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 .
Priority
The instant application is a DIV of application 16/760,031 filed 28 April 2020 (now US 11,744,785) which is the national stage entry of PCT/EP2018/082132 filed 21 November 2021. The Applicant has further listed a variety of provisional US applications under foreign priority on the application data sheet, which appears to be incorrect and should be addressed. The Applicant claims priority to foreign applications EP18153067.6 (filed 23 January 2018), EP18156134.1 (filed 9 February 2018), EP18157790.9 (filed 21 February 2018), and EP18158074.7 (filed 22 February 2018. The Applicant lacks support for all the species in the claims throughout many of the priority documents. The earliest identifiable priority that provides support appears to be US 62/754,860, filed 2 November 2018. As such, the effective filing date of the instant claims is 2 November 2018.
Election/Restrictions
Applicant previously elected oxacyclohexadecan-2-one (compound) and OR2W1 (receptor) in the reply filed on 9 June 2025.
Examiner's Note
Applicant's amendments and arguments filed 2 January 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant's response, filed 2 January 2026, it is noted that claims 11 and 21 have been amended. Support can be found in the claims as originally filed. No new matter has been added.
Status of the Claims
Claims 1, 21, and 24 are pending.
Claims 1, 21, and 24 are rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 21, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Blondeau et al. (US 2019/0218476).
Blondeau teaches a perfume composition comprising a mixture of ingredients from Group A, Group B, and Group C (abstract) [0014-0017]. The compound of Group C possesses a musky odor and may be selected from the group comprising oxacyclohexadecan-2-one (THIBETOLIDE) [0054, 0065]. The component of Group C may be present in amounts of more than 15% by weight [0065]. Blondeau teaches a method of applying the perfumed product to a substrate [0023].
Blondeau does not teach specifically inhibiting a malodor comprising an agonist of the OR2W1 receptor.
Blondeau does not teach a specific composition comprising oxacyclohexadecan-2-one. That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of perfume agents from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.” The resulting perfume composition comprising oxacyclohexadecan-2-one would have been prima facie obvious to prepare and apply to a surface to change the odor of said surface.
While it is taught in Blondeau that the perfume can comprise the elected species of oxacyclohexadecan-2-one, the specific elected agonist of an OR2W1 receptor is not mentioned as being targeted. That being said, the ability for the elected compound to inhibit or reduce a malodor associated with an agonist of the OR2W1 receptor site is an inherent property in the elected species of oxycyclohexadecen-2-one. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” 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) (see MPEP 2112.01 (II)). The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
That being said, the method of applying oxycyclohexadecen-2-one in a perfume composition to reduce or mask the perception of an odor on a surface would have been obvious and thus renders obvious instant claims 1, 21, and 24.
Response to Arguments
Applicant's arguments filed 2 January 2026 have been fully considered but they are not persuasive. The Applicant argues that Preti does not disclose that the malodor comprises an OR2W1 agonist.
In response, the above rejection has been amended to no longer cite Preti. However, it is noted that the instantly claimed method is a method of inhibiting, reducing, or suppressing malodor in a subject by applying a composition comprising oxacyclohexadecan-2-one in an amount sufficient to inhibit, reduce, or suppress the subject’s perception of the malodor. The active step involves applying said composition to a subject. The claim does not require the specified malodor be present but that the composition is applied in an amount sufficient to suppress said odor (should it be present). As such, the above rejection wherein a composition is applied to any surface regardless of the odor, wherein oxacyclohexadecan-2-one is included in greater than 15% by weight is interpreted as addressing the required amount sufficient for suppressing perception of a malodor associated with OR2W1.
Conclusion
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 ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian 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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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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