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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 and 17, and the species of 3-(dodecylthio)-1-(2,6,6-trimethyl-3-cyclohexen-1-yl)-1-butanone as the profragrance compound (i.e. Haloscent D) and 2-methyl-3-[4-(2-methyl-2-propanyl)phenyl] ]propanol as the perfuming ingredient of Log P above 3 (i.e. Lilial) with claims 1-7 and 17 reading on the elected species, in the reply filed on 9/23/2025 is acknowledged.
Claims 7-11, 14-16 and 18-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/23/2025. Applicants indicated that claim 7 reads on the elected species, however, while claim 7 lists Lilial, claim 7 also requires a combination of perfuming ingredients having a LogP above 3 and applicant did not elect a combination.
Claim Objections
Claim 3 is objected to because of the following informalities: Section e) recites “in which formulae..” this is grammatically awkward. The Examiner suggest amending the claim to recite “wherein in the formula…”
Claim 3 is objected to because of the following informalities: claim 3 recites “where at least one profragrance…” instead of “where the at least one profragrance…”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-3 and 17 is 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 2 recite “air/oxygen” thus it’s unclear if the claim is embracing oxygen or air (which is a mixture of gases which including oxygen), thus the metes and bounds of the claim are indefinite.
In Claim 3, section f), the phrase “(with a m+1 valence)”renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, section g), the phrase “(in which case w=1 and n=1))”renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, section g), the phrase "e.g" and renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, section g), the phrase “or still a…”, it’s unclear what is meant by this phrase as section g does hasn’t previously defined Q in the manner following the phrase.
Regarding claim 3, section g), the phrase "such as" and renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 17 is rejected in view of its dependency on claim 3.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-6 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2016035059, as evidenced by ChemSpider (Lilial) and SciFinder (Haloscent D).
JP’059 discloses a liquid detergent, which reads on a perfuming composition of matter. Working examples 18-24 teach a detergent formulation comprising F-1 (i.e. 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone, elected species of profragrance compound) and D-1 which is taught to comprise Lilial (elected species of perfuming ingredient having a LogP above 3).
Regarding claim 1a and 3-5: As discussed above, the detergent comprises 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone. As evidenced by SciFinder, 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone is also known as Haloscent D (i.e. the elected species). While the prior doesn’t specify the trans isomer, the prior art anticipates the elected species and Applicant states that the elected species reads on instant claim 5, as such the limitations of the claims have been met.
Regarding claims 1b, 6 and 17: As discussed above, the detergent comprises Lilial. As evidenced by ChemSpider, Lilial is also known as 2-methyl-3-[4-(2-methyl-2-propanyl)phenyl]propanol.
Regarding claim 2: As the prior art anticipates the elected species and a compound and its properties are inseparable, the 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone is inherently capable of releasing a perfume raw material upon exposure to oxygen or enzymes.
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 and 17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of copending Application No. 18/260297 (reference application), as evidenced by SciFinder (Haloscent D). Although the claims at issue are not identical, they are not patentably distinct from each other because both teaches perfuming compositions of matter comprising as least 2-methyl-3-[4-(2-methyl-2-propanyl)phenyl]propanol and 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone. As evidenced by SciFinder, 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone is also known as Haloscent D. While the prior doesn’t specify the trans isomer, the prior art teaches the elected species and Applicant states that the elected species reads on instant claim 5, as such the limitations of the claims have been met.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of copending Application No. 18689307 (reference application), as evidenced by SciFinder (Haloscent D). Although the claims at issue are not identical, they are not patentably distinct from each other because both teaches perfuming compositions of matter comprising as least 2-methyl-3-[4-(2-methyl-2-propanyl)phenyl]propanol and 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone. As evidenced by SciFinder, 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone is also known as Haloscent D. While the prior doesn’t specify the trans isomer, the prior art teaches the elected species and Applicant states that the elected species reads on instant claim 5, as such the limitations of the claims have been met.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613