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 .
DETAILED ACTION
This Final Office action is based on the 17/997459 application originally filed October 28, 2022.
Amended claims 15-32, filed August 14, 2025, are pending and have been fully considered. Claims 1-14 have been canceled. Claim 32 is new.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 15-20 and 24-32 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Grandjon (US 2011/0305656).
Regarding Claims 15, 24, 27-28 and 31-32
Grandjon discloses in paragraph 0005, a process for fragrancing human keratin materials or clothing, which consists in applying to the said keratin materials or the said clothing an aqueous fragrancing composition.
Grandjon discloses in paragraphs 0024-0028, a water-based fragrancing composition comprising, in a cosmetically acceptable medium: a) at least 5% by weight of water relative to the total weight of the composition; b) at least 2% by weight of a fragrancing substance; c) at least one volatile linear alkane or a mixture of volatile linear alkanes. Grandjon further discloses in paragraph 0199, the emulsions generally contain at least one emulsifier chosen from amphoteric, anionic, cationic and nonionic emulsifiers, used alone or as a mixture. Grandjon discloses in paragraph 0203, emulsions may also be prepared without emulsifying surfactants or containing less than 0.5% thereof relative to the total weight of the composition, by using appropriate compounds.
Grandjon does not disclose the composition having an ethanol content and therefore Grandjon has met the limitation of the present invention of having less than 10 percent by weight of ethanol content (less than 10 weight percent encompasses zero).
The claimed invention is anticipated by the reference because the reference teaches a composition which comprises all of the claimed components. In the alternative, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding Claims 16, 18-20 and 24
Grandjon discloses in paragraph 0039, the composition contains one or more volatile linear alkanes. The term “one or more volatile linear alkanes” means, without preference, “one or more volatile linear alkane oils”.
Grandjon discloses in paragraph 0059-0063, an alkane that is suitable for use in the invention may be a volatile linear alkane comprising from 7 to 14 carbon atoms. Preferably, the “volatile linear alkanes” that are suitable for use in the invention comprise from 8 to 14 carbon atoms. Preferably, the “volatile linear alkanes” that are suitable for use in the invention comprise from 9 to 14 carbon atoms. Preferably, the “volatile linear alkanes” that are suitable for use in the invention comprise from 10 to 14 carbon atoms. Preferably, the “volatile linear alkanes” that are suitable for use in the invention comprise from 11 to 14 carbon atoms.
Grandjon discloses in paragraph 0070, as examples of linear alkanes that are suitable, mention may be made of n-heptane (C7), n-octane (C8), n-nonane (C9), n-decane (C10), n-undecane (C11), n-dodecane (C12) (molecular weight 170.34 g/mol), n-tridecane (C13) and n-tetradecane (C14) (molecular weight of 198.39 g/mol), and mixtures thereof. According to one particular embodiment, the volatile linear alkane is chosen from n-nonane, n-undecane, n-dodecane, n-tridecane and n-tetradecane, and mixtures thereof.
Grandjon discloses in paragraph 0084-0087, in particular, the said mixture of alkanes according to the invention contains: less than 2% by weight of branched hydrocarbons, and/or less than 2% by weight aromatic hydrocarbons, and/or less than 2% by weight of unsaturated hydrocarbons in the mixture.
Regarding Claim 17
Grandjon discloses in paragraph 0005, a process for fragrancing human keratin materials or clothing, which consists in applying to the said keratin materials or the said clothing an aqueous fragrancing composition.
Grandjon discloses in paragraphs 0024-0028, a water-based fragrancing composition comprising, in a cosmetically acceptable medium: a) at least 5% by weight of water relative to the total weight of the composition; b) at least 2% by weight of a fragrancing substance; c) at least one volatile linear alkane or a mixture of volatile linear alkanes. Grandjon discloses in paragraph 0084-0087, in particular, the said mixture of alkanes according to the invention contains: less than 2% by weight of branched hydrocarbons, and/or less than 2% by weight aromatic hydrocarbons, and/or less than 2% by weight of unsaturated hydrocarbons in the mixture. Grandjon further discloses in paragraph 0199, the emulsions generally contain at least one emulsifier chosen from amphoteric, anionic, cationic and nonionic emulsifiers, used alone or as a mixture. Grandjon discloses in paragraph 0203, emulsions may also be prepared without emulsifying surfactants or containing less than 0.5% thereof relative to the total weight of the composition, by using appropriate compounds.
The claimed invention is anticipated by the reference because the reference teaches a composition which comprises all of the claimed components. In the alternative, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding Claim 25
Grandjon discloses in paragraphs 0024-0028, a water-based fragrancing composition comprising, in a cosmetically acceptable medium: a) at least 5% by weight of water relative to the total weight of the composition; b) at least 2% by weight of a fragrancing substance; c) at least one volatile linear alkane or a mixture of volatile linear alkanes. Grandjon further discloses in paragraph 0199, the emulsions generally contain at least one emulsifier chosen from amphoteric, anionic, cationic and nonionic emulsifiers, used alone or as a mixture. Grandjon discloses in paragraph 0203, emulsions may also be prepared without emulsifying surfactants or containing less than 0.5% thereof relative to the total weight of the composition, by using appropriate compounds.
Regarding Claim 26
Grandjon discloses in paragraph 0197, the water content of the composition will preferably be from 5% to 93% by weight relative to the total weight of the composition.
