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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/25 has been entered.
Receipt is acknowledged of Amendments and Remarks filed on 12/03/25. Claims 1, 6-18 and 20-27 have been amended, claims 4-5 and 19 have been canceled and new claims 8-297 have been added. Accordingly, claims 1, 6-18 and 20-29 are pending and under examination on the merits.
Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Claim Objection
Claim 22 is objected to because of the following informalities:
Claim 22 recites “The diffuser device of claim 21 the peel-away sealing sheet….”. It appears that the term -wherein- is mistakenly deleted and would be needed. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 28 and 29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 28 and 29 include the recitation of “a container having walls defining a chamber ….”. However, the Specification does not describe the container as having walls defining a chamber, rather a container for reception of a formulation. There is no support for the added limitation. This is a new matter rejection.
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 and 6-8 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.
Claim 1 is indefinite for including the limitation of “over about 30 days”. This is indefinite because the claim does not provide an upper limit for this range and as such encompasses, 100 days, 1000 days, up to infinity, which is neither possible nor disclosed or envisioned by the Specification. In fact, the Specification supports up to 30 days.
Claim 6 is indefinite for reciting wherein the pheromone is highly volatile. The term highly is a relative term that has not been defined by the Specification.
Claim 7 is indefinite for reciting “a different device” in the preamble. It is not clear what is meant by a different device. For purposes of examination, it is interpreted as a diffuser device.
Claim 8 is indefinite for reciting that the formulation comprises the pheromone at 0.001-5% by weight. This is indefinite because it is not clear what this percentage range of pheromone is based on. That is, is it based on the total weight of the formulation, the solvent, the carrier or excipients, the active agent, or else.
Claim 9 is indefinite because it recites wherein the pheromone provides for relief of stress or a calming effect. It is not clear what the difference is between for stress and for calming effect. The Specification states “the pheromone is for relief of a medical condition such as stress, motion sickness, diet control and the like. That is, for example, the pheromone provides a calming effect on pets” (See [0014] of the published Spec).
Claim interpretations:
Claims 9-10 are directed to a diffuser device for relief of a medical condition or providing a calming effect in a pet. These are intended use limitations which do not materially affect the scope of the claimed device. As such the claims are examined based on the device and not the intended use limitation.
Claim 18 is directed to the device of claim 1 wherein the container is vacuum-formed. This is a product-by-process claim in which the process is not given patentable weight as it is the device that is claimed. See MPEP § 2113 [R-1].
Applicant’s claims:
Claim 1 is directed to a diffuser device, comprising: (a) a container having walls defining a chamber for reception of a formulation, the container having an outlet and comprising: i. a first layer comprising polyethylene terephthalate (PET); ii. a second layer comprising polyethylene; and iii. a third layer comprising ethylene-vinyl alcohol copolymer (EVOH copolymer); (b) a passive diffusing element associated with the outlet and operable to control discharge of the formulation from the container, wherein the diffusing element is a membrane mounted across the outlet, the membrane being permeable to at least portion of the formulation in vapour form to control discharge of said portion of the formulation over about 30 days; and (c) a formulation contained within the chamber, the formulation being sufficiently volatile to passively diffuse at ambient temperature and comprising a pheromone having a vapour pressure of from about 16.5 mmHg to about 25 mmHg.
Dependent claims add features and limitations related to the container or formulation.
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.
Claims 1, 6-18, 20-27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Pozzo (6,481,639) in combination with Brown et al (US 20150216182), Hu et al (US 20200038539) and Kawai et al (US 20170183426).
Pozzo teach a volatile substance diffuser comprising a body with an aperture and a reservoir of product, comprising a volatile substance, the reservoir being mounted mobile in the body between a diffusing position enabling a gas to circulate through the product, then through the aperture and a closed position wherein the product is isolated from the aperture, the reservoir and the body having respective surfaces extending opposite each other (See abstract).
It is disclosed that the said reservoir has a wall exhibiting orifices, each said orifice having a contour shape forming a passage for gas (See col. 2 and claim 10).
