FINAL 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/02/2025 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
However, Foreign Patent Document, CN11555146A, is not considered because the document is not in English.
In addition, the following Non-Patent Literature documents are not considered because they are not in English:
"Chinese Application Serial No. 202180032929, Decision of Rejection mailed 02-28-24";
"Chinese Application Serial No. 2021 80032929.0, Decision of Reexamination mailed 03-31- 25";
"Chinese Application Serial No. 202180032929.0, Office Action mailed 02-17-25";
"Chinese Application Serial No. 202180032929.0, Office Action mailed 06-19-23";
"Chinese Application Serial No. 202180032929.0, Office Action mailed 11-07-23"; and
"Chinese Application Serial No. 2021 80032929.0, Response filed 02-1 9-24 to Office Action mailed 1 1-07-23".
Status of the Claims
This action is in response to papers filed 12/02/2025 in which claim 14 was canceled; and claims 1-13 and 15-20 were amended. All the amendments have been thoroughly reviewed and entered.
Claims 1-13 and 15-20 are under examination.
Withdrawn Objections/Rejections
The Examiner has re-weighted all the evidence of record. Any rejection and/or objection not specifically addressed below is hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claim Objections
Claim 4 remains objected to because of the following informalities: “the at least one substantially non-odorous is chosen from … and mixtures thereof” remains an improper Markush language. Please amend claim 4 as follows:
Insert “the group consisting of” after “chosen from” in line 2 of claim 4;
Change “or” back to “and” on page 4 of the latest claim set (see the “or” before the R15); and
Remove the “and” after “not hydrogen;” on page 10 of the latest claim set.
Appropriate correction is required.
Claim 4 remains objected to because of the following informalities: please add an “or” after the group recited in R2, R3, R4, R5, and R11 on page 1-4 of the latest claim set. For example, the R2 group should be amended as follows: R2 is selected from hydrogen, (C2-C20)alkyl, (C2-C20)alkenyl, (C2-C20)alkynyl, or –[R6R7(R8)0]wR9”. Appropriate corrections are required.
New Rejections
Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 112 – NEW MATTER
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 1-13 and 15-20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-13 and 15-20 introduce new matter as the claims recite the limitation: “a multilayer coating composition.” There is no support in the specification for this limitation as it pertain to “multilayer”.
Applicant asserted that support for the amendment can be found at least in paragraphs [0018], [0040], [0043]-[0045], [0086], [0087], and [0096] of the as-filed application (see Remarks filed 12/02/2025, page 15, 2nd paragraph).
However, after a thorough review of said paragraphs [0018], [0040], [0043]-[0045], [0086], [0087], and [0096]as well as, throughout the specification, there appeared to be no support for the coating composition to be “multilayer.” Nowhere in the specification discloses anything relating to multilayer.
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matters of claim 1-13 and 15-20 as amended at the time of filing of the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 12, the recitation of “the coating composition is a primer” renders the claim indefinite because claim 12 is dependent from claim 1, and said claim 1 recites that the coating composition comprises “a primer composition.” Thus, it is unclear how claim 12 can be limited to a primer when claim 1 already recites that the coating composition contains a primer composition. As such, the metes and bounds of whether the primer in claim 12 is the same or different from primer composition of claim 1, is unclear.
As a result, claim 12 does not clearly set forth the metes and bounds of patent protection desired.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 is not further limiting from claim 1 because claim 12 recites that the coating composition is a primer, yet claim 1 already recites that the coating composition comprises a primer composition.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Maintained-Modified Rejections
Modification Necessitated by Applicant’s Claim Amendments
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-7 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holland et al (WO 2019/156708 A1; cited in IDS filed 12/04/2022).
