3Notice 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 .
Status of the Claims
Claims 1, 8 and 21-30 are pending in a Response of 03/30/2026.
Withdrawn rejections:
Applicant's amendments and arguments filed 03/30/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
New Grounds of Rejection --- as necessitated by amendment
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining 2obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic/medical/pharmaceutical research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetic, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Claims 1, 8 and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over Calandra et al. (US2019/0046422A1) in view of Haze et al., “2-nonenal newly found in human body odor tends to increase with aging”, The society for investigative dermatology, Inc., vol. 116, no. 4, April, 2001, pp. 520-524.
Applicant claims the above claim 1 filed on 03/30/2026:
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Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Calandra discloses that many formulated perfumes, body care products or cosmetics that inherently requires applying to skin contain fats and oils that are known to undergo an oxidation, resulting in the formation of intermediate chemical species glyceride hydroperoxides, which may further degrade into aldehydes and ketones, such oxidation may result in an unpleasant and unpalatable aroma rancidity in the flavored article including pharmaceutical composition, cosmetic product, etc. (e.g., [0003], [0057], [0063], [0093]-[0094] and [0102]) and additionally skin exposure to peroxide may be the result of a long-term, or intentional exposure (such as, of a shampoo, or skin moisturizer) ([0059]); to solve the said problem, this prior art teaches methods for the reduction of the peroxide value (POV) of perfume ingredients, formulated body care products, formulated skin care products, etc. comprising adding an alpha-oxocarboxylic acid to perfume and/or skin care products, body care product including skin cream, antiperspirant, etc. wherein the effect of the alpha-oxocarboxylic acid has on the olfactive properties in the said products (e.g., abstract, [0138], and claim 1 of prior art). Please note that when the said product containing alpha-oxocarboxylic acid compound to reduce POV is applied to skin/body, it reads on the claimed administration to the skin as supported by [0529]-[0674] and claim 13 of the instant publication (instant claim 1, in part); the said alpha-oxocarboxylic acid includes pyruvic acid, 2-oxovaleric acid, phenylglyoxylic acid, 2-oxobutyric acid, 2-oxo-2-furanacetic acid, oxaloacetic acid, α-ketoglutaric acid, 2-oxopentandioate, indole-3-pyruvic acid, 2-thiopheneglyoxylic acid, trimethylpyruvic acid, 2-oxoadipic acid, 4-hydroxyphenylpyruvic acid, phenylpyruvic acid, 2-oxooctanoic acid, and mixtures thereof ([0018]) (instant claim (in part), and instant claim 8); the α-oxocarboxylic acid is present in the composition as an inorganic salt such as ammonium salt selected from the group consisting of: 2-(dimethylamino)ethanol, N, N-dimethyldodecylamine, Tris[2-(2- (methoxyethoxy)ethyl]amine, and N-methyl diethanolamine ([0034]-[0035])(instant claims 21-24 and 27-30) and the ammonium salt of alpha oxocarboxylic acid includes diammonium salt from alpha-ketoglutaric acid ([0123])(instant claims 25-26).
However, Calandra does not expressly teach a people at risk for or having skin odor of 2-noneal of instant claim 1. The deficiency is cured by Haze.
Haze discloses 2-nonenal newly found in human body odor tends to increase with aging (title) that 2-nonenal, an unsaturated aldehyde with an unpleasant greasy and grassy odor was detected only in aged subjects (40 years or older); analysis of skin surface lipids revealed that w7 unsaturated fatty acids and lipid peroxides also increased with aging wherein the oxidative degradation of the said fatty acids, accelerated by lipid peroxides, may be involved in the formation of 2-nonenal, suggesting in deterioration of the body odors for the middle-aged and the elderly (e.g., abstract on page 520, Fig. 3 on page 522, left column and conclusion on page 524, right column).
