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’s election without traverse of oxacyclohexadecan-2-one (compound) and OR2W1 (receptor) in the reply filed on 9 June 2025 is acknowledged. Claims 6-11, 15, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Status of the Claims
Claims 1-15, 18, 21-24 are pending.
Claims 6-11, 15, and 18 are withdrawn.
Claims 1-5, 12-14, and 21-24 are rejected.
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.
Claims 1-5, 12-14, and 21-24 are 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. Claims 1, 3, and 14 comprise multiple species with non-typical formatting which renders the claims indefinite. For example, claim 1 comprises the following species: (4~{S} ,5~{R} ,6~{S}, 11~{S})-4, 11-dimethylspiro[5.5]undecan-5-ol, [1R-(1R*,4R*,6R*,10S*)]-4,12,12-trimethyl-9-methylene-5-oxatricyclo[8.2.0.04,6]dodecane, 1-(2,4-dimethyl-4-tricyclo[5.2.1.0^{1,5}]decanyl)ethenone, and (9<I>E</I>)-cycloheptadec-9-en-1-one. The usage of the following symbols are not explained and should be corrected: ~, *, ^, and <I>E</I>.
Claim 23 recites, “the accord having a tonality preferably selected from…” The usage of the word “preferably” renders indefinite the metes and bounds of the claims.
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 1-5, 12-14, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Preti et al. (US 2003/0152538).
Preti teaches deodorant compositions comprising a cross-adapting agent in an amount effective reduce perception of malodor (abstract). Preti further teaches a method of reducing perception of body odor or malodor comprising administering a deodorant composition comprising the cross-adapting agent to reduce perception of a body odor [0011]. The cross-adapting agent can be, for example, GLOBALIDE (oxycyclohexadecen-2-one) [0024]. In one example, male stress-derived odor was tested for a reduction in intensity upon treatment with a cross-adapting agent wherein the subjects used GLOBALIDE and found it to be “good” which means a moderate reduction in odor [0058]. The cross-adapting agent works by competing for a receptor site with the malodor and thus desensitizing the population to the odor [0004]. In addition to GLOBALIDE, alternative cross-adapting agents include perfuming agents such as eugenol and ethyl vanillin [0024]. The cross-adapting agents can be present in amounts effective to reduce malodor or from about 0.1% to about 10% by weight [0039].
Preti does not teach specifically inhibiting at least one olfactory receptor that is the OR2W1 receptor.
It would have been prima facie obvious to reduce the perception of body odor by way of a method taught by Preti wherein the body odor is reduced by applying oxycyclohexadecen-2-one as the cross-adapting agent as part of a deodorant composition. The cross-adapting agent works by inhibiting an olfactory receptor. In one example, Preti uses the elected species of compound to show a successful reduction of body odor. While Preti does not teach the reduction of body odor on a human subject, the disclosure of Preti is towards a deodorant composition that reduces the perception of body odor, thus it would have been obvious to apply the composition to the subject to suppress the odor. While it is taught that cross-adapting agents work by competing for a receptor site with the malodor, the specific elected OR2W1 site is not mentioned. However, the ability for the compound to inhibit specifically 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 deodorant composition to reduce the perception of body odor would have been obvious and thus renders obvious instant claims 1-5 and 12-14.
It would have been obvious to use the cross-adapting agents in about 0.1-10% by weight. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07). As such, it would have been obvious to include additional cross-adapting agents in the composition of Preti to arrive at a deodorant composition comprising oxycyclohexadecen-2-one (10%), eugenol (10%), and ethyl vanillin (10%), which further renders obvious instant claims 21-24.
Conclusion
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