Regarding Claim 29
Grandjon discloses in paragraph 0191, the composition may constitute a fragrancing, care or treatment composition for keratin materials, and may especially be in the form of eau fraîche; eau de toilette; eau de parfum; aftershave lotion; care fluid, milk, cream, pomade or balm; body hygiene product, such as deodorants, shower gels, bath products, shampoos or scrubs; in the form of a fragrancing two-phase or three-phase lotion (eau de toilette phase/hydrocarbon-based oil and/or silicone oil and/or fluoro oil phase).
Regarding Claim 30
Grandjon discloses in paragraph 0195, the fragrancing compositions according to the invention may also be applied in the form of fine particles by means of pressurization devices. The devices in accordance with the invention are well known to those skilled in the art and comprise non-aerosol pumps or “atomizers”, aerosol containers comprising a propellant and also aerosol pumps using compressed air as propellant.
Claim(s) 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grandjon (US 2011/0305656) in view of Bisson et al. (FR 2952534 A1) hereinafter cited under English Translation “Bisson”.
Regarding Claims 21-23
Grandjon discloses the perfuming composition of claim 15 of the present invention but fails to further teach the specific branched alkanes of claims 21-23 of the present invention.
Bisson discloses on page 5, the volatile hydrocarbon oils may be chosen from hydrocarbon-based oils having 8 to 16 carbon atoms, and especially C8-C16 branched alkanes such as C8-C16 isoalkanes of petroleum origin (also known as isoparaffins), such as isododecane ( also called 2,2,4,4,6-pentamethylheptane), isodecane, isohexadecane, the oils sold under the trade names Isopars or permetyls, the branched C8-C16 esters the isoparate neopentanoate. hexyl, and mixtures thereof. Other volatile hydrocarbon oils such as petroleum distillates, in particular those sold under the name Shell or by Shell, can also be used. According to one embodiment, the volatile solvent is chosen from volatile hydrocarbon oils having 8 to 16 carbon atoms and mixtures thereof.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the volatile hydrocarbons of Bisson as the branched alkanes of Grandjon. The motivation to do so is to use volatile hydrocarbons in a perfuming composition in order to aid in the improvement of odour and/or colour of the fragrance.
Response to Arguments
Applicant's arguments filed August 14, 2025 have been fully considered but they are not persuasive.
Applicants argued: “While Grandjon teaches that "emulsions may also be prepared without emulsifying surfactants or containing less than 0.5%," this teaching must be read in connection with Grandjon's express caveat that such compositions are prepared only "by using appropriate compounds, for example polymers with emulsifying properties ... ." Grandjon at paragraph [0203] (emphasis supplied). Grandjon then goes on to teach a list of several suitable emulsifying polymers. In other words, the compositions in Grandjon without emulsifying surfactants or containing less than 0.5% of an emulsifying surfactant contain other emulsifying agents, such as emulsifying polymers. The teaching in Grandjon that compositions free of emulsifying surfactants should instead contain a compound "with emulsifying properties" is further evidenced by the Examples disclosed in Grandjon. Accordingly, Grandjon fails to teach or suggest the claimed composition comprising, inter alia, "less than 0.1% by mass of an emulsifying agent" and, as such, fails to teach an embodiment comprising each and every element of the claims.”.
Applicants arguments are not deemed persuasive. It is maintained, Grandjon has met the limitation of "less than 0.1% by mass of an emulsifying agent" due to Grandjon is not ONLY relied upon for the disclosed examples but rather its entire teaching. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Additionally, Grandjon the claimed emulsifying agent within the list of emulsifier. Of the prior art it is not picking and choosing to select one element from one list, however long the list may be. When the species is clearly named, the selection from a long list does not avoid a 103 rejection. See Ex parte A, 17 USPQ 2d 1716 (Bd. Pat. App. & Inter. 1990).
Applicant argued: “The Office therefore concludes that it would have been obvious to combine the teachings of Bisson with those of Grandjon "to use volatile hydrocarbons in a perfuming composition in order to aid in the improvement of odour and/or colour of the fragrance." Id. Applicant respectfully traverses. As discussed above, Grandjon fails to teach or suggest every element of the claims, including a liquid perfuming cosmetic composition comprising less than 0.1% by mass of an emulsifying agent. Bisson fails to remedy the deficiencies of Grandjon. Bisson does not mention emulsifiers at all and is instead directed towards a "perfuming composition comprising in a cosmetically acceptable medium ... at least 40% by weight of a volatile alcohol and/or a volatile silicone and/or a volatile hydrocarbon oil.". Accordingly, the Office has failed to establish, as it must, any teaching or suggestion to modify the Grandjon reference, either in Grandjon alone or in combination with Bisson. Rather, Grandjon is clear on its face that, in the absence of emulsifying surfactants, the composition should include another emulsifying agent.”
Applicants arguments are not deemed persuasive. Bisson is not relied upon to teach the claimed emulsifying agents due to it is maintained Grandjon teaches the claimed emulsifying agents, as stated in the above rejection. It is maintained, Grandjon has met the limitation of "less than 0.1% by mass of an emulsifying agent" due to Grandjon is not ONLY relied upon for the disclosed examples but rather its entire teaching. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Additionally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Latosha Hines/Primary Examiner, Art Unit 1771