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 .
Status of Claims
Amendment filed on 02/06/2026 is acknowledged.
Claims 1-2, 5, 7-9, 13, 15 and 20 are amended. Claims 16-19 remain cancelled.
Claims 1-15 and 20 are pending and being examined on the merits herein.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 02/06/2026, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Priority
This instant application 18247402, filed on 03/30/2023, is a 371 of PCT/EP2021/079432, filed on 10/22/2021, claims for domestic benefit of 63104591, filed on 10/23/2020; and also claims foreign priority to European Patent Office 20208004.0, filed on 11/17/2020.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 11/06/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 02/06/2026.
Claim Interpretation
Claims 3-13 each recites the composition comprises “… to about 100%” of a compound. Since a composition by default must contain more than one compound, the claims are interpreted as containing other ingredients even when the specific compound is at about 100% of the composition.
The phrases in claims “to inhibit, reduce, or suppress the perception of a sweat malodor in a subject”, “the subject’s perception of the sweat malodor is inhibited, reduced or suppressed”, and “the sweat malodor comprises 3-methyl-3-sulphanylhexanol” are interpreted as intended use or property of the composition, because they do not structurally contribute to the composition or steps of the method.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 and 15 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to laws of nature and natural phenomena without significantly more.
The PTO guidance for determining subject matter eligibility under 35 U.S.C. 101 may be found in the Federal Register notice/ Subject Matter Eligibility update,” hereafter referred to as the “Guidance.” The Guidance supersedes the factor-based analysis of the “Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, and/or Natural Products” from March of 2014. The Guidance provides a test for determining subject matter eligibility under 35 U.S.C. 101 that comprises the following steps:
1) Is the claim to a process, machine, manufacture, or composition of matter? If the answer to this question is “no,” then the claim is not eligible subject matter under 35 U.S.C. 101. If the answer to this question is “yes,” then the analysis proceeds to the second step. 2) Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions)? If the answer to this question is “no,” then the claim is eligible subject matter under 35 U.S.C. 101. If the answer to this question is “yes,” then the analysis proceeds to the third step. 3) Does the claim recite additional elements that amount to significantly more than the judicial exception? If the answer to this question is “no,” then the claim is not eligible subject matter under 35 U.S.C. 101. If the answer to this question is “yes,” then the claim is eligible subject matter under 35 U.S.C. 101. Applicant is also directed to Section III of the Guidance (“Sample Analyses”), in particular, Example 5, Mayo v. Prometheus (U.S. Patent No.
6,355,623). In the instant case, the claims are drawn to one of the statutory categories, i.e., a composition of matter, so the analysis proceeds to the second step.
With respect to the second step, the claims are deemed to be directed to a judicially recognized exception, i.e., a product of nature, as such the composition comprising a compound selected from a group including patchouli oil (extracted from patchou, any terpenes fractions of pachouli oil or Clearwood with origin of Firmenich SA, Geneva, Switzerland, as evidenced by instant Specification), as claimed in claims 1-2 and 15. Although claim 15 adds an excipient such as a cooling agent to the composition, an example embodiment of natural product that can be derived from instant claim 15, such as a sweat malodor inhibiting composition consisting of patchouli oil and menthol extracted from natural plants patchou and mint plants respectively, while menthol is commonly known as a cooling agent. These naturally occurring compounds present together in a composition and they don’t react with each other or physically change from the compounds how they are isolated. As a result, the answer to the second question is deemed to be “yes,” and the analysis proceeds to the third step.
As indicated above, the third step asks whether the claim recites elements or steps in addition to the claimed judicial exception that amount to significantly more than the judicial exception.
Claim 1 recites “[a] method to inhibit, reduce, or suppress the perception of a sweat malodor in a subject, which comprises contacting the subject with a composition comprising a compound selected from the group consisting of …; wherein the subject’s perception of the sweat malodor is inhibited, reduced or suppressed, and wherein the sweat malodor comprises 3-methyl-3-sulphanylhexanol”. Claim 2 recites “[t]he method of claim 1, wherein the composition comprises …; wherein the subject’s perception of the sweat malodor is inhibited, reduced, or suppressed”. Claim 15 recites “wherein the composition is configured to inhibit a sweat malodor comprising 3-methyl-3-sulphanylhexanol”. Claims 1-2 and 15 each indicates the function of the composition, but does not include structural steps of the method. To the extent of contacting the subject with the composition as the method structural step, a subject, e.g., a person, can simply hold in hand or rub patchou wood sawdust and mint leaves under armpits as means of taking composition comprising patchouli oil and menthol in contact, to trigger subject’s perception of sweat malodor is inhibited, reduced or suppressed. Further, the malodor comprising whatever chemical compounds is a natural thing. As such, the method lacks structural steps and fails to overcome that these compounds are no different from the natural compounds where they occur or how they are isolated from natural sources.
MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, the natural compounds configured to inhibit a sweat malodor comprising 3-methyl-3-sulphanylhexanol when contacting the subject are inherent properties of these natural compounds. As a result, claims 1-2 and 15 do not include additional elements that are sufficient to amount significantly more than the judicial exception, and the answer to third question to be “no” and therefore the claim is not eligible subject matter under 35 U.S.C. 101.
In summary, claims 1-2 and 15 are directly to laws of nature without significantly more, that is, the answer to question 3) is “no,” and therefore, it is not eligible subject matter under 35 U.S.C. 101.
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 1-12, 14-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Frankenbach et al. (US20160090555, 03/31/2016), as evidenced by PubChem (Ethyl Cinnamate, 05/13/2026, PTO-892), in view of Kao et al. (WO2019101821, 05/31/2019, PTO-892).
Frankenbach throughout the reference teaches malodor reduction compositions and methods of making and using such cleaning and/or treatment composition and malodor reduction compositions (e.g., Abstract).
For Claim 1, Frankenbach teaches that in one aspect, a method of controlling malodors comprising contacting a situs (corresponding to a subject in instant claim) comprising malodor and/or will become malodorous (e.g., Claim 15; [0181]), such as amine-based malodors from fish and urine, thiol and sulfide-based malodors, carboxylic acid based malodors (e.g., body and pet odor), (e.g., [0002]), etc., with the materials in the composition able to decrease or even eliminate the perception of one or more malodors (e.g., [0005]). Frankenbach specifies that “malodor” refers to compounds generally offensive or unpleasant to most people (e.g., [0008]).
Frankenbach teaches effective malodor reduction compounds suitable for the composition include allyl heptanoate (e.g., Claim 6, Pg. 55 right column; Pg. 9, Table 3, #745), methyl 2-octynoate (Pg. 2, Table 1, #122), 10-undecenal (e.g., Claim 8, Pg. 60 left column; Pg. 6, Table 1, #871), 2-(3-phenylpropyl)pyridine (e.g., Claim 5, Pg. 46 or Pg. 49 right column; Pg. 4, Table 1, #497), 4-methoxybenzyl acetate (e.g., Claim 6, Pg. 55 right column; Claim 7, Pg. 58, right column), 2,2,5-trimethyl-5-pentylcyclopentan-1-one (same as 2,2,5-trimethyl-5-pentylcyclopentanone)(e.g., Claim 5, Pg. 49 left column; Pg. 10, Table 3, #1115), (E)-oxacycloheptadec-10-en-2-one (same as (10E)-oxacycloheptadec-10-en-2-one) (e.g., Claim 5, Pg. 46 or Pg. 50 left column), 3-(6,6-dimethyl-bicyclo[3.1.1.]hept-2-en-2-yl)propanal (e.g., Claim 5, Pg. 47 or Pg. 51 right column), 3-(benzo[d][1,3]dioxol-5-yl)-2-methylpropanal (same as 3-(1,3-benzodioxol-5-yl)-2-methylpropanal) (e.g., Claim 7, Pg. 57 right column or Pg. 59 left column), methyl 2,2-dimethyl-6-methylenecyclohexane-1-carboxylate (same as (+-)-methyl 2,2-dimethyl-6-methlidenecyclohexanecarboxylate) (e.g., Claim 5, Pg. 48 left column; Pg. 7, Table 1 #1010), ethyl cinnamate CAS 103-36-6 (e.g., Claim 7, Pg. 58 right column; Pg. 9, Table 3 #400; same as ethyl 3-phenyl-2-propenoate, evidenced by PubChem, CAS 103-36-6), undecanal (e.g., Claim 5, Pg. 52 right column; Claim 6, Pg. 55 left column), which are among the compounds in the method to inhibit, reduce or suppress the perception of a sweat malodor in a subject by contacting the subject in claim 1.
In addition to Frankenbach’s teaching of using these compounds to enable malodor reduction; in light of claim interpretation, these compounds taught by prior art would necessarily present the property or be capable of achieving the intended use to inhibit, reduce, or suppress the perception of a sweat malodor in a subject.
