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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 14 August 2023. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form
Response to Election/Restrictions
Applicant’s election with traverse of Group II, claims 5-10 and 14-15, in the reply filed on 10 June 2026 is acknowledged. Applicant argues the restriction is improper due to unity of invention by 37 CFR 1.475 (b), as the claims are drawn only to (2) a product and a process of use of said product. Applicant argues the product is the fragrance composition/compound and the process of use of said product (fragrance composition/compound) (see page 7 of Applicant’s Argument).
The groups listed in the previous office action are:
Group I, claims 1-4, drawn to a method of using a fragrance compound
Group II, claims 5-10 and 14-15, drawn to a fragrance composition comprising the fragrance compound
Group III, claims 11-13, drawn to a method of using the fragrance composition
In response, Applicant’s arguments have been considered but remain unpersuasive. While Group II and III fall within the argued merits to product (Group II) and the process of using the said product (Group III) claims, respectively, their scope differs fundamentally from Group I. Group I is directed to a method of use to a specific compound only and yields a distinct product.
Furthermore, the Groups lack a “special technical feature” that makes a contribution over the prior art of Morelli (US-6177389-B1, located in the Information Disclosure Statement on 14 August 2023). Morelli discloses a fragrance composition comprising the claimed compound (I) as 2,6,6-trimethylbicyclo 1.3.3 heptan-2-ol (col 10, line 17; Abstract) (see page 4 of Requirement for Restriction), rendering the compound novel.
Applicant was required to elect a Group that fall within the list of prosecution on the merits to which the claims were restricted if no generic claim was finally held to be allowable. The previous restriction breaks the unity of invention, therefore the restriction is proper and is made final.
Claims 1-4 and 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to the nonelected inventions, there being no allowable generic or linking claim.
Therefore, claims under consideration in the current office actions are claims 5-10 and 14-15.
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 8 and 14 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.
With regard to claims 8 and 14, the phrase "preferably" 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 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 5-9 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Elzinga (US-20150080265-A1, located in the Information Disclosure Statement).
With regard to claim 5, Elzinga’s Table 34, teaches a trans-2-pinanol formulation, comprising trans-2-pinanol (i.e., claimed 2,6,6,-trimethyl-norpinan-2-ol, compound 34) represented by the integer 34 (Table 1). Table 34, subfamily 35, includes trans2-pinanol (compound 34), with other compounds (Table 34), which reads on a composition comprising the claimed compound.
Trans-2-pinanol reads on the claimed compound, as stated in [instant specification located on page 2, para 0005] the compound may be present in any stereoisomeric form or may be present as any mixture of stereoisomers.
Elzinga does not explicitly teach the mentioned formulation has a different fragrance included. However, Elzinga teaches that individual terpene compounds have distinct fragrances which allows for different fragrance notes such as light, fresh, fruity, citrus, green, or floral, that are detectable upon application. Elzinga further teaches the skilled artisan can blend perfume raw materials to achieve a desired fragrance profile (para [0091]).
With the regard to additional fragrances, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to utilize different compounds within Elzinga’s composition to logically produce other fragrances. Elzinga would guide one having ordinary skill in the art to employ different terpene compounds to generate different fragrances (para [0091]). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
With regard to claim 6, Elzinga teaches that the “terpene trio (wt./vol.)” designation in the referenced tables to represent the formulations “A (10%), B (15%), C (75%),” (para [0142]).
Formulation A: 10% equates to a ratio of 1/10
Formulation B: 15% equates to a ratio of 3/20
Formulation C: 75% equates to a ratio of 3/4
Furthermore, Table 34, subfamily 35, demonstrates combinations 34+35+36; Table 32, subfamily 34, demonstrates combinations 32+34+35; and subfamily 33, demonstrates combination 32+33+34. Trans-2-pinanol (compound 34) is located in every position (A, B, and C). These calculated ratios of 1:10 (10%), 3:20 (15%), and 3:4 (75%), fall within the claimed range of 1:1000 to 1:0.1.
[Specifically, regarding the weight conversion to ratio: Based on the percentages provided, 10% is out of 100% (10/100 is reduced to the simplest fraction= 1:10), 15% is out of 100% (15/100 is reduced to the simplest fraction= 3:20), and 75% is out of 100% (75/100 is reduced to the simplest fraction= 3:4), thereby falling within the claimed compound].
