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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/11/2026 has been entered.
Status of the Claims
This action is in response to papers filed 05/22/2026 in which claims 12 and 14 were canceled; claims 1-11, 13, and 15-20 were amended; and claim 21 was newly added. All the amendments have been thoroughly reviewed and entered.
Claims 1-11, 13 and 15-21 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Withdrawn Objections/Rejections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 Any rejection and/or objection not specifically addressed below is hereby withdrawn.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.
New Objection
Claim Objections
Claim 4 is objected to because of the following informalities: for claim language clarity, please remove the “or” at the end of the R3 line. It is the “or” recited after “2 to 9,”. Please also remove the comma (,) after “2 to 9” and add in a semicolon (;). Appropriate correction is required.
Modified 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 1-11, 13 and 15-21 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 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 1-11, 13 and 15-21 introduce new matter as the claims recite the limitation: “bilayer coating composition.” There is no support in the specification for this limitation as it pertain to “bilayer”.
Claim 1 further introduces new matter as the claim recites the limitation: “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition.” This is no support in the specification for this limitation.
Applicant asserted that support for the amendment can be found at least in paragraphs [0039], [0085] and [0086] of the as-filed application (see Remarks filed 05/22/2026, page 16, under section II).
However, after a thorough review of said paragraphs [0039], [0085] and [0086], as well as, throughout the specification, there appeared to be no support for the coating composition to be a “bilayer.” Nowhere in the specification discloses anything relating to layer, much less “bilayer.” There is also no support in paragraphs [0039], [0085] and [0086] or anywhere in the specification for the claimed “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition,” as recited in claim 1.
Below is the disclosure of paragraph [0039] of the specification:
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As disclosed above, paragraph [0039] does not provide disclosure for anything relating to a bilayer coating composition.
Below is the disclosure from paragraph [0040] of the specification that is pertinent to the coating composition:
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As disclosed above in paragraph [0040], the coating composition is described or defined as a “primer” or a “top coat.” There is no disclosure in paragraph [0040] pertaining to the coating composition being a “bilayer,” much less any structural disclosure relating to bilayer. Paragraph [0040] of the specification only discloses the coating composition as being a primer or a top coat, this is not support or disclosure for the coating composition to be a “bilayer,” much less any disclosure pertaining to the coating composition as be two layers.
Below is the disclosure of paragraph [0085] of the specification:
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As disclosed above in paragraph [0085], said paragraph [0085] only discloses about spray dispenser that is included therein coating compositions, fragrance compositions, or both. This is not support or disclosure for the coating composition be a “bilayer.” There is no disclosure in paragraph [0085] pertaining to the coating composition being “bilayer,” much less any structural disclosure relating to bilayer or a two-layer coating composition.
Below is the disclosure of paragraph [0086] of the specification:
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As disclosed above in paragraph [0086], while said paragraph [0086] discloses that the coating composition can be configured or in other words formulated as a primer, a top-coat, or both, this is merely a description of the coating composition as functioning as primer or a top-coat. This is not support or disclosure for the coating composition be a “bilayer.” There is no disclosure in paragraph [0086] pertaining to the coating composition as being “bilayer,” much less any structural disclosure relating to bilayer or a two-layer coating composition.
While paragraph [0086] of the specification discloses that the coating compositions can be useful to extend the amount of time the fragrances in the fragrance composition are detectable by a result of the modulator in the composition diffusing at least partially into the fragrance composition, this is not support for the claimed “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition,” as recited in claim 1. There is no disclosure of or support for the modulator to be “at least a portion” and no disclosure of or support for “to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition” anywhere in paragraph [0086]. It is note that the disclosure of “to extend the amount of time the fragrances in the fragrance composition are detectable” from paragraph [0086] is to the extension of the time to which the fragrances in the fragrance composition are detectable, which has no relevance to the claimed “to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition.”
Thus, Applicant does not have possession of the claimed limitations of “bilayer coating composition” and “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition.”
As such, the disclosure does not reasonably convey that the inventor had possession of the subject matters of claim 1-11, 13 and 15-21 as amended at the time of filing of the instant application.
Response to Arguments
Applicant's arguments filed 05/22/2026 have been fully considered but they are not persuasive.
