DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
Status of Claims
The amendment, filed on 14 July 2026, is acknowledged.
Claims 1 and 21 have been amended.
Claims 1, 4-6, 11, 15-18, and 21-27 are pending and under consideration in the instant Office Action, to the extent of the elected species Amberketal®, structure 17 in Table 1 of the specification.
Objections Withdrawn
Objections to Specification
Applicant’s amendment to the specification, submitted on 14 July 2026, has overcome the objection set forth in the Office Action mailed on 19 March 2026. Accordingly, the relevant objection is withdrawn.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejections of claims 1, 4-6, 11, 15-18, and 21-27 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments to claims 1 and 21 and in favor of the new grounds of rejection below.
New Grounds of Rejection
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.
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.
Claims 1, 4-6, 11, 15-18, and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Muratore et al. (European Patent No. EP 3233820 B1, published on 15 May 2019, references to English translation, hereafter referred to as Muratore) as evidenced by Chemical Abstracts Service (physical properties of CAS No. 57345-19-4) in view of Givaudan SA (Great Britain Patent Application Publication No. GB 2005468.0, published on 27 May 2020).
Muratore teaches novel acetals of general formula I which have an amber or animal note, methods of their synthesis, and their use in perfumery, cosmetics and detergents for their fragrance (pg. 2, Description). Compounds with amber or animal notes are taught to be desirable in the perfume industry but difficult and/or expensive to produce (pg. 2, Description). Examples of these compounds known in the industry are taught to include Ambrinol, Grisalva, and Amberketal® (pg. 3, first and last figures). Muratore teaches that the formula of their invention and its method of production is “simple, efficient in terms of yield, having a small number of steps, and therefore inexpensive” (pg. 3, para. 7).
Due to the pleasant odor of the compounds of formula I, Muratore teaches the compounds have applications in perfumery (pg. 4, final para.). Perfumery is used in its general sense – not just in perfumes, colognes, and similar products, but in topical cosmetic compositions such as creams for the face and/or body, shampoos, hair lotions, antiperspirants, and ointments (pg. 4, final para.). These cosmetic compositions would inherently be applied to a user’s skin or hair. Finally, Muratore teaches that the fragrant compound of formula I in their compositions should be present in an amount from 0.01-99% w/w or 0.1-30% w/w (claim 10).
Muratore does not teach a composition comprising Amberketal®. This deficiency is offset by the teachings Givaudan SA.
Givaudan SA teaches a method of synthesizing Amberketal® and its homologues, compositions comprising Amberketal® and its homologues, and the use of consumer products comprising said compositions (page 6, Technical Field). Amberketal® is taught to possess a “powerful and tenacious ambery and woody odour that is useful in fragrance compositions” (pg. 6, lines 10-11). The typical method of synthesizing Amberketal® is taught to involve Manool, which is in limited supply and subsequently expensive, resulting in the need for a “new efficient and cost effective synthetic route to obtain Amberketal® and amberketal homologues” (pg. 6, lines 12-15). The compound is represented by Formula (I) when R=methyl and the stereoisomer of Amberketal®, (-)-epi-8-Amberketal, is represented by Formula (IV) when R=methyl (pg. 8, lines 4-22 and pg. 15, lines 11-19). Finally, Givaudan SA teaches a consumer product comprising Amberketal® and the formulation of a fragrance composition (claims 7-11).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Muratore and Givaudan SA because combining prior art elements according to known methods yields predictable results. An artisan would be motivated to combine the teachings because Muratore teaches Amberketal® to be desirable in perfumery, including products that are applied to the skin or hair such as creams, shampoos, hair lotions, and ointments. Muratore teaches that Amberketal® is difficult and expensive to produce, however, and teaches alternative compounds to be used in perfumery of the general formula I and teaches the method of applying the perfumery compositions to the skin or hair. Givaudan SA teach an alternative, inexpensive and efficient method of synthesizing Amberketal® that an artisan would be motivated to use in the invention of Muratore to reduce the difficulty and cost of manufacturing a perfumery product that would be applied to a user’s hair or skin. An ordinary artisan would further be motivated to use Amberketal® in an amount from 0.01-99% w/w because Muratore teaches this quantity to be appropriate for fragrant compounds in fragrance compositions and would further be motivated to optimize the quantity of Amberketal® within the taught range because “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP § 2144.05.II.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the concentration range of fragrant compounds taught by Muratore. While the density of the compositions taught by Muratore is unknown, an approximation of 1 g/mL will be used due to the use of phenylethyl alcohol as a solvent in Example 7, which has a density of ~1 g/mL. Amberketal® has a MW of 278.43 g/mol (as evidenced by the Chemical Abstracts Service, see attached), therefore a teaching of 0.01-99% w/w is equivalent to a range of 359 mM to 3.56 M, which significantly overlaps with the ranges recited in amended claims 1 and 21.