Regarding claim 1, Pozzo discloses that “The invention also envisages a device for diffusing a volatile substance comprising at least one diffuser according to the invention, and a support designed to accept the diffuser or diffusers simultaneously” (See Col. 2, lines 35-38).
One object of the invention is to provide a diffuser which allows diffusion to be stopped abruptly and which is easy to manufacture. Also, having a spherical face, the seal may have a form that is simple to produce, for example a circular form. As the seal is a total seal, smell is not diffused at all in the closed position. Placing the reservoir in the closed position allows diffusion of the volatile substance to be stopped abruptly, with no persistence effect. It is thus possible to swiftly alternate the diffusion of different substances. What is more, diffusion can be stopped simply and quickly (See Col. 1, lines 35-37 and 48-55).
It is disclosed that advantageously, the diffuser comprises at least one element which makes a seal between the body and the reservoir in the closed position (See Col. 2, lines 10-12), and that “The cartridge 32 is isolated from the body 4 and from the openings 11, this isolation being sealed by virtue of the seals 19” (See Col. 4, lines 58-60).
Pozzo teaches that an electronic control circuit for the support allowing operation. (See Col. 7, lines 7-14). Further disclosed is that the outlet of the support could be provided with a removable position-adjustable nozzle so as to give the best sense of smell according to the user's position (See Col. 8, lines 1-3).
Regarding claims 6, 10, 12 and 27, Pozzo teaches that the substances to be diffused may be fragrances. These may be pheromones for repelling or attracting insects or animals. The wearing of the diffuser about the user's person therefore affords good protection against dangerous insects. It may be a deodorizing, sanitizing or bactericide substance (See Col. 8, lines 16-22).
Regarding claims 23 and 24, while the reference dose not expressly teach the holder, Figures 8-9 show a device that has a bottom which can be placed on a table top.
Pozzo lacks disclosure on the diffusing element being a membrane permeable to at least portion of the formulation and of polyethylene or polypropylene. These are known in the art as taught by Hu et al. Pozzo also lacks disclosure on the layers of the container, or the formulation comprising a pheromone. These are well known in the art as taught by Brown et al and Kawai et al.
Hu et al teach a volatile composition dispenser including a housing having opposing first and second walls that are joined along their peripheries to one another. The first wall has an aperture and the second wall has a plurality of apertures. Within the housing, rests a volatile composition cartridge and a gap, which exists between the cartridge and a bottom surface of the housing, wherein said bottom surface is formed from a joinder of a base portion of one or both of the first and second walls (See abstract).
Regarding claim 1 (b), Hu et al disclose that the said cartridge comprises a membrane (See [0012]). A membrane is placed in a sealing manner over an outer lip of the receptacle. The membrane may be a breathable and/or microporous. Suitable membranes include those which are also ultra-high molecular weight polyethylene and such materials are commercially available. Once the dispenser is activated, the volatile composition spreads out of the receptacle and wets the membrane and is then delivered to the environment. It is intended that the volatile composition be virtually undetectable by a user until such time as activation occurs. Then, once activated, the scent of the volatile composition is quite noticeable and should remain so throughout the life of the dispenser until the volatile composition level is indicated as being fairly low or non-existent within the window (See [0041]).
Suitable membranes include a microporous, ultra-high molecular weight polyethylene, permeable polymeric, thermoplastic, or thermoset materials (See [0042]).
Hu et al also teach that suitable polymeric films include polyethylene terephtalate (PET) films, ethylene vinyl alcohol, and combinations thereof (See [0035]).
Further regarding claim 1, Hu et al disclose that “wherein said dispenser is activated by a user and thirty days after said activation, there is about 70% to 90% weight loss of said volatile composition of a partially exposed membrane of a fully exposed membrane” (See [0012] and Table 2).
Brown et al teach compounds and compositions for insect attractants and repellents (See abstract). Such compositions may comprise a compound selected from the group consisting of compounds OLI0001-OLI0013 and devices comprising the said compounds. Such compounds may be present at a concentration of from about 0.01% to about 5% (See [0009] and [0022]).