Regarding claim 1, Holland teaches a composition comprising carrier, a substantially non-odorous fragrance modulator, and a fragrance material, wherein the composition is brought into contact with or mixed into a consumer product or the composition is applied human skin and/or human hair (Abstract; pages 5-143). Holland teaches the consumer product is in the form of a perfume or a solid fragrance (pages 93-94). Holland further teaches the substantially non-odorous fragrance modulator is present in the amount of from about 0.1 wt% to about 20 wt%, relative to the total weight of the composition and the fragrance material is in a range of from about 0.04 wt% to about 30 wt%, relative to the total weight of the composition (pages 2 and 113-143). It is noted that the composition comprising carrier, a substantially non-odorous fragrance modulator, and a fragrance material as taught by Holland meets the structures of “a primer composition including a carrier; at least one substantially non-odorous fragrance modulator present in the amount of from about 0.1 wt% to about 50 wt%, relative to the total weight of the composition; and a fragrance material in a range of from about 0.01 wt% to about 50 wt%” as claimed and thus, the composition as taught by Holland is a “primer composition,” as there is no structural difference from the composition of Holland to that of the claimed primer composition.
Furthermore, as discussed above, Holland teaches the composition is brought into contact with or mixed into a consumer product, in which the consumer is in the form of a perfume of solid fragrance, thereby meets the claimed “fragrance composition in the contact with the primer composition.”
Given that the structural components the claimed primer composition and the claimed fragrance composition in contact with the primer composition have been taught by Holland, the claimed “multilayer coating composition” as recited in the preamble of claim 1 is an intended function/purpose of the claimed composition and thus, the composition that is contact with the consumer product of Holland would be capable of the intended function/purpose of being “multilayer coating composition,” as there is no structural difference between the composition that is contact with the consumer product of Holland to that of the claimed multilayer coating composition. It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, Holland teaches the substantially non-odorous fragrance modulator is present in an amount from about 5 wt% to about 20 wt% (page 9).
Regarding claim 3, Holland teaches the substantially non-odorous fragrance modulator is Glucam (pages [0053]-[0087] and [0111]-[0112]).
Regarding claim 4, Holland teaches the substantially non-odorous fragrance modulator include Sucrose Laurate, sodium hyaluronate, N-hexadecyl n-nonanoate, or mixtures thereof (pages [0053]-[0087] and [0114]-[0121]).
Regarding claim 5, Holland teaches the carrier is ethanol, dipropylene glycol, benzyl benzoate, diethyl phthalate, isopropyl myristate, C1 to C10 alkyl, alkenyl or alkynyl group, or mixtures thereof ([0087]-[0088] and [0105]-[0111]).
Regarding claim 6, Holland teaches the composition further contains an antioxidant (page 92). Regarding claims 7, Holland teaches the composition further contains capsules containing a fragrance (page 89).
Regarding claim 11, Holland teaches the fragrance material is present in the range of from about 0.5 wt% to about 25 wt% (pages 8-42).
Regarding claim 12, Holland teaches the composition is brought into contact with or mixed into a consumer product or the composition is applied human skin and/or human hair (pages 92-94), thereby the composition of Holland is a “primer” or “top coat” composition, as the composition brought into contact with the consumer product and the consumer product is then applied on the skin or hair.
Regarding claim 13, Holland teaches the fragrance material includes at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr (0.000133 kPa) at 25 °C, at least one moderate volatile fragrance material having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25 °C, and/or at least one high volatile fragrance material having a vapor pressure greater than 0.1 Torr (0.0133 kPa) at 25 °C (pages 1-3, 8-53, 99-105, 122-123, 131-134; claims 1 and 17).
As a result, the aforementioned teachings from Holland are anticipatory to claims 1-7 and 11-13 of the instant invention.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant argues “Holland does not disclose, teach, or suggest a multilayer coating composition comprising a primer composition and a fragrance composition in contact with the primer composition.” Applicant alleges “the multilayer coating composition of the present application, with its multipurpose primer composition that both adheres to a substrate and enhances fragrance perception through modulator diffusion, is structurally distinct from Holland's composition.” (Remarks, pages 16-17).
In response, the Examiner disagrees. As discussed above, the composition of Holland is adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance.