Although Muratore and Givaudan SA are silent about self-tanning (claims 1 and 21), darkening of the desired skin (claims 5 and 23), and sunless tanning of the desired skin (claims 6 and 24), it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to method of Muratore and Givaudan SA, supra. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “[I]t is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable”. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). The mechanism of action does not have a bearing on the patentability of the invention if the invention was already known or obvious. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See MPEP 2145(II).
Thus, because Muratore and Givaudan SA teach the identical method of applying to the skin or hair the same chemical structure of Amberketal® as a perfumery cosmetic composition, Amberketal® applied to the skin as a perfume cosmetic would necessarily be self-tanning, would necessarily darken the desired skin, and necessarily sunless tan the desired skin. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As a result, there is a reasonable expectation of success in arriving at the invention of claims 1, 4-6, 11, 15-18, and 21-27 in view of the teachings of Muratore and Givaudan SA.
Claims 1, 4-6, 11, 15-18, and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Givaudan SA (Great Britain Patent Application Publication No. GB 2005468.0, published on 27 May 2020) in view of Gelis et al. (J. Bio. Chem. 2016, 291 (34), 17772., hereafter referred to as Gelis), Moser et al. (European Patent Application Publication No. EP 2014276 A1, published on 14 January 2009, provided by Applicant in IDS, hereafter referred to as Moser), Sell (Terpenoids. Kirk-Othmer Encyclopedia of Chemical Technology, Vol. 24. John Wiley & Sons, Inc. 2006), and Sowndhararajan et al. (Sci. Pharm. 2016, 84, 724., hereafter referred to as Sowndhararajan) as evidenced by Chemical Abstracts Service (physical properties of CAS No. 57345-19-4).
Givaudan SA teaches a method of synthesizing Amberketal® and its homologues, compositions comprising Amberketal® and its homologues, and the use of consumer products comprising said compositions (page 6, Technical Field). Amberketal® is taught to possess a “powerful and tenacious ambery and woody odour that is useful in fragrance compositions” (pg. 6, lines 10-11). The compound is represented by Formula (I) when R=methyl and the stereoisomer of Amberketal®, (-)-epi-8-Amberketal, is represented by Formula (IV) when R=methyl (pg. 8, lines 4-22 and pg. 15, lines 11-19).
The olfactive purity of Amberketal® following synthesis is taught to be important and a method of testing its purity, including comparison to commercially available references, is taught such that the purity to be used in compositions can be confirmed to be ≥80% (pg. 18, lines 8-14 and pg. 19, lines 10-13). Fragrance compositions comprising Amberketal® are taught, in addition to comprising carriers, diluents, and other ingredients commonly used in the art (pg. 22, Fragrance compositions). Finally, Givaudan SA teaches a consumer product comprising Amberketal® and formulation of a fragrance composition (claims 7-11).
Givaudan SA does not teach the impact of Amberketal® on melanin, a composition formulated as a tanning, moisturizing, or haircare composition, the concentration of Amberketal®, Amberketal® being in the chemical class of terpenoids, nor fragrant substances being perceived by humans following interaction with olfactory receptors. These deficiencies are offset by the teachings Gelis, Moser, Sell, and Sowndhararajan.