Regarding claims 1, 8 and 11, Brown et al disclose that compound OLI0013 is trans-2-methyl-butenal. Such compounds may be present at a concentration of from about 0.01% to about 5% (See [0009] and [0022]) (See at least Tables 5-7).
Regarding claims 6 and 12, Brown et al disclose that the said attractants may be plant oils, plant extracts, floral odors, pheromones, or adhesives (See [0063]).
Regarding claims 9-10, it is disclosed that the said compositions and methods are for the design, preparation and manufacture of compounds which alter the behavior of vector pests in a manner that is beneficial to animals, particularly humans (See [0029]).
Regarding claim 7, it is noted that the specification states that “the vapour pressure of the pheromone is in the range 16.5 to 25 mmHg at 25° C. and preferably is about 17.105 mmHg at 25° C” and that “the pheromone is the rabbit pheromone-trans-2-methyl-2-butenal” (See [0012] and [0015]). Therefore, based on the disclosure, the pheromone trans-2-methyl-butenal of Brown et al meets this limitation.
It is also disclosed that the said devices may comprise a patch, comprising one or more materials including, plastic, metal, fabric, wax, polymeric materials, polyethylene, polypropylene, rubber, cellulose, silicon rubber and cellulose-based materials (See [0022]).
Regarding claims 12-14, Brown further disclose that the said compounds and compositions may include “other ingredients” known to those skilled in the art and which may be added to formulations depending on the desired application. These include, optionally modified oil, perfumes, formaldehyde, ammonia, paraffin waxes, nutrients, mineral oil, orange oil, 2-propenoic acid, animal glue and stickers like nufilm p and others in the series (See [0071]-[0072]).
Regarding claims 12-13 and 15-16, Brown disclose that the said compounds and compositions may be used in liquid form, either as purified liquids or in aqueous-based or non-aqueous (organic) formulations. Said liquid formulations may be in the form of aerosols, gels, emulsions, microemulsions, emulsifiable concentrates, pump sprays, fragrances, perfumes, colognes, gel sticks, and the like (See [0061]).
Regarding claim 17, it is disclosed that the said compositions may comprise gelatin, gums, silica gels, etc; (See [0072]).
Regarding claims 1 and 20, Browne t al teach that the formulations may be incorporated or diffused through a patch or matrix. The said patch may be made of polyethylene (See [0092]).
Regarding claims 21-23 and 25 it is disclosed that patches may be applied to subjects according to any methods known to those of skill in the art, including direct application to subject skin, clothing or apparel (e.g. accessory items, hats, scarfs, etc.) Patches may be associated with such skin, clothing or apparel through adhesives (e.g. glues, pastes, gels, resins, gums, epoxies, etc.), static electrical interactions, tape, banding (such as attachment using a wrist, leg and/or waste band) or through other methods known in the art. Some patches comprise a film or paper layer to protect patch adhesives. Such film or paper layers may be peeled off prior to application of such patches (See [0094]).
Regarding claims 1 and 16, Brown et al teach that the many methods of application are known in the art that would be convenient for applying said compounds or compositions to a desired object, individual, surface, area or region. Such objects include wicks that draw from a solution comprising the said compounds/compositions (See [0083]).
Regarding claims 1, 14, 16 and 25-27 it is disclosed that the said compounds and/or compositions may be used in conjunction with devices to house, contain and/or facilitate diffusion of such compounds and/or compositions, including decorative stands, sticks (made of plastic, wood, paper and the like), coils, infused plastics, foggers, candles, clip-on devices and plug-in devices (with or without air diffusers). Such devices may said comprise compounds and/or compositions in liquid and/or solid forms (See [0091]). The said devices may be in holders for attachment including a collar, wrist band or clip-on (See [0023] and [0096]). While the reference does not expressly disclose Elizabethan collars, they broadly disclose that the device can be attached to any apparel (such as a collar), for humans or non-human animals by clip on or adhesive.
Kawai et al teach an ethylene-vinyl alcohol copolymer, a resin composition and a molded product thereof being superior in long-run stability of melt molding, with inhibited coloring and generation of film forming defects such as flaws in formed film and streaks, and also being superior in appearance characteristics (See abstract).
