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 .
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.
The following claims are rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims listed below of U.S. Patent No. 12,264,295.
Current claims
Patent claims
2
1
19
6
20
7
21
8
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent does not include a method to confer, improve, enhance, or modify the freshness of a perfuming composition. However, the patent teaches a fragrance delivery system (abstract) that contains the same pro-perfume compound and to be used in perfumed products (abstract) such as personal care products or home care products as applicants cite in the specification as the preferred use of the claimed invention. Therefore, the patent claims read on the claims of the present invention.
The following claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims listed below of copending Application No. 18/255,978 (reference application).
Current claims
Copending application claims
1
13 and 15
2
2
3
4
Although the claims at issue are not identical, they are not patentably distinct from each other because the method for conferring, improving, enhancing and modifying the fragrance intensity of the copending application is for a shampoo and, thus, more specific. Therefore, It is clear that all the elements of the application claim 1 are to be found in the copending application claim 13 (as the application claim 1 fully encompasses the copending application claim 13). The difference between the application claim 1 and the copending application claim 13 lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 13 of the copending application is in effect a “species” of the “generic” invention of the application claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 1 is anticipated by claim 13 of the copending application, it is not patentably distinct from claim 13 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The following claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims listed below of copending Application No. 18/255,978 (reference application).
Current claims
Copending application claims
1
14
2
3
Although the claims at issue are not identical, they are not patentably distinct from each other because the method for conferring, improving, enhancing and modifying the fragrance intensity of the copending application is for a perfume or cologne and, thus, more specific. Therefore, It is clear that all the elements of the application claim 1 are to be found in the copending application claim 14 (as the application claim 1 fully encompasses the copending application claim 14). The difference between the application claim 1 and the copending application claim 14 lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 14 of the copending application is in effect a “species” of the “generic” invention of the application claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 1 is anticipated by claim 13 of the copending application, it is not patentably distinct from claim 14 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The following claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims listed below of copending Application No. 18/688,051 (reference application).
Current claims
Copending application claims
2
5
3
6
4
7
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current invention do not include a method of conferring, improving, enhancing or modifying the freshness of a perfume composition. However, the specification of the copending application states that the composition’s primary purpose is to confer or modulate a pleasant odor using the claimed compound. Therefore, the copending application reads on the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The following claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims listed below of copending Application No. 19/204,162 (reference application).
Current claims
Copending application claims
1
16
2
4
3
6
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the copending application is for modifying the fragrance intensity, however, the current claims modify the freshness of the composition. The specification of the copending application states that the composition is used for freshening the composition (claim 14).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, 7-10, 12-17, and 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Helmlinger et al (US 3,883,572).
With regards to claims 1 and 12, Helmlinger teaches an odorant (abstract) that has the following structure:
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(column 3, lines 15-20) that is used because of its interesting aroma properties and for generating raspberry aromas (column 1, lines 55-64) reading on a method to modify the scent.
With regards to claims 2, 3, and 16, Helmlinger teaches an odorant (abstract) that has the following structure:
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(column 3, lines 15-20).
With regards to claims 5 and 17, Helmlinger teaches compound to give a raspberry aroma (column 1, lines 55-64) reading on fruity.
With regards to claims 7-9, it is important to note that the claim does not require the composition to impart all of a fruity, floral, fresh, or woody odor. The broadest reasonable interpretation requires one of these properties to be present and the dependent claims do not require the other properties to be present. Therefore, the limitations further limiting these properties do not need to be met.
With regards to claim 10, Helmlinger teaches the amount of the above compound to be 10% by weight (column 4, lines 20-25).
With regards to claim 13, Helmlinger teaches the compound to be used in an amount effective to give off the raspberry scent (column 3 line 56 to column 4 line 45).
With regards to claims 14 and 19-21, Helmlinger teaches the amount of the above compound to be 10% by weight (column 4, lines 20-25).
With regards to claim 15, Helmlinger teaches the compound to be used in a perfume (column 4, lines 25-42).
Claims 1-10 and 12-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fehr et al (WO 03/049666).
With regards to claims 1, 2, and 12, Fehr teaches a method imparting freshness to a fragrance composition (page 17) by adding the following compound:
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(page 3) wherein
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(pages 3-6).
With regards to claim 3, Fehr teaches the following compound:
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(page 40).
With regards to claims 4 and 16, Fehr teaches the compound to include the following:
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(page 41).
With regards to claims 5-6 and 17-18, Fehr teaches the addition of 1-[5,5-dimethyl-1-cyclohexen-1-yl]4-penten-1-one (page 16) as applicants cite as reading on providing a fruity odor.
With regards to claims 7-9, it is important to note that the claim does not require the composition to impart all of a fruity, floral, fresh, or woody odor. The broadest reasonable interpretation requires one of these properties to be present and the dependent claims do not require the other properties to be present. Therefore, the limitations further limiting these properties do not need to be met.
With regards to claims 10 and 13, Fehr teaches the proportions of the compound to be used to be such as to have an olfactory effect on the composition (page 21).
With regards to claims 14 and 19-21, Fehr teaches the typical concentration to be 0.001 to 5% by weight (page 21).
With regards to claim 15, Fehr teaches the compound to be used for a consumer product (page 21).
Claims 1-10 and 11-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Struillou et al (WO 2020/188079) with US 2023/0032098 used for citation purposes.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With regards to claims 1 and 12-13, Struillou teaches a fragrance delivery system including a pro-perfume compound (abstract) that enhances the impact of the fragrance (0012).
With regards to claims 2 and 16, Struillou teaches the pro-perfume compound to be the following compound:
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(0040) wherein
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777
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389
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255
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264
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(0041-0055).
With regards to claim 3, Fehr teaches the compound to include the following structure:
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(0103).
With regards to claim 4, Fehr teaches the compound to include 3-(dodecylthio)-1-(2,6,6-trimethyl-3-cyclohexen-1-yl)-1-butanone (0104).
With regards to claims 5-6 and 17-18, Fehr teaches the composition to include 1-(5,5-diimethyl-1-cyclohexen-1-yl)-4-penten-1-one (0101) as applicants cite as providing a fruity smell.
With regards to claims 7-9, it is important to note that the claim does not require the composition to impart all of a fruity, floral, fresh, or woody odor. The broadest reasonable interpretation requires one of these properties to be present and the dependent claims do not require the other properties to be present. Therefore, the limitations further limiting these properties do not need to be met.
With regards to claims 10, 14, and 19-21, Fehr teaches the amount of the pro-perfume to be 15% (0213).
With regards to claim 15, Fehr teaches the composition to be used for a perfumed consumer product (0002).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references teach a perfumed composition that contains the pro-perfume compound of claims 2, 3, and/or 4: Fehr et al (US 7,935,669), Williams et al (US 2015/0217015), Williams et al (WO 2015/119813), Nwachukwu et al (US 2017/0274111), Turner et al (US 2019/0093046), Womack et al (WO 2021/123144), and Osborne et al (WO 2022/063943).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763