Applicant argues that paragraphs [0039] and [0085] of the specification indicated that “the coating composition is applied as a distinct primer or topcoat layer relative to a separate fragrance composition, rather than being mixed together.” Applicant further alleges that paragraph [0086] of the specification also discloses that “this bilayer configuration serves a specific purpose,” in that “[d]iffusion of the modulator from the coating composition into the fragrance composition implies two initially distinct phases, i.e., two layers. Therefore, a person of skill in the art would understand that the present application discloses a bilayer arrangement.” (Remarks pages 16-17).
In response, the Examiner disagrees. As discussed above in the pending New Matter rejection, paragraph [0039] of the specification does not disclose any relating to the coating composition. See New Matter rejection, page 4 of this office action, said page 4 being incorporated in herein in its entirety. It appears that Applicant meant to cite paragraph [0040] of the specification (rather than paragraph [0039]). However, as discussed above in the pending New Matter rejection, said paragraph [0040] while disclosing about the coating composition, it does not disclose the coating composition being a “bilayer,” much less any structural disclosure relating to bilayer. As disclosed above in paragraph [0040], the coating composition is described or defined as a “primer” or a “top coat.” There is absolutely no disclosure of “the coating composition is applied as a distinct primer or topcoat layer relative to a separate fragrance composition, rather than being mixed together,” in paragraph [0040] to which Applicant alleged. As disclosed above in paragraph [0040], the coating composition was only described or defined as a “primer” or a “top coat.” Furthermore, contrary to Applicant’s allegation, paragraph [0040] at the end, discloses that “the [coating] composition can then be added to an existing fragrance composition,” which means that the coating composition is described in said paragraph [0040] as being adding to or in other words, mixed in with an existing fragrance composition. Thus, as discussed above in the pending New Matter rejection, Paragraph [0040] of the specification only discloses the coating composition as being a primer or a top coat, this is not support or disclosure for the coating composition to be a “bilayer,” much less any disclosure pertaining to the coating composition as be two layers. See New Matter rejection, page 5 of this office action, said page 5 being incorporated in herein in its entirety.
With respect to paragraph [0085] of the specification, like paragraph [0040], there is no disclosure of “the coating composition is applied as a distinct primer or topcoat layer relative to a separate fragrance composition, rather than being mixed together,” in paragraph [0040] to which Applicant alleged. As discussed in the pending New Matter rejection. said paragraph [0085] only discloses about spray dispenser that is included therein coating compositions, fragrance compositions, or both. This is not support or disclosure for the coating composition be a “bilayer.” There is no disclosure in paragraph [0085] pertaining to the coating composition being “bilayer,” much less any structural disclosure relating to bilayer or a two-layer coating composition. See New Matter rejection, pages 5-6 of this office action, said page 4 being incorporated in herein in its entirety.
With respect to paragraph [0086] of the specification, it is noted that the disclosure of “the modulator in the coating composition diffusing at least partially into the fragrance composition” from paragraph [0086] does not imply the coating composition and the fragrance composition are two layers, as alleged by Applicant. While the coating composition and the fragrance composition are described as two separate compositions, there is absolutely no disclosure in paragraph [0086] or anywhere in the specification that discloses the coating composition and the fragrance composition are two separate layers. The diffusion of the modulator in the coating composition into the fragrance composition as disclosed in paragraph [0086] is merely describing the mechanism of the modulator to diffuse into the fragrance composition, and this mechanism of diffusion can occur with both the coating composition and the fragrance composition be including in an applicator, i.e., spray dispenser as described in paragraph [0085] of the specification, or other words, mixing in together as part of the components inside the applicator. Thus, as discussed above in the pending New Matter rejection, while said paragraph [0086] discloses that the coating composition can be configured or in other words formulated as a primer, a top-coat, or both, this is merely a description of the coating composition as functioning as primer or a top-coat. This is not support or disclosure for the coating composition be a “bilayer.” There is no disclosure in paragraph [0086] pertaining to the coating composition as being “bilayer,” much less any structural disclosure relating to bilayer or a two-layer coating composition. See New Matter rejection, page 6 of this office action, said page 6 being incorporated here in its entirety.
