not persuasive.
First, applicant argues that there is an improper technical bridge between Goussevskaia and Ren regarding the inherency. Applicant argues that Goussevskaia and Ren are not properly combinable because they rely on fundamentally different technical mechanisms. However, Ren is merely relied upon as a technical evidence and is not modifying the primary reference. Thus, applicant’s argument is not found to be persuasive. Further applicant argues that Ren attributes its results to the high adsorption capacity for carotenoids and other pigments and not the reduction of limonene levels. The examiner acknowledges the method taught by Ren is different that what is limited by the instant claims, however Ren states, “Under the optimized condition, the content of limonene, which belongs to terpene hydrocarbons, decreased from 94.4 to 22.1%, whereas the linalool and citral contents increased from 1.4 to 3.1%”. In this case, as discussed above, Ren is not relied upon to teach the claimed method but merely support the relationship between limonene and the color of the essential oil. Thus because Ren teaches the reduction of limonene and the increase in oxygenated compounds results in the desired decolorization than Ren supports that the method taught by Goussevskaia would inherently discolor the essential oil because it teaches contacting citrus essential oil with oxygen as described in Ren. Therefore applicant argument is not found to be persuasive.
Next applicant argues that there is a lack of motivation to modify Goussevskaia for light shielding. Applicant argues that Goussevskaia merely describes a general property of limonene but does not suggest that Goussevskaia method should be carried out under light-shielded conditions. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Miller teaches light (UV) can trigger the oxidative degenerative cascade and teaches reducing the exposure of the oil to direct light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”). Thus, Miller teaches light shielding and provides ample motivation to as why one with ordinary skill in the art would modify Goussevskaia to include light shielding. Therefore, applicant’s argument is not found to be persuasive.
With regard to Miller, applicant argues that Miller teaches light shielding specifically to reduce the amount of oxidation from UV exposure while the applicant argues that the claimed method uses active ventilation to drive the controlled oxidation of pigments and thus applicant claims the combination is improper. However, Miller is clearly teaching blocking UV light to assist in controlled oxidation. Therefore the teachings of Miller are still important to the claimed method because the teachings of Miller are clear in blocking the UV light to achieve the desired amount of oxidation not necessarily completely removing the oxidation. In addition Miller does not mention other methods of oxidation and doesn’t necessarily completely remove oxidation but merely talks about using light shielding the control the amount of oxidation. Therefore applicants argument is not found to be persuasive.
Next applicant argues that the claimed ranges are critical in achieving decolorization “while minimizing changes in its flavor or fragrance. Applicant points to comparative example 7-3 and comparative example 7-2 to teaches that exceeding 100℃ or increasing ventilation beyond 10 vvm results in a destroyed aroma balance and a significant decline in sensory quality. The examiner would like to highlight MPEP 716.02(d)(II) which states To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In this case, comparative example 7-3 only shows results for a temperature of 120℃ and thus does not show a sufficient number of tests both inside and outside the claimed range. The same thing can be said about comparative example 7-2 which only shows a ventilation volume of 15 vvm which again is not a sufficient amount of tests to clearly shows unexpected results. Therefore, applicant’s argument is not found to be persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Muncie (US 3093630 A) teaches the purification of limonene from citrus products
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/K.I.D./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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