It would have been obvious to apply the teachings of Calandra to the aged having 2-nonenal odor or compound of Haze because the applied references are in analogous art in making effort to suppress unpleasant odor caused by lipid peroxide from oxidation of oil/fat, and Calandra teaches alpha-oxocarboxylic acid/its ammonium salt are effective to reduce the peroxide value (POV) of formulated skin/body care products, and Haze teaches increased POV generates 2-nonenal compound, which deteriorates body odors for the middle-aged and the elderly. Therefore, based on the same efforts to reduce POV, administering the alpha-oxocarboxylic acid or its ammonium salt of Calandra to skin area of the aged people having 2-nonenal odor of Haze would also have prevented, reduced or ameliorated that skin odor with a reasonable expectation of success.
In light of the foregoing, instant claims 1, 8 and 21-30 are obvious over the applied references in combination.
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive.
Applicant argues that Calandra is silent regarding administering a composition for the purpose of preventing, reducing, or ameliorating skin odor, much less skin odor caused by oxidation of skin lipids, and even less so with respect to administering to the skin of a person at risk for or having skin odor of 2-nonenal, wherein administering the compound to the skin of the person reduces formation, and Haze merely identifies 2-nonenal as an age-related body odor component, and does not provide any teaching or suggestion for treating the skin of a person at risk for or having skin odor of 2-nonenal.
The Examiner responds that Calandra explicitly discloses controlled consumption of hydroperoxides via reaction with alpha-ketoglutaric acid, and controlled reaction with the α-oxocarboxylic acid yields harmless and predictable by-products, and this prior art further teaches that uncontrolled hydroperoxide reactions may generate malodor-associated by-products (see entire document including e.g., [0291]), and thus Calandra inherently relates hydroperoxide control to prevention of undesirable odor-related outcomes, and further Calandra discloses compositions for reducing organic hydroperoxide reduction in perfume, body products, skin care products (see e.g., abstract) which requires application to skin, and as evidenced by JP2009/028530A (IDS of 12/07/2021), it is well known that alpha-keto-carboxylic acid (=oxocarboxylic acid) and/or its salt such as sodium pyruvate is effective as a deodorant agent, and accordingly, applying alpha-ketoglutaric acid and/or its salt of Calandra to the skin would also implicitly reduce the skin/body odor; and Haze explicitly identifies 2-nonenal as a malodor compound derived from lipid oxidation (page 523, right column), and therefore, the combination of the applied art reasonably suggests reducing odor by controlling hydroperoxide intermediate in the oxidation pathway, and it would have been obvious to a person of ordinary skill in the art to administer alpha-ketoglutaric acid to a patient at risk or having skin odor in order to reduce hydroperoxide-mediated lipid oxidation and thereby reduce formation of odor-causing compounds such as 2-nonenal. Lastly, please that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In reKeller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In reMerck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). MPEP 2145.
In light of the foregoing, applicant’s arguments are not persuasive.
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, 8, and 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 10,456,339B2 in view of Haze et al.
Both claims require using alpha-oxocarboxylic acid compound. Instant claims refer to a method for preventing, reducing, or ameliorating a skin odor 2-nonenal from a person caused by oxidation of skin lipid via hydroperoxide intermediate and patent ‘339 refers to a method for reducing the peroxide value (POV) of a perfume, body care product, cosmetic product, etc. Here, lowering POV leads to reduce odor as supported by the instant specification (see [0529-0623] of instant publication), and the method of patent ‘339 necessarily applies the products having the said compound to skin area, which embraces the claimed method. The difference between them is patent ‘339 remains silent about 2-nonenal odor compound for the elderly people. The deficiency is cured by Haze as noted above. Haze discloses increased POV involves generation of 2-nonenal smell compound. Thus, it would have been obvious to apply the composition of patent ‘339 to the aged people having odor compound of Haze in order to reduce POV.
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive.
Applicant argues that US ‘339 (Calandra II) in view of Haze fail to disclose the claimed invention for the same reasons with respect to the 103 rejection.
Since the Examiner has responded as noted above, the rebuttal is not repeated here.
In light of the foregoing, applicant’s arguments are not persuasive.
Conclusion
All examined claims are rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613
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