For Claims 2-7 and 9-12, Frankenbach teaches that a sum total of from about 0.00025% to about 0.5%, preferably from about 0.0025% to about 0.1 %, more preferably from about 0.005% to about 0.075%, most preferably from about 0.01 % to about 0.05% of 1 or more malodor reduction materials, preferably 1 to about 20 malodor reduction materials, more preferably 1 to about 15 malodor reduction materials, most preferably 1 to about 10 malodor reduction materials (e.g., Claim 1, Pg. 44 right column), overlapping with amount of at least 0.0007 wt.% in instant claim 2 of 2-(3-phenylpropyl)pyridine (compound is taught by Frankenbach as #497 in Table 1 and Claim 5 as discussed above); corresponding to about 1% to about 100% in instant claim 3 of 2,2,5-trimethyl-5-pentylcyclopentanone (compound taught by prior art in Claim 5 and Table 3, #1115 as discussed above); corresponding to from about 2% to about 100% in instant Claim 4 of (10E)-oxacycloheptadec-10-en-2-one (compound taught by prior art in Claim 5 as discussed above); corresponding to about 3% to about 100% in instant claim 5 of 4-methoxybenzyl acetate (compound taught by prior art in claims 6-7 as discussed above); overlapping with from about 0.1% to about 100% of instant claim 6 of 3-(6,6-dimethyl-bicyclo[3.1.1.]hept-2-en-2-yl)propanal (compound taught by prior art in Claim 5 as discussed above); corresponding to from about 7% to about 100% in instant claim 7 of allyl heptanoate (compound taught by prior art in Claim 6 and Table 3 #745 as discussed above); corresponding to about 4% to about 100% in instant claim 9 of (+-)-3-(1,3-benzodioxol-5-yl)-2-methylpropanal (compound taught by prior art in claim 7 as discussed above); overlapping with from about 0.06% to about 100% in instant claim 10 of methyl 2-octynoate (compound taught by prior art in claims 6-7 as discussed above); overlapping with from about 0.4% to about 100% in instant claim 11 of (+-)-methyl 2,2-dimethyl-6-methlidenecyclohexanecarboxylate) (compound taught by prior art in Claim 5 and Table 1 #1010 as discussed above); corresponding to from about 0.7% to about 100% in instant claim 12 of ethyl (E)-3-phenyl-2-propenoate (compound taught by Frankenbach in claim 7 and Table 3 #400 and Millipore Sigma as same compound ethyl cinnamate, as discussed above).
For Claim 8, Frankenbach teaches benzyl 2-hydroxylbenzoate (e.g., Claim 5, Pg. 49 left column), hexyl 2-hydroxybenzoate (e.g., Claim 5, Pg. 48 right column, which are classical isosteres of instantly claimed pentyl 2-hydroxybenzoate. “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Artisans in the field can obviously select different isomers for the similar properties these compounds possess.
For Claim 14, Frankenbach teaches that the method comprising the treatment composition comprises a perfume (e.g., Claim 4), and adjunct ingredient selected from the group including perfumes, perfume delivery systems, solvents, and many others (e.g., Claim 9).
For Claim 15, Frankenbach teaches allyl heptanoate, methyl 2-octynoate, 4-methoxybenzyl acetate and many others for the composition used in malodor inhibiting method as discussed above regarding claim 1, and Frankenbach teaches that the adjunct ingredient (corresponding to excipients) such as pigments (as coloring agents), enzyme stabilizers (e.g., Claim 9), preservative, dye (as coloring agent) (e.g., [0230], Example 6) can be added to the composition.
For Claim 20, Frankenbach teaches in the deodorant composition compounds such as 2-(3-phenylpropyl)pyridine (e.g., Claim 5, Pg. 46 or Pg. 49 right column; Pg. 4, Table 1, #497) (corresponding to at least one ingredient as component (a) of instant claim 20), undecanal (e.g., Claim 5, Pg. 52 right column; Claim 6, Pg. 55 left column), 10-undecenal (e.g., Claim 8, Pg. 60 left column; Pg. 6, Table 1, #871) (corresponding to at least two ingredients as component (b) of instant claim 20).
Frankenbach does not explicitly teach that the composition is configured to inhibit a sweat malodor comprising 3-methyl-3-sulphanylhexanol as recited in instant claims 1, 15 and 20. Frankenbach does not teach the higher amount ranges for the compounds recited in instant claims 3-5, 7-9 and 12.