As a result, for at least the reasons discussed above and the pending New Matter rejection, it is maintained that Applicant does not possession of the claimed “bilayer coating composition” as recited in claim 1-11, 13 and 15-21, as well as, Applicant does not possession of the claimed “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition” as recited in claim 1.
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) 1-7, 11-13, and 15-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al (WO 2019/156708 A1).
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.
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 “bilayer 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 “bilayer 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 bilayer 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.
With respect to the claimed “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition,” of claim 1, as discussed above, the structural components of the bilayer coating composition of claim 1 has been taught by Holland and thus, it would have been reasonably obvious that the composition of Holland being structurally same bilayer composition as that of the claimed, would implicitly result in “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition” as claimed. This is because [w]here 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 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).
Regarding claims 15-20, 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). Holland also teaches that the fragrance component including low volatile fragrance materials, moderate volatile fragrance materials, and high volatile fragrance materials can be optimize in which the amount of the low volatile fragrance materials, moderate volatile fragrance materials, or high volatile fragrance materials can be less than, equal or greater than about 20, 20.5, 21, 21.5, 22, 22.5, 23, 23.5, 24, 24.5, 25, 25.5, 26, 26.5, 27, 27.5, 28, 28.5, 29, 29.5, or about 30 wt% relative to the composition (pages 8-9). Thus, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight % amount of low volatile fragrance materials, moderate volatile fragrance materials and high volatile fragrance materials in the fragrance component would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
Regarding claim 21, Holland teaches the substantially non-odorous fragrance modulator can be optimize to a high weight % of greater than 30 wt% to allow the low-volatility fragrance materials to drive the perceived character of the fragrance, while mitigating or eliminating a perceived harshness of the composition by the user (page 87). The amount of greater than 30 wt% of substantially non-odorous fragrance modulator as taught by Holland overlaps the claimed “amount of from 21 wt% to about 50 wt% relative to the total weight of the bilayer coating composition.” It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of modulator in the coating composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al (WO 2019/156708 A1), as applied to claims 1 and 7 above, and further in view of Cetti et al (US 2017/0233679 A1).
The coating composition of claims 1 and 7 are discussed above, 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.
Claim(s) 1-13, 16, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over 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 “bilayer 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 “bilayer 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 bilayer 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.
With respect to the claimed “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition,” of claim 1, as discussed above, the structural components of the bilayer coating composition of claim 1 has been taught by Cetti and thus, it would have been reasonably obvious that the composition of Cetti being structurally same bilayer composition as that of the claimed, would implicitly result in “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition” as claimed. This is because [w]here 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 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).
Regarding claim 21, 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). It is noted that the “about 20 wt%” as taught by Cetti is close to the claimed minimum amount of “about 21 wt%” from the claimed range of from about 21 wt% to about 50 wt%.” Thus, it is noted that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight amount of modulator in the coating composition would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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.
Claim(s) 15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cetti et al (US 2017/0233679 A1), as applied to claim 1 above, and further in view of Holland et al (WO 2019/156708 A1).
The coating composition of claim 1 is discussed above, said discussion being incorporated herein in its entirety.
Regarding claims 15 17, 18, and 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).
Regarding claim 19, Holland also teaches that the fragrance component including low volatile fragrance materials, moderate volatile fragrance materials, and high volatile fragrance materials can be optimize in which the amount of the low volatile fragrance materials, moderate volatile fragrance materials, or high volatile fragrance materials can be less than, equal or greater than about 20, 20.5, 21, 21.5, 22, 22.5, 23, 23.5, 24, 24.5, 25, 25.5, 26, 26.5, 27, 27.5, 28, 28.5, 29, 29.5, or about 30 wt% relative to the composition (pages 8-9).