Regarding claims 1 and 29, Kawai et al teach reusing as at least one layer of a multilayer structure that includes a polyolefin layer and an EVOH layer by recovering end portions, followed by melt molding (See [0008]).
Disclosed is that “Still further, as a blow-molded container, a multilayer structure may be used which includes an EVOH layer formed from an EVOH resin composition, and a layer of other thermoplastic resin” (See [0013]). And that “Therefore, the ethylene-vinyl alcohol copolymer can provide a molded article such as a multilayer structure and the like having superior appearance characteristics” (See [0029]).
Kawai et al disclose that the said resins include polyethylene terephthalate; polyvinyl acetate, chlorinated polyethylene (See [0201]).
Kawai et al further disclose that “Examples of the thermoplastic resin which may form the other layer include: polyolefins such as polyethylene and polypropylene; polyesters such as polyethylene terephthalate; polyamides; ethylene-vinyl alcohol copolymers; and the like” (See [0259]).
Additionally, Kawai et al disclose that examples of the secondary forming processing include bending processing, vacuum molding, blow-molding, press molding, and the like (See [0183] and [0211]), which meets claim 18.
The packaging material is used for wrapping, e.g., foods, beverages, chemicals such as pesticide and medicines, as well as industrial materials such as medical equipment, machine parts and precision materials, clothes, and the like (See [0222]).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Brown et al Kawai et al and Hu et al with that of Pozzo to arrive at the instant invention. It would have been obvious to do so because all references teach a device for diffusing a volatile substance. Pozzo teach a device that comprises a container, a volatile substance formulation and a diffusing element. Hu et al teach a volatile substance diffuser comprising a container covered with a permeable membrane that is made of polyethylene. Thus, one of ordinary skill in the art would have been motivated to have selected Hu et al’s polyethylene membrane because it is disclosed as being a good choice for the membrane and as a result one would expect success.
Thus, the claims would have been obvious because a person of ordinary skill has good reasons 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.
Additionally, Pozzo teach that the volatile substance may be a fragrance or a pheromone, but Pozzo does not recite any particular compounds. Brown et al however, teach that the volatile substance may be a pheromone trans-2-methyl-2 butenal, and provide guidance on its concentration range. Thus, one of ordinary skill in the art would have been motivated to have selected Brown et al’s pheromone compound with a reasonable expectation of success.
Furthermore, Brown et al teach adding other components to the volatile formulation which allows for more options and advantages including a gelling agent, paraffin wax, a solvent or making the formulation a microemulsion. Both references teach that the device can be used as a wearable device or be attached to one including a pet’s collar.
It further would have been obvious to have incorporated teachings of Kawai et al because Kawai et al teach advantages of making a multilayer container wherein the layers are made of ethylene vinyl alcohol copolymer, polyethylene and polyethylene terephthalate. Thus, one of ordinary skill in the art would have been motivated to have selected Kawai et al’s multilayer container as the container in the diffuser of Pozzo with a reasonable expectation of success.
Thus, the claims would have been obvious because a person of ordinary skill has good reasons 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.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Bourne et al (US 20200222572) in view of Wai Ng et al (GB 2572774), Brown et al (US 20150216182), Harada et al (7,048,203) and/or Air Wick® Essentials (https://m.media-amazon.com/images/I/810mldRRe5L.pdf).
Regarding claim 28, Bourne et al teach a wick-based diffuser configured for diffusing a liquid volatile substance composition into an air flow path extending through the diffuser to disseminate the volatile substance composition throughout a surrounding volume (e.g., a vehicle interior). Diffusers may comprise a body defining a hollow interior and having an air flow path extending therethough; a reservoir; a wick extending from the reservoir and into the hollow interior of the body; and a closure mechanism configured to selectably isolate the wick and the reservoir from the air flow path extending through the body. Wick-based diffusers may be mounted to a support device via a low-friction mounting mechanism located above a center of gravity of the diffuser, such that the diffuser self-aligns in an upright orientation under the influence of gravity (See abstract and claim 1).