As discussed above in the pending 102 rejection, given that the structural components the claimed primer composition and the claimed fragrance composition in contact with the primer composition have been taught by Holland, the claimed “multilayer coating composition” as recited in the preamble of claim 1 is an intended function/purpose of the claimed composition and thus, the composition that is contact with the consumer product of Holland would be capable of the intended function/purpose of being “multilayer coating composition,” as there is no structural difference between the composition that is contact with the consumer product of Holland to that of the claimed multilayer coating composition. It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See 102 rejection, pages 7-9 of this office action.
As such, contrary to Applicant’s allegation, the claimed multilayer coating composition is not structurally distinct from the composition that is contact with the consumer product of Holland.
As a result, for at least the reason discussed above, claims 1-7 and 11-13 remain anticipated by the teachings from Holland.
Claim(s) 1-13 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cetti et al (US 2017/0233679 A1).
Regarding claim 1, Cetti teaches a composition comprising carrier, a substantially non-odorous fragrance modulator, and a fragrance component, wherein the composition is brought into contact with or mixed into a consumer product or the composition is applied human skin and/or human hair ([0004]-[0142] and [0296-[0298]; claims 1-17). Cetti teaches the consumer product is in the form of a scent delivery system ([0009]-[0010]). Cetti teaches the substantially non-odorous fragrance modulator is present in the amount of from about 0.1 wt% to about 20 wt%, relative to the total weight of the composition and the fragrance material is in a range of from about 1 wt% to about 30 wt%, relative to the total weight of the composition ([0083]-[0110]; claims 10-17). It is noted that the composition comprising carrier, a substantially non-odorous fragrance modulator, and a fragrance component as taught by Cetti meets the structures of “a primer composition including a carrier; at least one substantially non-odorous fragrance modulator present in the amount of from about 0.1 wt% to about 50 wt%, relative to the total weight of the composition; and a fragrance material in a range of from about 0.01 wt% to about 50 wt%” as claimed and thus, the composition as taught by Cetti is a “primer composition,” as there is no structural difference from the composition of Cetti to that of the claimed primer composition.
Furthermore, as discussed above, Cetti teaches the composition is brought into contact with or mixed into a consumer product, in which the consumer is in the form of scent delivery system, thereby meets the claimed “fragrance composition in the contact with the primer composition.”
Given that the structural components the claimed primer composition and the claimed fragrance composition in contact with the primer composition have been taught by Cetti, the claimed “multilayer coating composition” as recited in the preamble of claim 1 is an intended function/purpose of the claimed composition and thus, the composition that is contact with the consumer product of Cetti would be capable of the intended function/purpose of being “multilayer coating composition,” as there is no structural difference between the composition that is contact with the consumer product of Cetti to that of the claimed multilayer coating composition. It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Regarding claim 2, Cetti teaches the substantially non-odorous fragrance modulator is present in an amount from about 6 wt% to about 20 wt% ([0083]-[0110]; claims 10-17).
Regarding claim 3, Cetti teaches the substantially non-odorous fragrance modulator is an alkoxylated methyl glucoside selected from the group consisting of methyl glucoside polyol, ethyl glucoside polyol, and propyl glucoside polyol ([0083]-[0110]; claims 10-17).
Regarding claim 4, Cetti teaches the substantially non-odorous fragrance modulator include methyl glucoside polyol, ethyl glucoside polyol, propyl glucoside polyol, Isocetyl alcohol, PPG-3 myristyl ether, Neopentyl glycol diethylhexanoate, or mixtures thereof ([0083]-[0110]; claims 10-17).
Regarding claim 5, Cetti teaches the carrier is ethanol or dipropylene glycol ([0098] and [0352]-[0357]).
Regarding claim 6, Cetti teaches the composition further contains an emulsifier ([0142] and [0357]-[0358]).
Regarding claim 7, Cetti teaches the composition further contains capsules ([0153]-[0349]).
Regarding claim 8, Cetti teaches the capsules encapsulates a fragrance ([0153]-[0349]).
Regarding claim 9, Cetti teaches the capsule wall of the capsules is selected from polysaccharides, modified polysaccharides, gel forming proteins, modified celluloses, polyacrylates, polyureas, polyurethanes, gelatin, and mixtures thereof ([0153]-[0349]).