It would have been obvious to one of ordinary skill in the art to include the fragrance material containing high volatile perfume materials; moderate volatile perfume materials; low volatile perfume materials of Holland in the fragrance composition of Cetti, as well as, optimize the weight% amounts of the high volatile perfume materials, moderate volatile perfume materials, and low volatile perfume materials that are included in the fragrance composition Cetti to the weight% amounts as recited in claim 19, and produce the claimed invention. One of ordinary skill in the art would have been motivated to do so because as discussed above, Holland provided the guidance to do so by teaching that mixtures of low volatile fragrance materials, moderate volatile fragrance materials, and high volatile fragrance materials can be included in the fragrance composition of Cetti in which the weight% amounts of low volatile fragrance materials, moderate volatile fragrance materials, and high volatile fragrance materials can be optimize to less than, equal or greater than about 20, 20.5, 21, 21.5, 22, 22.5, 23, 23.5, 24, 24.5, 25, 25.5, 26, 26.5, 27, 27.5, 28, 28.5, 29, 29.5, or about 30 wt% relative to the composition, which are weight% amounts that overlaps the claimed ranges as recited in claim 19. Thus, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight % amount of low volatile fragrance materials, moderate volatile fragrance materials and high volatile fragrance materials in the fragrance component would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
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 05/22/2026 have been fully considered but they are not persuasive.
Below is the Examiner’s response to Applicant’s arguments as they pertain to the pending 103 rejections.
Applicant argues that “Holland does not disclose (1) a bilayer configuration, and (2) wherein at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition, as recited in amended claim 1.” Applicant alleges that “[t]he cited portion of Holland [page 1, lines 34-page 2, line 12] teaches a single composition comprising at least one low-volatile fragrance material, at least one moderate-volatile fragrance material, at least one high-volatile fragrance material, and a substantially non-odorous fragrance modulator, all combined into one mixture. Holland describes bringing this single composition "into contact with or mixed into a consumer product." Mixing a composition into a consumer product produces a single, homogeneous composition, not two distinct layers arranged in contact with one another. Mixing a composition into a consumer product to form a single homogeneous mixture is not the same as the bilayer arrangement recited in amended claim 1, which comprises two discrete compositional layers including a primer composition and a fragrance composition in contact with the primer composition. The specification supports this bilayer structure by describing that the fragrance composition is applied "at least partially over" the primer composition. See paragraph [0086] of the as-filed application.” (Remarks, page 18).
In response, the Examiner disagrees. It noted that while claim 1 recites the coating composition as being a “bilayer” in the preamble of the claimed, the body of the claim does not structurally define the “primer composition” and the “fragrance composition” as distinct layer. Thus, Applicant’s argument heavily focused on the feature of the primer composition and the fragrance composition as being distinct layers are not in claim 1.
As such, it is maintained that while Applicant’s has amended claim 1 to “a bilayer coating composition” in the preamble of the claim, said amendment remain to be insufficient to obviate the Holland reference because as previously discussed, it is maintained that the composition of Holland was taught to adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance. See 103 rejection, pages 12-13 of this office action, said pages being incorporated herein its entirety. While Holland does in one embodiment teaches “mixing” to which Applicant heavily focused on, the embodiment to which the Examiner used in Holland is to the teaching drawn to the composition of Holland was taught to adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance. This guidance from Holland with respect to “the composition of Holland was taught to adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance,” is sufficient to meet the structures as required in the body of claim 1.
Thus, as discussed above in the pending 103 rejection, it is maintained that 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 “bilayer 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 “bilayer 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 bilayer 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.
Applicant argues that “because Holland does not reach a bilayer construction comprising a discrete primer composition and a discrete fragrance composition arranged in contact with one another, Holland necessarily does not teach the further element of wherein at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition, as recited in amended claim 1.” Applicant alleges that “[t]he presence of diffusion of the modulator from the primer composition into the separately applied fragrance composition inherently establishes a concentration driving force between the two compositions. Diffusion proceeds from a region of higher concentration to a region of lower concentration, which necessarily results in a gradient region of decreasing modulator concentration extending from the primer composition to the fragrance composition.” (Remarks, page 18, last paragraph to page 19).
In response, the Examiner disagrees. As discussed above, while claim 1 recites the coating composition as being a “bilayer” in the preamble of the claimed, the body of the claim does not structurally define the “primer composition” and the “fragrance composition” as distinct layer. Thus, Applicant’s argument heavily focused on the feature of the primer composition and the fragrance composition as being distinct layers are not in claim 1.