Also, regarding claim 28, figures 1-6 show that the diffuser and the container are in a bottle shape. As discussed above and show in Figures 2A, the wick is extending within the bottle.
Bourne et al lack disclosure on the wick comprising polyethylene, the diffuser comprising a cowl or the formulation comprising the pheromone. These are well known in the art as taught by Wai Ng et al, Brown et al, Harada et al and/or Air Wick® Essentials.
Wai Ng et al teach devices for dispersing a volatile liquid wherein the liquid is contained within pores. Disclosed is a device for dispersing a volatile liquid comprising a wick; a solid support; and a volatile liquid; wherein the wick is attached to the solid support; wherein at least one of the wick and the solid support are porous; and wherein the volatile liquid is contained within pores in the wick and/or the solid support (See title, abstract and claim 1).
It is also disclosed that the volatile liquid comprises a fragrance, a deodorizer, a sanitizer, an insect repellent, or a combination thereof (See page 2, lines 33-36 and claim 4).
Regarding claim 28 (b), Wai Ng et al teach that the wick may be formed of any suitable material, including polyester, polyethylene, cotton, foam rubber, cellulose derivatives such as bamboo or paper, and combinations thereof (See Page 5, lines 24-29).
Brown et al’s teachings are also delineated above and incorporated herein. Specifically, regarding claim 28 (d), Brown et al disclose that compound OLI0013 is trans-2-methyl-butenal. Such compounds may be present at a concentration of from about 0.01% to about 5% (See [0009] and [0022]) (See at least Tables 5-7).
Regarding claim 28 (C), Harada et al teach a diffuser for volatile material such as a volatile aromatic or chemical agent, comprising: a flexible casing having one or more vent holes formed therein, and wherein the said diffuser for volatile material, comprises a cover member with a vent hole, said cover member being provided with an engagement device such as a hook, a pin, and a clip, wherein the cover member is adapted for removably holding the flexible casing therein (See Col. 1, line 51 to Col. 2, lines 5).
Also, regarding claim 28 (c), Air Wick® Essential disclose a mist device (diffuser) shown in the below diagram. The diffuser contains a container comprising a formulation and a cover (cowl) (See Pages 2 and 4).
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It is further disclosed that the mist setting can be adjusted to either a high or low degree based on preference up to 45 days on lowest setting (See page 3).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Wai Ng, Brown et al, Harada et al and/or Air Wick® Essentials with that of Bourne et al to arrive at the instant invention. It would have been obvious to do so because the references teach a device comprising a container comprising a volatile substance and a wick. Bourne et al teach a device that comprises a container, a volatile substance formulation and diffusing element. While Bourne et al teach that the volatile substance may be a fragrance or a pheromone, Bourne et al do not recite any particular compounds. Brown et al however, teach that the volatile substance may be a pheromone trans-2-methyl-2 butenal, and provide guidance on its concentration range. Thus, one of ordinary skill in the art would have been motivated to have selected Brown et al’s pheromone compound for the volatile formulation of Bourne et al with a reasonable expectation of success.
Additionally, Bourne et al teach a wick-based diffuser device and Wai Ng teach a diffuser device comprising a wick holding the volatile liquid. While Bourne et al do not expressly disclose that the wick comprises polyethylene, Wai Ng does. Thus, it would have been obvious to have included the teachings of Wai Ng on a wick made of polyethylene into the disclosure of Bourne et al with a reasonable expectation of success.
Bourne et al also doses not expressly recite the device comprising a cover (cowl) with one or more vent openings, but this is well known in the art as taught by Harada et al and Air Wick® Essentials.
The claims would have been obvious because a person of ordinary skill has good reasons 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.
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, 6-18 and 20-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 19/153,522 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims are not patentably distinct from the reference claims because the examined claims would have been obvious over the reference claims.