Regarding claim 10, Cetti teaches the capsules are degradable ([0232]-[0237]).
Regarding claim 11, Cetti teaches the fragrance component is in the range of from about 0.1 wt% to about 25 wt% ([0083]-[0086]).
Regarding claim 12, Cetti teaches the composition is brought into contact with or mixed into a consumer product or the composition is applied human skin and/or human hair ([0127]-[0358]), thereby the composition of Cetti is a “primer” or “top coat” composition, as the composition brought into contact with the consumer product and the consumer product is then applied on the skin or hair.
Regarding claim 13, Cetti teaches the fragrance component include at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr ([0083]-[0086], [0106]-[0109]; claims 1-17).
Regarding claim 16, Cetti teaches the fragrance component is in an amount from about 1 wt% to about 30 wt%, relative to the total weigh of the perfume composition, wherein the fragrance component include at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr present in in an amount of from about 0.1 wt % to about 30 wt % relative to the total weight of the fragrance component ([0083]-[0086], [0106]-[0109]; claims 1-17).
As a result, the aforementioned teachings from Cetti are anticipatory to claims 1-13 and 16 of the instant invention.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant argues that “the composition of Cetti comprising multiple components is not the same as a multilayer coating composition, as recited in amended claim 1. Applicant can find no mention of Cetti referring to a multilayer coating composition comprising a primer composition and a fragrance composition in contact with the primer composition, as recited in claim 1.” Thus, Applicant alleges “Cetti does not disclose, teach, or suggest a multilayer coating composition comprising a primer composition and a fragrance composition in contact with the primer composition.” (Remarks, pages 17-18).
In response, the Examiner disagrees. As discussed above in the pending 102 rejection, Given that the structural components the claimed primer composition and the claimed fragrance composition in contact with the primer composition have been taught by Cetti, the claimed “multilayer coating composition” as recited in the preamble of claim 1 is an intended function/purpose of the claimed composition and thus, the composition that is contact with the consumer product of Cetti would be capable of the intended function/purpose of being “multilayer coating composition,” as there is no structural difference between the composition that is contact with the consumer product of Cetti to that of the claimed multilayer coating composition. It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See 102 rejection, pages 11-13 of this office action.
As such, contrary to Applicant’s allegation, the claimed multilayer coating composition is not structurally distinct from the composition that is contact with the consumer product of Cetti.
As a result, for at least the reason discussed above, claims 1-14 and 16 remain anticipated by the teachings from Cetti.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al (WO 2019/156708 A1), and further in view of Cetti et al (US 2017/0233679 A1).
The coating compositions of claims 1-7 and 11-13 have been discussed above by Holland, said discussion being incorporated herein in its entirety.
Regarding claims 8-10, Cetti teaches a composition comprising carrier, a substantially non-odorous fragrance modulator, and a fragrance component ([0004]-[0142] and [0296-[0298]; claims 1-17). Cetti teaches the composition further contains capsules encapsulating a fragrance, wherein the capsule wall of the capsules is selected from polysaccharides, modified polysaccharides, gel forming proteins, modified celluloses, polyacrylates, polyureas, polyurethanes, gelatin, and mixtures thereof ([0153]-[0349]). Cetti teaches the capsules are degradable ([0232]-[0237]).
It would have been obvious to one of ordinary skill in the art to include the capsules of Cetti in the composition of Holland, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because Cetti and Holland are commonly drawn to perfume compositions with enhance fragrance profile, and Cetti provided the guidance for including capsules encapsulating a fragrance in the perfume composition, wherein the capsule wall of the capsules is selected from polysaccharides, modified polysaccharides, gel forming proteins, modified celluloses,, polyacrylates, polyureas, polyurethanes, gelatin, and mixtures thereof, and wherein the capsules are degradable (Cetti: [0153]-[0349]). Thus, an ordinary artisan would have reasonable expectation of success of include the capsules of Cetti in the composition of Holland because Holland also indicated that capsules can be included the perfume compositions (Holland: page 89), and thus, [i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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 before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant argues “Cetti does not cure the deficiencies of Holland with respect to independent claim 1” and thus, “the combination of Holland and Cetti does not disclose, teach, or suggest the combination of elements recited in independent claim 1. As such, Applicant alleges that “prima facie case of obviousness under the art cannot be maintained for claims 1-13.” (Remarks, bottom of page 18).