As such, it is maintained that while Applicant’s has amended claim 1 to “a bilayer coating composition” in the preamble of the claim, said amendment remain to be insufficient to obviate the Holland reference because as previously discussed, it is maintained that the composition of Holland was taught to adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance. See 103 rejection, pages 12-13 of this office action, said pages being incorporated herein its entirety.
Thus, as discussed above in the pending 103 rejection, it is maintained that 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 “bilayer 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 “bilayer 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 bilayer 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.
With respect to the claimed “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition,” of claim 1, as discussed above, the structural components of the bilayer coating composition of claim 1 has been taught by Holland and thus, it would have been reasonably obvious that the composition of Holland being structurally same bilayer composition as that of the claimed, would implicitly result in “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition” as claimed. This is because [w]here 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant argues “[t]he preamble is structural and limiting because it defines the physical architecture of the claimed composition as stated above. The bilayer structure of amended claim 1 is structural, and the structure serves identifiable purposes disclosed in the specification” at paragraphs [0047], [0085], and [0095]. Thus, Applicant alleges that the preamble structurally distinguishes amended claim 1 from Holland, which teaches only a single homogeneous mixture.” (Remarks, page 19, last paragraph to page 20).
In response, the Examiner disagrees. The preamble of claim 1 is not structural limiting because as discussed above, it is reiterated that while claim 1 recites the coating composition as being a “bilayer” in the preamble of the claimed, the body of the claim does not structurally define the “primer composition” and the “fragrance composition” as distinct layer. Thus, Applicant’s argument heavily focused on the feature of the primer composition and the fragrance composition as being distinct layers are not in claim 1.
As discussed above, it is maintained that while Applicant’s has amended claim 1 to “a bilayer coating composition” in the preamble of the claim, said amendment remain to be insufficient to obviate the Holland reference because as previously discussed, it is maintained that the composition of Holland was taught to adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance. See 103 rejection, pages 12-13 of this office action, said pages being incorporated herein its entirety. While Holland does in one embodiment teaches “mixing” to which Applicant heavily focused on, the embodiment to which the Examiner used in Holland is to the teaching drawn to the composition of Holland was taught to adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance. This guidance from Holland with respect to “the composition of Holland was taught to adhered or in contact with the consumer product that is in the form of a perfume or solid fragrance,” is sufficient to meet the structures as required in the body of claim 1.
Thus, as discussed above in the pending 103 rejection, it is maintained that 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 “bilayer 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 “bilayer 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 bilayer 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.
Applicant argues “Cetti does not disclose (1) a bilayer configuration, and (2) wherein at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition.” Applicant alleges that Cetti teaching “[m]ixing a composition into a consumer product to form a single homogeneous mixture is not the same as the bilayer arrangement recited in amended claim 1, which comprises two discrete compositional layers including a primer composition and a fragrance composition in contact with the primer composition. The specification supports this bilayer structure by describing that the fragrance composition is applied "at least partially over" the primer composition. See paragraph [0086]. The mixture of components in Cetti does not satisfy this structural requirement.” (Remarks, page 20, last paragraph to page 21).
In response, the Examiner disagrees. It noted that while claim 1 recites the coating composition as being a “bilayer” in the preamble of the claimed, the body of the claim does not structurally define the “primer composition” and the “fragrance composition” as distinct layer. Thus, Applicant’s argument heavily focused on the feature of the primer composition and the fragrance composition as being distinct layers are not in claim 1.
As such, it is maintained that while Applicant’s has amended claim 1 to “a bilayer coating composition” in the preamble of the claim, said amendment remain to be insufficient to obviate the Cetti reference because as discussed above in the pending 103 rejection, Cetti teaches the composition is brought into contact with 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.” See 103 rejection, pages 19-21 of this office action, said pages being incorporated herein in its entirety.
Thus, as previously discussed, it is maintained that 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 “bilayer 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 “bilayer 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 bilayer 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.
