The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Formal Matters
Claims 2, 4, and 9 are cancelled. Claims 13-24 are new. Claims 1, 3, 5-8, and 10-24 are pending and under examination.
Priority
This application is a national stage entry of PCT/US2021/062087 filed on 12/7/2021 claims priority from US provisional application 63/122,221 filed on 12/7/2020 and European application EP20306614.7 filed on 12/18/2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/6/2025 and 12/12/2025 were filed after the mailing date of the non-final on 7/9/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Objections and Rejections Withdrawn
The objection over claim 2 is withdrawn as this claim is cancelled rendering the objection moot.
The rejection under USC 101 is withdrawn as the applicant amended claims 1 and 10 to incorporate the limitation of claim 4, which was not rejected under USC 101.
The rejections under USC 112(b) for broad and narrow in the same claim is withdrawn per applicant’s amendment to these claims.
The rejection under USC 102(a)(1) over Henry Rose is withdrawn per applicant’s amendments.
The rejection under USC 102(a)(1) over Giorgio Armani is withdrawn per applicant’s amendments.
The rejection under USC 102(a)(1) over Chang is withdrawn per applicant’s amendments.
As these rejections are withdrawn, applicant’s toward these rejections are now moot.
New Objection and Rejection – As Necessitated by Applicant’s Amendments
Claim Objection
Claims 1 and 10 are objected to for the recitation of “methyl 3-(3.5-di-tert-buytl-4-hydroxyphenyl)propanoate” which has a period/point between “3” and “5” where this needs to be a comma “,” to be “3, 5”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 20 and 24 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 20 and 24 provide for 0.0001 wt% to 0.1 wt% of tris(tetramethylhydroxypiperidinol) citrate, which is the same range for this ingredient present in claim 1 and 10, on which claims 20 and 24 individually depend on. Thus, they do not present a further limitation to the ranges provided in the claims on which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Maintained Rejection – Modified As Necessitated by Amendments
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 3, 5-8, and 10-24 are rejected under 35 U.S.C. 103 as being unpatentable over Giorgio Armani (Mintel, Perfume Oil, Record ID 3972477, April 2016, in applicant’s IDS), Chang US 5077069A and DE 202018002593 U1 (with Google English translation).
Giorgio teaches a perfume oil with parfum, benzyl alcohol, Tris(tetramethylhydroxypiperidinol) citrate, propylene glycol, benzyl benzoate, tocopherol and citric acid (ingredients).
Giorgio does not teach the amounts and proportions of the ingredients in the formulation, but provides them together for a single composition.
Chang teaches a composition of natural antioxidants comprising tocopherol, ascorbic acid, citric acid and phospholipids (abstract). Chang teaches sample B composition in table 1b having 0.10% tocopherol, 0.02% ascorbic acid and 0.02% citric acid (also see table 1a). Sample B of table 1 also contains hexane and anhydrous ethanol (solvents). The ratio of tocopherol to citric acid is 0.1:0.02 (or 10:2 or 5:1). Chang teaches cosmetic products for the compositions (column 4, lines 31-34 and column 1).
Chang does not teach tris (tetramethylhydroxypiperidinol) citrate.
DE ‘593 teaches a skin care composition with perfume, Tris (Tetramethylhydroxypiperidinol) citrate 0 to 0.1, preferably 0.002 and citric acid 0.1 to 1, preferably 0.16233 (claims of DE ‘593).
One of ordinary skill in the art before the time of filing would have included 0.002% of tris(tetramethylhydroxypiperidinol citrate in a cosmetic/skin care formulation with perfume, 0.1% tocopherol and 0.02% citric acid by the combined teachings of the prior art to achieve weight ratios of primary antioxidant/tocopherol to tris(tetramethylhydroxypiperidinol of 0.1:0.002 (1:0.02 or 50:1) with a reasonable expectation of success based on the combined teachings of the prior art.
Response to Arguments over the Rejection under USC 103
Applicant argues that the composition of the instant claims provides superior results such as better antioxidant effect that BHT or greater than that of controls lacking one or more of the components, and that none of the references recognizes tris(tetramethylhydroxypiperidinol) citrate as an antioxidant ingredient. It is noted that Giorgio recognizes a composition with all the ingredients of applicant’s claims without mention of the amounts. The additional references of Chang and DE 202018002593 provide for prior art recognized amounts of the ingredients that are present in Giorgio. Chang recognizes antioxidant effects provided by compositions with tocopherol, citric acid and ascorbic acid that can be used for cosmetics. DE ‘593 provides for an overlapping range and amount of tris(tetramethylhydroxypiperidinol) citrate of applicant’s claims as well as use in perfume skin compositions. Thus, Giorgio provides for a perfume/fragrance formulation of all the ingredients and the prior art composition provides its ability for antioxidant effects as does applicant’s claims.
Applicant argues that although DE ‘593 provides for tris(tetramethylhydroxypiperidinol) citrate, it does so mainly for color protection effect. It remains that DE ‘593 provides a perfume composition that would have tris(tetramethylhydroxypiperidinol) citrate in embodiments. The fact that color protection is discussed in DE ‘593 does not prevent one of ordinary skill in the art from using this ingredient in such an amount in other perfume/fragrance compositions especially as Giorgio recognizes its use in its perfume formulation.
Applicant argues that DE ‘593 does not provide a motivation to combine all the ingredients of applicant’s claims. The primary teaching of the combination comes from the teachings of Giorgio as provided above. Chang provides motivations that there would be a recognized antioxidant effect based on presence of tocopherol with the citric acid and ascorbic acid.
Applicant argues that DE ‘593 provides for sodium benzotriaozolyl butylphenol as another option without motivation of using tris(tetramethylhydroxypiperidinol) citrate. As noted by Giorgio, there exists a composition with tris(tetramethylhydroxypiperidinol) citrate and the other ingredients of the claims. Thus, the teaching of using tris(tetramethylhydroxypiperidinol) citrate in such a composition comes from Giorgio with Chang and DE ‘593 providing for amounts of such ingredients in cosmetic and/or perfume formulations, which would lead to such weight ratios as in applicant’s claims. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For these reasons, the combination of the references provides a formulation of applicant’s claims with the combination of all the ingredients coming from the perfume formulation provided in Giorgio.
Although not necessary for this rejection to be maintained, as tocopherol is presented as an option to methyl 3-(3,5-di-tert-butyl-4-hydroxyphenyl) propanoate (only one has to be provided for in teaching the claim), the formerly cited reference of Henry Rose provides for methyl 3-(3,5-di-tert-butyl-4-hydroxyphenyl) propanoate in a perfume composition with tocopherol, citric acid and solvent. Thus, this is a recognized ingredient for such perfume compositions in the prior art.
Conclusion
No claims are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached on M-F 9:00 am to 6:00 pm EST.
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, Brian-Yong Kwon can be reached on (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
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