Gelis teaches the characterization of olfactory receptors, which are known to be expressed in non-sensory tissues mediating a variety of cellular functions (pg. 17772, Abstract). Olfactory receptors (ORs) are taught to be the basis of the sense of smell and originally thought to be exclusively expressed in the olfactory epithelium, though subsequent experiments found ORs expressed in non-olfactory tissues, indicating they have physiological functions outside of smell (pg. 17772, left column, para. 1). In particular, Gelis teaches that odorants were found to influence pigment cells in the 1980s in frogs (pg. 17783, Discussion, Functionality of an Ectopically Expressed Odorant Receptor in Melanocytes, para. 1). Further experiments found that cinnamaldehyde and b-ionone, a sesquiterpene, had “pigment dispersing activity in fish melanophores” (pg. 17783, Discussion, Functionality of an Ectopically Expressed Odorant Receptor in Melanocytes, para. 1). The researchers chose to test the effects of b-ionone on human ORs of family 51, subfamily E, member 2 (OR51E2), an OR that affects human “melanocyte proliferation, differentiation and melanogenesis” (pg. 17783, Discussion, Functionality of an Ectopically Expressed Odorant Receptor in Melanocytes, para. 2).
Activation of the olfactory receptor OR51E2 with b-ionone was confirmed to induce melanogenesis and impact melanocyte differentiation (pg. 17784, Discussion, Role of OR51E2 on Melanogenesis and Pigment Cell Differentiation, para. 1-3). Gelis teaches in conclusion that pigment cells respond to b-ionone with decreased proliferation rates and increased melanogenesis (pg. 17785, left column, final para.). Because OR51E2 signaling mechanisms can impact melanocyte homeostasis, Gelis suggest that steroids or terpenoids that activate the OR could be useful in treating conditions related to pigmentation (pg. 17785, left column, final para.).
Moser teaches cosmetic compositions comprising sclareolide and hesperidin methyl chalcone (HMC) which can be used for the tanning of skin, darkening of hair, and/or prevention of greying hair (Abstract). The traditional method of tanning skin is taught to be exposure to sun light, but due to the risks associated with skin exposure to UV radiation, including oxidative damage, photo-ageing, increased incidence of skin cancer, and degradation of proteins and lipids, “there is a need for agents to tan skin without the risks that are linked to exposure to UV radiation” (para. [0002]). These agents are referred to as “self-tanning” agents, are taught to work by reacting with skin proteins and/or amino acids to form brown-yellow colored substances, and examples of such agents used in the art include dihydroxyacetone, erythrulose, and lawsone (para. [0003]). However, the above examples are taught to have drawbacks including the production of an ”artificial” skin tone and lack of protection against sun radiation (para. [0003]).
To avoid the above drawbacks while achieving the goal of self-tanning, Moser teaches compositions comprising sclareolide and HMC which are known in the art to be useful in cosmetic compositions (para. [0006-0007]). Sclareolide, a terpenoid (sesquiterpene) lactone, is taught to be “a precursor to Ambroxan® [brand name of ambroxide], a valuable ambergris fragrance used in perfumery” (para. [0016]). In Examples 1 and 2, Moser teaches that sclareolide increases the rate of melanin synthesis in melanocytes without inducing cell toxicity. The compositions comprising sclareolide may be formulated as hair care compositions, creams, gels, lotions, or ointments and comprise 0.001-2.0% w/w sclareolide (para. [0018-0019]). Additionally, Moser teaches that the compositions may be used as an enhancer/stimulator of synthesis of melanin, for sunless tanning of the skin, and to homogenize skin color near pigment spots (para. [0043]).
Sell teaches a review of terpenoids, sometimes referred to as isoprenoids, which are molecules with structures made of isoprene (2-methylbuta-1,3-diene) units (pg. 1, 1.1. Definitions). Terpenoids are taught to occur in nature and play many roles, including in human metabolic processes and photosynthesis as a part of chlorophyll (pg. 2, 1.2. Biosynthesis and 1.3 Biological Significance). In section 9.2.1.3 Ambergris Analogues, Sell teaches Amberketal®, otherwise known as Jeger’s ketal after its discoverer, as a terpenoid that possesses a “powerful ambergris odor” (pg. 79, final para.).