Kao teaches use of volatile compositions including at least one malodor antagonist optionally combined with perfuming ingredients to limit, decrease or eliminate the perception of malodor (e.g., Abstract). Kao also teaches many compounds suitable for the composition to inhibit, reduce, or suppress of a malodor in a subject by contacting the subject with at least one of these compounds (e.g., Claims 1 and 3), and the malodor is selected from latrine malodor, laundry malodor, moldy malodor, and sweat malodor (Claim 5). Kao teaches compounds that cause malodorous smells existing in many different environmental sources and specifies that 3-methyl-3-sulphanylhexanol (transpirol) is one of the compounds found in axilla malodors or sweat malodor of the body (e.g., [003],[047]).
Kao teaches the many malodor reduction compounds such as allyl heptanoate, dodecanal, 2-methyl-undecanal, 2-pentylcyclopentan-1-one, 2-phenylethyl 2-hydroxybenzoate, (1S, 1R’)-2-(3’,3’-dimethyl-1’-cyclohexyl)ethoxy]-2-methylpropyl 2-propenoate (e.g., [0214]; [0278-0279]), overlapping or being classic isosteres with the instantly claimed compounds throughout the reference suitable to limit, inhibit, or eliminate malodor including sweat malodor. Kao teaches that the composition can comprise ingredients defined in different groups with different amounts, between 2 and 85 wt.% for group I(e.g., [0280]), from 15 to 98 wt.% for group II (e.g., [0282]), while perfuming agents, such as fruity ingredient allyl heptanoate, as group III ingredients from 0.5 to 70 wt.%, or from 0.5 to 50 wt.% (e.g., [0284] (overlapping with amount ranges in instant claims).
It would have been prima facie obvious for one with ordinary skill in the art prior to filing date to incorporate the teaching of a sweat malodor comprising 3-methyl-3-sulphanylhexanol from Kao into the malodor reduction composition and method taught by Frankenbach to arrive at current invention. Frankenbach indicates that components being specifically selected for reduction on broad ranges of malodors of any unpleasant or generally offensive to most people including malodor from body, and Kao teaches the known component of sweat/armpit malodor comprising 3-methl-3-sulphanylhexanol. Since both references teach similar compounds with same intended use, one would have reasonable expectation of success for selecting and composing them in current invention for inhibiting, reducing, or suppressing the sweat malodor that comprises 3-methyl-3-sulphanylhexanol. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Stereoisomers of compounds with same compound molecular formula are considered the same compounds in this office action, unless there is evidence indicating unexpected function is discovered or established among such compounds.
Further, in light of claim interpretation, the phrases “to inhibit, reduce, or suppress the perception of a sweat malodor in a subject”, “the subject’s perception of the sweat malodor is inhibited, reduced or suppressed”, and “the sweat malodor comprises 3-methyl-3-sulphanylhexanol”, are interpreted as intended use or properties of the composition. Since prior art teaches the method comprising the malodor reducing composition, the intended uses would be capable of being achieved, and the properties would necessarily present.
Differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, as discussed above, Frankenbach teaches the compounds with lower amounts in the composition than those amounts in instant claims 3-5, 7-9 and 12, while Kao provides higher amounts for all the ingredients in the composition, that would have motivated artisans to explore and increase the amounts for reasonable expectations of higher efficacy in reducing or suppressing the malodors. Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claims 1-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Frankenbach et al. (US20160090555, 03/31/2016), as evidenced by PubChem (Ethyl Cinnamate, 05/13/2026, PTO-892), in view of Kao et al. (WO2019101821, 05/31/2019, PTO-892), as applied to claims 1-12, 14-15 and 20 above, further in view of Ogura et al. (WO2004078154, 09/16/2004, in record of 05/29/2025).
Combined teaching of Frankenbach and Kao teaches method of malodor reduction by contacting the subject with a composition comprising at least one ingredient such as allyl heptanoate, methyl 2-octynoate, methyl 2,2-dimethyl-6-methylidenecyclohexanecarboxylate, ethyl-E-3-phenyl-2-propenoate, 4-methoxbenzyl acetate, and many others, to provide the subject’s perception of the malodor, such as, sweat malodor comprising 3-methyl-3-sulphanylhexanol, is inhibited, reduced or suppressed, as discussed above in detail and incorporated herein.
Combined teaching of Frankenbach and Kao does not teach in the method using a composition comprising about 0.65 to about 100% of compound ethyl tricyclo[5.2. 1.0.(2,6)]decane-2-carboxylate as recited in instant claim 13.
Ogura throughout the reference discloses a deodorant perfume composition comprising one or more ingredients that is used as a method for masking/harmonizing the malodor including sweat odor and odor of armpit (e.g., claims 1, 4; Pg. 1, lines 11-13).
