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 20 January 2026, is acknowledged.
Claim 4 has been amended.
Claims 16-17 were previously withdrawn from consideration as being drawn to a nonelected invention in the non-final Office Action mailed on 10 October 2025.
Claims 1-4 and 6-15 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
the 1,2-alkanediols are 1,2-hexanediol and 1,2-octanediol;
the malodor causing compound existing as an impurity or degradation product within 1,2-alkanediols is 2,3-octanediol;
the malodor reduction material having a MORV of ≥0.5 is diphenyloxide; and
the liquid carrier is water.
Objections Withdrawn
Objections to Claims
Applicant’s amendment to claim 4, submitted on 20 January 2026, has overcome the objection to the claim set forth in the Office Action mailed on 10 October 2025. Accordingly, the relevant objection is withdrawn.
Maintained Rejections
Claim Rejections - 35 USC § 103
NOTE: It is noted that the Examiner inadvertently left out claims 6-8 in the 103 heading of the non-final Office Action mailed on 10 October 2025; however, it was clear that the claims were rejected based on the final full paragraph of pg. 8 and the paragraph that spans the bottom of pg. 8 and top of pg. 9, the latter containing the correct claim numbers in the final sentence.
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 and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Schmaus et al. (U.S. Patent Application Publication No. 2007/0059331 A1, published on 15 March 2007, hereafter referred to as Schmaus) in view of Scholz (U.S. Patent Application Publication No. US 2006/0052452 A1, published on 9 March 2006).
Schmaus teaches a synergistic mixture of C6-12 alkanediols and tropolone or its derivatives to act as antimicrobial compositions (Abstract). In the technical areas of cosmetics, pharmaceuticals, and foodstuffs, Schmaus teaches that a large number of antimicrobial actives are employed and must be “toxicologically acceptable, readily tolerated by the skin, stable…largely and preferably completely odourless and inexpensive to prepare” (para. [0003-0009]). In a preferred embodiment, the composition taught by Schmaus comprises a mixture of 1,2-hexanediol and 1,2-octanediol and one or more tropolones (para. [0018-0022], Table 1, and claims 1-3). Tropolones are taught to be metal chelators suitable for use in cosmetic and dermatological formulations, particularly in mixtures also containing 1,2-hexanediol and 1,2-octanediol, because of their activity against Candida albicans and Aspergillus niger (para. [0085] and [0089]). Other antimicrobial agents may also be included in the composition, including the functionalized diphenyl ether triclosan (para. [0094]).
The composition is further taught to be a cosmetic, pharmaceutical, or food composition comprising the mixture of alkanediols and tropolone(s) in an amount of 0.01-10% w/w, which significantly overlaps with the ranges recited in instant claims 13-15 (claim 6). The ratio of alkanediols: tropolone(s) is taught to be from 99.999:1 to 90:10 (para. [0210] and claim 5). Finally, the composition is taught to comprise “further conventional constituents”, which in some embodiments is water acting as a carrier/solvent (para. [0086], Tables 1 and 3, and Formulations F1-F3).
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 ratio of alkanediols: malodor reduction material and the quantity of the antimicrobial mixture in the final composition. In each case, the range taught by Schmaus significantly overlaps with the recited range in the instant application and a prima facie case of obviousness exists.
Schmaus does not teach the inclusion of diphenyl ether in their composition. This deficiency is offset by the teachings of Scholz.
Scholz teaches antimicrobial compositions comprising an antiseptic, among other components, that are intended to be applied to mammalian tissue (Abstract and claim 1). The compositions in the invention of Scholz provide “effective antimicrobial activity” due to the broad spectrum of activity exhibited by the antiseptics, which is useful in treatment and/or prevention of conditions caused/aggravated by microorganisms including viruses, bacteria, and fungi (para. [0013-0014]). In one embodiment, a preferred antiseptic is diphenyl ether and its derivatives, used in concentrations above 0.1% w/w, and often above 3% w/w (para. [0017], [0055], and [0082] and claims 1 and 26). The bacteria treated by the invention of Scholz include
“Staphylococcus spp., Streptococcus spp., Escherichia spp., Enterococcus spp. (including antibiotic resistant strains such as vancomycin resistant Enterococcu), and Pseudamonas spp. bacteria, and combinations thereof, and more particularly Staphylococcus aureus (including antibiotic resistant strains such as methicillin resistant Staphylococcus aureus), Staphylococcus epidermidis, Escherichia coli (E. coli), Pseudomonas aeruginosa (Pseudomonas ae.), and Streptococcus pyogenes, which often are on or in the skin or mucosal tissue of a subject” (para. [0030]).