Examined claims are drawn to a diffuser device, comprising: (a) a container having walls defining a chamber for reception of a formulation, the container having an outlet and comprising: i. a first layer comprising polyethylene terephthalate (PET); ii. a second layer comprising polyethylene; and iii. a third layer comprising ethylene-vinyl alcohol copolymer (EVOH copolymer); (b) a passive diffusing element associated with the outlet and operable to control discharge of the formulation from the container, wherein the diffusing element is a membrane mounted across the outlet, the membrane being permeable to at least portion of the formulation in vapour form to control discharge of said portion of the formulation over about 30 days; and (c) a formulation contained within the chamber, the formulation being sufficiently volatile to passively diffuse at ambient temperature and comprising a pheromone having a vapour pressure of from about 16.5 mmHg to about 25 mmHg.
Reference claim 1 is are also directed to a diffuser device comprising a container containing a formulation comprising a volatile substance and an outlet. Claim 2 describes a diffusing element having a permeable membrane, claims 3-5 are related to a wick and it comprising polyethylene material, claims 6-11 are related to the pheromone and its amount, and its use on pets, claims 12-18 are related to added ingredients such as solvent and the formulation form such as micro-emulsion or gel, claim 19 describes the three layers of the container, and claims 20-26 are related to features such as having a holder like a table top stand and uses of it for pets.
In other words, while the arrangement of limitations are different, the totality of claims are drawn to the same invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lesniak et al (US 20120267279).
Lesniak et al teach a container for air freshening materials or other volatiles includes a receptacle or base and a cover that may be rotated from a closed position to multiple open positions while still engaged to the base to create vent passageway(s) between the cover and the base (See abstract and [0009]).
It is disclosed that the receptacle or base preferably includes a containment section adapted to house an air freshening material, such as a fragrance gel, or other volatile (See [0010]).
Lesniak et al teach that preferably, the receptacle or base is molded from a thermoplastic material, including polyethylene (PE), polyethylene terephthalate (PET), polypropylene, ethylene vinyl acetate, acrylonitrile butadiene styrene (ABS), and styrene-acrylonitrile, copolymers thereof, and mixtures thereof. Further, the resin composition is preferably mixed, blended, or compounded with additives to form an injection moldable material (See [0030] and [0047]).
It is further disclosed that the said air freshening materials include gels, powders, polymer beads, liquids, etc. Representative air freshening gels include an aqueous composition comprising one or more gellants, fragrance oils, water, hydric solvents (See [0032]).
Regarding claim 24, from the Figures 1-9, it is clear that the device has a flat bottom and can be placed on a table (i.e. a table-top stand).
Fabrega et al (7,070,172).
Fabrega et al teach devices for evaporating volatile substances in a closed environment, without the use of electric power, heating elements or absorption wicks, for the purpose of simplifying and maximally reducing the cost of the device, but at the same time maintaining its efficacy and also allowing the user to be able to adjust at will the degree of evaporation of said product. For that purpose, the evaporator device uses a vapor permeable membrane as the element responsible for causing the evaporation of the product to be evaporated. The device is especially intended to be used with the cooperation of an air current with a suitable temperature enhancing the evaporation and diffusion of the volatile substance, such as the ventilation air outlet of a vehicle, for example. The volatile substance consists in an air-freshening product, insecticide or the like. The invention is also related to a method for the evaporation of volatile substances through a membrane (See abstract and Col. 1).
Regarding claims 1 and 16, Fabrega et al teach a diffuser device comprising a container of at least one type of volatile substance; a strip of vapor permeable material in contact with said volatile substance, said strip being exposed to said air flow; a casing supporting said container and said strip of vapor permeable material to keep them under the influence of said air flow. The container houses the volatile substance to be evaporated which is preferably in a liquid state and the container having a float cup shape is hermetically sealed by an evaporation membrane such that it prevents any spillage, but is vapor permeable (See Col. 3, lines 39-51 and claim 1).
Regarding claim 23, Fabrega et al disclose that the device is complemented with means for fixing to a fixed structure, such as the grating of a ventilation air equipment outlet, for example, such as the ventilation air outlet of a motorized vehicle, or an air-conditioning equipment (See Col. 2, lines 24-28).
Regarding claim 12, it is disclosed that the container may comprise two different aromatic substances and that “To enhance the appearance of the device (1), the container (3) can be transparent and the volatile substance housed therein can be colored, for example with a color associated to the aroma said substance releases” (See Col. 4, lines 31-38).