Ogura exemplifies many masking/harmonizing compounds in different groups suitable for the composition and malodor masking method including group III compound ethyl tricyclo[5.2. 1.0.(2,6)]decane-2-carboxylate (Pg. 33, Line 22-23) (corresponding to instant claim 13), 2-methyl-3-(4-isopropylphenyl)propanal (cyclamen aldehyde, same as (+-)-3-(1,3-benzodioxol-5-yl)-2-methylpropanal, Pg. 33, Lines 26-27; Table 9-1, pg. 64) (corresponding compound in instant claim 9).
Ogura teaches that the amount of component (III) is less than 50% by weight and preferably in the range of from 0 to 40% by weight (Pg. 36, Lines 11-21) (overlapping with amount range about 0.6% to about 100% in instant claim 13).
It would be prima facie obvious for a person with ordinary skills in the art prior to the filing date to incorporate the teaching of the specific compound taught by Ogura into the method and composition of Frankenbach and Kao to arrive at current invention, because all references share common ingredients for same intended use for malodor reduction and masking. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). For this instance, the specific compound amount in instant claim 13 overlaps with that taught by prior art . Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Response to Arguments
Applicant Remarks/Arguments filed on 02/26/2026 have been fully considered.
35 U.S.C. 101 Rejections
Applicant asserts that claims 1 and 2 are not directed to a judicial exception, see MPEP 2106.04(d)(2), because they are directed to methods to inhibit, reduce, or suppress the perception of a sweat malodor in a subject, which recites an action that effects a particular treatment or prophylaxis for a disease or medical condition by contacting the subject with a composition.
As applicant points out, MPEP 2106.04(d)(2) states “[A] claim reciting a judicial exception is not directed to the judicial exception if it also recites additional element(s) demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such integration is when the additional elements apply or use the recited judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. The application or use of the judicial exception in this manner meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms a claim into patent-eligible subject matter. Such claims are eligible at Step 2A, because they are not "directed to" the recited judicial exception.”
The sweat is a natural biological secretion from ordinary people, and its odor is a subjective matter of personal perception or preference as malodor or pleasant flavor. Even though the method and composition in application is directed to reduce the malodor, contacting the subject with the composition in this particular technological environment with sweat is not the same as particular treatment or prophylaxis for a disease or medical condition, because apparently sweating is not a disease, and treatment by contacting this composition to the subject is not going to prevent it from sweating or producing more malodor out of the glands. The compounds in the composition, as instantly claimed, merely change “the subject’s perception of the sweat malodor”; there is no evidence to show that these malodor reducing compounds react on the subject by contacting and differ from counterparts where they exist or isolated from natural sources, unlike compounds perform in treatment for disease or medical condition.
Further, in light of claim interpretation, the functional phrases in the claims are interpreted as intended use or properties of the method or composition, because they do not structurally contribute to the composition or steps of the method.
Applicant asserts that claim 15 is amended to recite a composition that requires purposeful human intervention in formulation and is therefore a manufactured composition of matter, not a product of nature.
Purposeful human intervention does not necessarily mean the invention is eligible subject matter under 35 U.S.C. 101. As presented above in office action, the amended claim still does not pass the test of being eligible subject matter. Because the excipients in claim 15 still present a simple combination of natural components to form the composition, and the composition fails to show “significantly more”. As presented in office action above in detail, the most relevant is copied below for reference:
Claim 15 recites “wherein the composition is configured to inhibit a sweat malodor comprising 3-methyl-3-sulphanylhexanol”. Claims 1-2 and 15 each indicates the function of the composition, but does not include structural steps of the method. To the extent of contacting the subject with the composition as the method structural step, a subject, e.g., a person, can simply hold in hand or rub patchou wood sawdust and mint leaves under armpits as means of taking composition comprising patchouli oil and menthol in contact, to trigger subject’s perception of sweat malodor is inhibited, reduced or suppressed. Further, the malodor comprising whatever chemical compounds is a natural thing. As such, the method lacks structural steps and fails to overcome that these compounds are no different from the natural compounds where they occur or how they are isolated from natural sources.
In conclusion, the 35 U.S.C. 101 Rejections remained.
35 U.S.C. 103 Rejections
Applicant has amended claims to eliminate the compounds that were relied upon in previous rejections and believed that the 103 rejections should be withdrawn.
In light of the amendments, new ground of rejections with primary prior art, Frankenbach in combination with Kao and Ogura, are presented in this office action. The combined prior art teaches the current invention.
Please refer to entire office action as a response to the remarks/arguments.
Conclusion
No claim is 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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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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