Sowndhararajan teaches the influence of fragrances on human psychophysiological activity and the mechanisms of human perception of odors (Abstract). Fragrances are taught to be volatile chemicals, usually with a molecular weight < 300 g/mol, that “humans perceive via the olfactory system” (pg. 725, para. 2). In the process of perceiving fragrances, “fragrance stimulation of olfactory receptor cells in the nose involves interaction of fragrance molecules with olfactory-receptor proteins” (pg. 728, para. 1).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Givaudan SA and Gelis because applying a known technique to a known product ready for improvement yields predictable results. In the instant case, the known product is the fragrance composition comprising Amberketal® taught by Givaudan SA. Gelis teaches that compounds which activate olfactory receptors in human cells can impact melanocytes, including their production of melanin (melanogenesis) and proliferation. Gelis also teaches that terpenoids that activate olfactory receptors may be useful in treating pigmentation conditions because b-ionone, a sesquiterpene, demonstrated the ability to impact the production of melanin in melanocytes. The teachings of Sell and Sowndhararajan demonstrate that Amberketal® is a terpenoid and, as a fragrant molecule, would interact with olfactory receptors. It would have been obvious to an artisan to use a composition that has been formulated to be safely applied to the skin as a fragrance composition which comprises Amberketal®, a terpenoid that is taught by the art to activate olfactory receptors, to impact melanocytes.
It further would have been prima facie obvious to an artisan to modify the invention rendered obvious by the teachings of Givaudan SA, Gelis, Sell, and Sowndhararajan with the teachings of Moser to arrive at the claimed invention because simple substitution of one known element for another yields predictable results. Moser teaches compositions comprising sclareolide, a terpenoid (sesquiterpene) lactone, that enhance/stimulate melanin synthesis, tan the skin without sun, and may be applied to skin or hair. It would have been obvious to an artisan to use Amberketal® in the composition taught by Moser as a self-tanning agent because it is also a terpenoid, which are taught by Gelis to have utility in modifying melanin production, and like sclareolide is an analogue of ambroxide, so therefore is a likely candidate to impact melanocyte function.
Finally, an ordinary artisan would be motivated to use Amberketal® in an amount from 0.001-2.0% w/w because Moser teaches this quantity to be appropriate for terpenoid active agents in compositions that tan and darken the skin and would further be motivated to optimize the quantity of Amberketal® within the taught range because “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP § 2144.05.II.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the concentration range of fragrant compounds taught by Moser. While the density of the compositions taught by Moser is unknown, an approximation of 1 g/mL will be used because Moser teaches that water is a suitable solvent for their compositions (Moser, para. [0027]). Amberketal® has a MW of 278.43 g/mol (as evidenced by the Chemical Abstracts Service, see attached), therefore a teaching of 0.001-2.0% w/w is equivalent to a range of 36 mM to 71.8 mM, which significantly overlaps with the ranges recited in amended claims 1 and 21. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1, 4-6, 11, 15-18, and 21-27 in view of the teachings of Givaudan SA, Gelis, Moser, Sell, and Sowndhararajan.
Response to Arguments
Applicant's arguments filed 14 July 2026, have been fully considered but they are not persuasive.
Applicant argues in para. 3 of pg. 19 that the Muratore and Givaudan SA references do not teach agonism of the OR7C1 receptor, do not teach the recited concentration range, and do not teach self-tanning. Regarding agonism of the OR7C1 receptor and self-tanning, these arguments have been addressed in the previous Office Action – repeated here in brief, “the prior art need not disclose a newly discovered property in order for there to be a prima facie case of obviousness.” Dillon, 919 F.2d at 697, 16 USPQ2d at 1904-05. See MPEP § 2144.08(d). Further, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Wiseman, 201 USPQ 658 (CCPA 1979). See MPEP 2145.(II). Granting a patent on the discovery of an unknown but inherent function “would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.” In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). As a result, Applicant’s arguments regarding the OR7C1 receptor and self-tanning are found to be unpersuasive.
Regarding the concentration ranges recited in amended claims 1 and 21, this argument is not found persuasive for the reasons above – in brief, Muratore teaches a concentration range that significantly overlaps with the recited ranges, rendering them obvious. Similarly, the Moser reference teaches a range that significantly overlaps with the recited ranges, and the argument regarding the concentration ranges of Amberketal® are not found to be persuasive.
In para. 4 of pg. 19, Applicant reiterates the above arguments and additionally argues that “use of the compounds as fragrance ingredients should not preclude the additional use in a method of self-tanning”. The argument was not made in the previous Office Actions that use of Amberketal® as a fragrance would “preclude” use of the compound in a method of self-tanning. Instead, the previous rejections argued that a method of self-tanning comprising applying a composition comprising Amberketal® would be obvious in view of the prior art and the Applicant’s argument is found to be unpersuasive.
Conclusion
No claims are 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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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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