With regard to claim 7, Elzinga teaches that the “terpene trio (wt./vol.)” designation in the referenced tables to represent the formulations “A (10%), B (15%), C (75%),” (para [0142]). Table 34, subfamily 35, demonstrates combinations 34+35+36; Table 32, subfamily 34, demonstrates combinations 32+34+35; and subfamily 33, demonstrates combination 32+33+34. Trans-2-pinanol (compound 34) is located in every position (A, B, and C). This reads on the claim limitations due to the compound at a concentration of 10, 15, and 75%, falling with the range of 0.0001 to 99.9%.
With regard to claim 8, as stated above, Elzinga teaches trans-2-pinanol (34) in every position (A, B, and C), which demonstrates a percentage of 10, 15, and 75% (Table 32 and 34), respectively, falling within the claimed range of application. Additionally, Elzinga teaches the embodiment has fragrance notes which may be described as having a lightly floral, fruity, flowery, fresh, green, sweet or the like (paras [0015, 0089, 0091]), which reads on the scent notes limitation.
This disclosure also reads on the “sensory effective amount”, as stated in [instant specification located on page 5, para 0018] the compound must be employed in a sensory effective amount within the intended scope of the use and typically by combining it with other fragrance components.
With regard to claim 9, Elzinga teaches that while the fragrance composition is primarily terpene-based (Abstract), it may also include aldehydes, esters, alcohols, and lactones (para [0084]).
With regard to claim 14, Elzinga teaches contacting an olfactorily detectable quantity of a composition with a carrier substance, such as toiletry, perfume, cosmetic, incense, candle, etc. (para [0037]). Consequently, the carrier substance within Elzinga can be interpretated to relate to an article, as it functionally satisfies structural limitations by performing the same operational function described in the [instant specification located on page 17, para 0044].
Furthermore, Elzinga’s Table 34, subfamily 35, discloses a formulation of trans2-pinanol (34), with other compounds, which reads on the composition comprising the compound and other fragrances. Elzinga further teaches additives such as modifiers (e.g. aldehyde, para [0024]) and emulsifiers (e.g. propylene glycol and cannabinoids, para [0099]) in a range of 0.5 to 80% (wt./vol.) (para [0101]), which further reads on other components.
As stated above, Elzinga teaches the compounds exhibit different fragrances.
Elzinga does not explicitly teach the article comprising these components together.
With regard to the carrier configuration, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to formulate Elzinga’s composition and additives into a carrier configuration. Elzinga would guide one having ordinary skill in the art to be motivated to contact an olfactorily detectable quantity of the composition in the atmosphere (para [0091]), an action that a carrier substance easily facilitates. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
With regard to claim 15, Elzinga teaches that the carrier substance comprises toiletry, perfume, cosmetic, incense, candle, etc. (para [0037]). These specific examples read on the claim limitations of cosmetic, personal care, and/or household products, as they fall within the product category as described in the [instant specification located on page 17, para 0044].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Elzinga (US-20150080265-A1, located in the Information Disclosure Statement) as applied to claims 5-9 and 14-15 above, and further in view of Matsumoto (US-20160115423-A1).
The teachings of Elzinga are discussed above.
With regard to claim 10, Elzinga does not teach the claimed compounds.
In the same field of endeavor, Matsumoto teaches a fragrance composition characterized by superior fragrance retention and exhibits a green floral and fruity scent note (Abstract). Matsumoto further teaches the formulation incorporates a combination of aldehydes, esters, lactones, nitriles, alcohols (para [0019]), terpene-based alcohols and aromatic alcohols (para [0022]). Specifically, aromatic alcohols, include phenethyl alcohol (i.e., claimed phenylethyl alcohol) and Majantol (e.g., Trade Name of Symrise, claimed 2,2-dimethyl-3-(3-methylphenyl)propanol) (para [0025]). Matsumoto highlights that the inclusion of Majantol is preferable from the viewpoints of enhancing the sweetness and voluminousness by being blended within the composition (para [0025]).
With regard to the compounds, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to formulate Elzinga’s composition to include aromatic alcohols—specifically Majantol (i.e., 2,2-dimethyl-3-(3-methylphenyl)propanol) or phenylethyl alcohol—to achieve the claimed invention. The cited references collectively teach structurally similar fragrance formulations (e.g. terpene, aldehydes, esters, etc.) yielding comparable green, floral, and fruity scent note. A person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success, to achieve the heightened sweetness and voluminousness properties as established in Matsumoto.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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