Response to Arguments
Applicant's arguments filed 12/03/25 have been fully considered but they are not persuasive.
Applicant’s amendments to the claims have necessitated modified grounds of rejections. Applicant’s arguments so far as they pertain to the maintained references and rejections are discussed below.
First relevant argument is regarding the rejection of claims over Pozzo, Brown et al and Hu et al under obviousness. Applicant argues that “Pozzo’s structures and materials are different from the claimed multilayer container with defined barrier and structural layers”. Applicant also argues that Brown and Hu also do not teach the multilayer structure as claimed (See Remarks, page 9).
The arguments are not found convincing. Pozzo teach a diffuser device comprising a volatile substance, and lacks a specific disclosure on the container comprising a permeable membrane or the three layer structure. However, Hu et al teach a volatile composition dispenser wherein the device comprises a permeable membrane for release of the volatile substance and wherein the said membrane is made of polyethylene and Kawai et al teach the multilayer structure each layer made of a different polymer material as claimed. Thus, it would have been obvious to one of ordinary skill in the art to incorporate Kawai et al’s multilayer structure and Hu et al’s permeable membrane into Pozzo’s device for making a more efficient device and allowing the release of the said volatile substance freely.
Applicant further argues that Bourne, Kawai and Wai Ng do not teach the claimed device. Specifically, Applicant argues that Kawai et al “discloses an ethylene-vinyl alcohol copolymer, a resin composition and a molded product. Kawai does not teach a diffuser container with a first layer comprising PET, a second layer comprising polyethylene, and a third layer comprising an EVOH copolymer, arranged as claimed and used in a passive diffusion device for pheromone formulations” (See Remarks, page 10).
It is noted that the specific rejection is not relied upon in this action. However, the arguments are responded to regarding the current rejection.
Applicant’s arguments were given full consideration and found unconvincing. Pozzo and Hu et al’s disclosures were discussed above. Brown et al teach volatile compositions and their components. Kawai et al provide guidance on making a container from polymers including a multi-layer container made from polyethylene, polyolefin, EVOH, etc, and teaches the advantages of using such polymers for making a container.
Specifically, Pozzo teach a diffuser device for holding and diffusing a volatile substance, wherein the said device comprises a body. While Pozzo does not describe the materials making the body, it clearly is made of suitable materials. Hu et al also teach a dispenser for volatile substances and states that the device (dispenser) comprises of suitable barrier materials such as a polymeric film, a polyurethane primer, and polyethylene coating. Suitable polymeric films include polyethylene terephtalate (PET) films, and ethylene vinyl alcohol, and combinations thereof. Kawai et al teach a multilayer container that includes layers of different polymers including PET, polyethylene and EVOH.
While the sequence of the layers is not the same as those in the examined claims, one of ordinary skill in the art is more than capable of determining the sequences and modify the teachings as needed.
Thus, it has been shown that the claimed invention has been adequately disclosed by the prior art. In this regard the courts have held that “[w]hen an application 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 application 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 v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Applicant concludes the argument by stating that “None of the cited references address a device specifically for use in treating pets using a multilayer container comprising PET/polyethylene/EVOH and a formulation comprising pheromone….” , (See Remarks, page 10).
This statement is also not persuasives. Pozzo teaches a volatile substance diffuser comprising an outlet and a composition that can comprise fragrance or a pheromone, which can be worn by a user (reading on use by a pet). Hu et al teach a similar device wherein the volatile substance is covered by a permeable membrane which allows for passive diffusion of the said volatile substance. Kawai et al teach a container comprising a multilayer container comprising polymers including PET, polyethylene and EVOH. Brown et al teach a device for releasing a pheromone such as trans-2-methyl-butenal, present at a concentration of from about 0.01% to about 5% and used to treat pets including altering behavior. Hu et al also teach a volatile dispensing device that can release its volatile substance up to about 35 days.
Claims 1, 6-18 and 20-29 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.
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/Mina Haghighatian/
Mina Haghighatian
Primary Examiner
Art Unit 1616