In response, the Examiner disagrees. As discussed above, the teachings from Holland remained to anticipate the multilayer coating compositions of claims 1-13. See pages 7-10 of this office action, said pages being incorporated herein in its entirety.
As a result, for at least the reason discussed above, claims 1-13 remained rejected as being obvious and unpatentable over the combined teachings of Holland and Cetti in the pending 103 rejection as set forth in this office action.
Claim(s) 1-13 and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cetti et al (US 2017/0233679 A1), and further in view of Holland et al (WO 2019/156708 A1).
The multilayer coating compositions of claims 1-13 and 16 have been discussed above by Cetti, said discussion being incorporated herein in its entirety.
Regarding claims 15 and 17-20, Holland teaches a perfume composition comprising carrier, a substantially non-odorous fragrance modulator, and a fragrance material (Abstract; pages 5-143). Holland teaches fragrance material is in a range of from about 0.04 wt% to about 30 wt%, relative to the total weight of the composition (pages 2 and 113-143). Holland teaches fragrance material include at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr (0.000133 kPa) at 25 °C, at least one moderate volatile fragrance material having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25 °C, at least one high volatile fragrance material having a vapor pressure greater than 0.1 Torr (0.0133 kPa) at 25 °C, or combinations thereof (pages 1-3, 8-53, 99-105, 122-123, 131-134; claims 1 and 17). Holland teaches that the fragrance material contains 27.8% high volatile perfume materials; 42.1% moderate volatile perfume materials; 30.1% low volatile perfume materials (pages 103-105).
It would have been obvious to one of ordinary skill in the art to include the fragrance material containing 27.8% high volatile perfume materials; 42.1% moderate volatile perfume materials; 30.1% low volatile perfume materials of Holland in the fragrance composition of Cetti, and produce the claimed multi-component fragrance composition. One of ordinary skill in the art would have been motivated to do with reasonable expectation of success because Cetti and Holland are commonly drawn to perfume compositions with enhance fragrance profile, and thus, [i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
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 before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant argues “Holland does not cure the deficiencies of Cetti with respect to independent claim 1,” and thus, “the combination of Cetti and Holland does not disclose, teach, or suggest the combination of elements recited in independent claim 1.” As such, Applicant alleges that “prima facie case of obviousness under the art cannot be maintained for claims 14-20.” (Remarks, top of page 19).
In response, the Examiner disagrees. In response, the Examiner disagrees. As discussed above, the teachings from Cetti remained to anticipate the multilayer coating compositions of claims 1-13 and 16. See pages 11-15 of this office action, said pages being incorporated herein in its entirety.
As a result, for at least the reason discussed above, claims 1-13 and 15-20 remained rejected as being obvious and unpatentable over the combined teachings of Cetti and Holland in the pending 103 rejection as set forth in this office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12508218.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘218 significantly overlap with the subject matter of the instant claims, i.e.,. coating compositions comprising a carrier; and a substantially non-odorous fragrance modulator, wherein amounts of the substantially non-odorous fragrance modulator substantially overlap; and multi-component fragrance compositions containing the coating composition, and a fragrance component in contact with the coating composition, wherein amounts of fragrance component substantially overlap.
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 12508218.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive. Applicant argues “[a]s the current pending claims stand rejected on other grounds and are still subject to the amendment, Applicant takes note of this rejection but does not take further action at this time inasmuch as no pending claim has yet to be allowed. Applicant will re-evaluate this rejection, upon an indication of allowable claims.” (Remarks, bottom of page 19).
In response, it is noted that the pending claims are not allowable for the reason of record. Thus, the double patenting rejection as set forth in this office is maintained for the reason of record, and pending filing of a terminal disclaimer.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/DOAN T PHAN/ Primary Examiner, Art Unit 1613