Applicant argues “because Cetti does not reach a bilayer construction comprising a discrete primer composition and a discrete fragrance composition arranged in contact with one another, Cetti necessarily does not teach the further element of wherein at least a portion of the substantially non- odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition, as recited in amended claim 1.” Applicant alleges “because Cetti does not reach a bilayer construction comprising a discrete primer composition and a discrete fragrance composition arranged in contact with one another, Cetti necessarily does not teach the further element of wherein at least a portion of the substantially non- odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition, as recited in amended claim 1.” Thus, Applicant alleges “[w]ithout two distinct compositions in contact, there can be no diffusion of the modulator from a primer composition into a fragrance composition, and no resulting region of decreasing modulator concentration extending from one composition to the other.” (Remarks, page 21).
In response, the Examiner disagrees. As discussed above, while claim 1 recites the coating composition as being a “bilayer” in the preamble of the claimed, the body of the claim does not structurally define the “primer composition” and the “fragrance composition” as distinct layer. Thus, Applicant’s argument heavily focused on the feature of the primer composition and the fragrance composition as being distinct layers are not in claim 1.
As such, it is maintained that while Applicant’s has amended claim 1 to “a bilayer coating composition” in the preamble of the claim, said amendment remain to be insufficient to obviate the Cetti reference because as discussed above in the pending 103 rejection, Cetti teaches the composition is brought into contact with 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.” See 103 rejection, pages 19-21 of this office action, said pages being incorporated herein in its entirety.
Thus, as discussed above, it is maintained that 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 “bilayer 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 “bilayer 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 bilayer 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.
With respect to the claimed “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition,” of claim 1, as discussed above, the structural components of the bilayer coating composition of claim 1 has been taught by Cetti and thus, it would have been reasonably obvious that the composition of Cetti being structurally same bilayer composition as that of the claimed, would implicitly result in “at least a portion of the substantially non-odorous fragrance modulator diffuses from the primer composition to the fragrance composition to form a region of decreasing modulator concentration extending from the primer composition to the fragrance composition” as claimed. This is because [w]here 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant argues “Holland does not disclose, teach, or suggest (1) at least one high volatile fragrance material present in an amount greater than about 40 wt%, and (2) at least one moderate volatile fragrance material present in an amount of less than about 20 wt%” as recited in amended claim 19. Applicant alleges that “the particular fragrance construction recited in amended claim 19 comprising (1) a higher loading of high volatile fragrance material (greater than about 40 wt%), (2) a higher loading of low volatile fragrance material (greater than about 40 wt%), and (3) a lower loading level of moderate volatile fragrance material (less than about 20 wt%) is enabled by the use of the modulator in a separate primer composition, as recited in claim 1, from which claim 19 depends.” (Remarks, pages 23-25).
In response, the Examiner disagrees. As discussed above, in the pending 103 rejection, Holland teaches that the fragrance component including low volatile fragrance materials, moderate volatile fragrance materials, and high volatile fragrance materials can be optimize in which the amount of the low volatile fragrance materials, moderate volatile fragrance materials, or high volatile fragrance materials can be less than, equal or greater than about 20, 20.5, 21, 21.5, 22, 22.5, 23, 23.5, 24, 24.5, 25, 25.5, 26, 26.5, 27, 27.5, 28, 28.5, 29, 29.5, or about 30 wt% relative to the composition (Holland: pages 8-9). Thus, teaching from Holland supra does teach and render obvious Applicant’s amended claim 19 because as discussed above in the pending 103 rejection, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985). Absent some demonstration of unexpected results showing criticality from the claimed parameters, the optimization of the weight % amount of low volatile fragrance materials, moderate volatile fragrance materials and high volatile fragrance materials in the fragrance component would have been obvious before the effective filing date of Applicant’s invention. See MPEP §2144.05 (I)-(II).
As a result, for at least the reasons discussed above, claims 1-11, 13 and 15-21 remain rejected as being obvious and unpatentable over Holland and/or Cetti, respectively, in the pending 103 rejections 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 1-11, 13 and 15-21 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 05/22/2026 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 25).
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.
New Rejection
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 8 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 8, the recitation of “the at least one capsule …” renders claim 8 indefinite because claim 8 is dependent from claim 1 and thus, it is not clear what the at least one capsule is referencing to, as claim 1 does not contain at least one capsule. As such, there is lack of antecedent basis for the at least one capsule in claim 1.
As a result, claim 8 does not clearly set forth the metes and bounds of patent protection desired.
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613
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