Finally, Scholz teaches that their invention “have a generally low irritation level for skin” (para. [0070]).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Scholz to use diphenyl ether in the invention of Schmaus because combining elements known in the prior art in similar inventions to impart a known benefit produces predictable results. Schmaus teaches an antimicrobial composition containing a synergistic mixture of 1,2-hexanediol, 1,2-octanediol, and tropolone which may be used in a cosmetic, pharmaceutical, or food composition, with water as a carrier/solvent, in amounts and ratios that overlap with those recited in instant claims 6 and 13-15. Scholz also teaches an antimicrobial composition comprising diphenyl ether as an antiseptic which is effective against many strains of bacteria not addressed by the invention of Schmaus while maintaining low skin irritation to users. One of ordinary skill would be motivated to use diphenyl ether in the invention of Schmaus because Schmaus teaches that additional antimicrobial agents may be included, including the diphenyl ether derivative triclosan. Diphenyl ether is taught by Scholz to treat bacteria that are not otherwise addressed and it would be obvious to a person of ordinary skill to use a similar compound to increase the spectrum of activity in an antimicrobial composition. The ordinary artisan would further be motivated to include diphenyl ether in a ratio with the alkanediol mixture of 1:99.999 to 10:90 because the concentration taught by Scholz, 0.1% w/w or greater, overlaps with this range and Schmaus teaches the ratio to be appropriate for the antimicrobial agent tropolone.
With respect to the presence of 2,3 octanediol, the Applicant has stated that 2,3-octanediol is a “malodor causing compound existing as an impurity or degradation product within 1,2-alkanediols” resulting from purification conditions (para. [0013-0014] and [0018], claim 1). Therefore, if 1,2-octanediol is present, the impurity or degradation product 2,3-octanediol is also necessarily present. See MPEP § 2112.01. Further, because 2,3-octanediol is present due to the purification conditions during production of 1,2-octanediol, rather than being added in a specific quantity, the impurity or degradation product is necessarily present in the same concentration as recited in instant claims 6-8.
Schmaus and Scholz also do not teach the Malodor Reduction Values (MORVs) of the compounds in their compositions. However, the MORV of a given compound is an inherent property of said compound, therefore if the compound is present its properties are necessarily present as well. See MPEP § 2112.01. “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Because the presence of diphenyl ether is present in the composition rendered obvious by the teachings of Schmaus and Scholz, the composition necessarily contains a malodor reducing material with a MORV of at least 0.5. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1-4 and 6-15 in view of the teachings of Schmaus and Scholz.
Response to Arguments
The Applicant’s arguments, filed on 20 January 2026, have been fully considered but are not persuasive.
In the para. that spans the bottom of pg. 24 and top of pg. 25 of the remarks, Applicant argues that because the Schmaus reference teaches that materials in cosmetics should be odorless, a person of ordinary skill in the art would be discouraged from “attempting to address or solve a malodour problem addressed by the present [invention]”. The rejection under 35 U.S.C. § 103 presented in the previous Office Action did not argue that an ordinary artisan would combine the Schmaus and Scholz references to solve an issue regarding odor. Instead, the rejection argued, in brief, that an ordinary artisan would be motivated to combine the teachings because Scholz teaches diphenyl ether to be effective against many strains of bacteria not addressed by the invention of Schmaus while maintaining low skin irritation to users, which the ordinary artisan would recognize as desirable (vide supra). Therefore, Applicant’s argument is not found to be persuasive.
In para. 2 of pg. 25, Applicant argues that the motivation for combining the Schmaus and Scholz references is “unrelated to the technical problem solved by the present invention”. MPEP § 2144.IV. states that different rationale than the Applicant’s is permissible for supporting a rejection under 35 U.S.C. § 103. “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” See also In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
From the final para. of pg. 25 to para. 2 of pg. 26, Applicant argues that the Scholz reference teaches away from using diphenyl ether as an antiseptic, would instead direct an ordinary artisan to use a halogenated diphenyl ether derivative such as triclosan, and that “there is no teaching or suggestion in either [the Schmaus or Scholz] reference to select unsubstituted diphenyloxide from the broad class of diphenyl ethers for any reason at all, but especially for the purpose of malodour reduction”. In MPEP § 2123.II. it is stated that “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” Further, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). The mere teaching of triclosan as another antiseptic does not obviate the teaching of diphenyl ether as a useful antiseptic, particularly in view of the teachings of Scholz that diphenyl ether treats bacteria that are not otherwise addressed (vide supra). As a result, Applicant’s arguments are found to be unpersuasive.
Finally, in para. 3 of pg. 26, Applicant argues that because the MSDS for 1,2-octanediol, submitted by Applicant in their response to the Office Action mailed on 10 October 2025, does not list “2,3-octanediol as an impurity or degradation product for 1,2-octanediol” it is not necessarily present. The Examiner respectfully disagrees and directs Applicant again to the original disclosure of the instant application, which stated in para. [0013-0014] and [0018] that 2,3-octanediol is a “malodor causing compound existing as an impurity or degradation product within 1,2-alkanediols” resulting from purification conditions (see also instant claim 1). Therefore, if 1,2-octanediol is present, the impurity or degradation product 2,3-octanediol is also necessarily present. See also MPEP § 2112.01. The mere absence of 2,3-octanediol in the submitted MSDS is not a demonstration that the compound does not exist as an impurity or degradation product, particularly in view of the Applicant’s own disclosure (vide supra). As a result, Applicant’s arguments are not found to be persuasive.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.J.S./
Examiner, Art Unit 1619
/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617