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 V including claims 28-30 in the reply filed on 7/7/26 is acknowledged.
Claim Objections
Claim 44 is objected to because of the following informalities:
Claim 44 reads “emits the active fragrance compound to the such that the amount of” and should be corrected for grammatical purposes.
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 32-42 and 45 are 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 32 recites “the non-edible active fragrance compound is a non-edible flavorant or a non-edible fragrance” and it cannot be determined what the scope of the term “non-edible” encompasses.
The term does not have any specific requirements besides a nominal and prescriptive description of a substance that is not intended to be consumed, however this only describes an intended use of a material and not a characteristic of the substance itself. The specification provides no definition for the term or other concrete meets and bounds of what the term means in the context of the claim. Furthermore, of the possible non-edible flavorant/fragrances that are included by this term as set forth in claims 41-42, at least lactic acid, antihistamines, orange oil, peppermint oil, and beeswax are all considered to be edible in at least some concentrations. Therefore, it cannot be determined what the scope of claims 32, 41-42, and their dependents that include this limitation necessarily includes and excludes. Therefore, the scope of the claims cannot be determined and the claims are indefinite.
Claim 41 is rejected for reciting the phrase “such as” which 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). The remaining claims are rejected for depending on claim 32. For the purpose of examination, it is interpreted the active fragrance compound is a flavorant or fragrance.
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.
Claims 28-30, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yip (US 9,889,220).
Regarding claim 28, Yip (US 9,889,220) teaches –
A fragrance emitting device (title, abstract) comprising:
a first container comprising a porous wall or a non-porous wall that is operative to contain an active fragrance compound that can be discharged to a surrounding atmosphere (Figs. 4-5 base 16 includes a wall 50 that contains an air freshener 12 that includes a fragrance composition 14); and
a mobile chamber that comprises the active fragrance compound (freshener 12 includes exposable fragrance compositions 14); where
the mobile chamber can be moved from a position where it is not exposed to an ambient atmosphere to another position where it is exposed to ambient atmosphere and discharges the active fragrance compound to the ambient atmosphere (Col. 5 lines 55-61 disclose the freshener 12 is replaceable and removable, and therefore the freshener 12 could reasonably be transferred between the base 16 where fragrance is released to some other location such as a bag where fragrance is not released into the atmosphere – see MPEP 2114, II as this limitation amounts to an intended use of the chamber).
Regarding claim 29, Yip further teaches the active fragrance compound is subjected to a circumferentially directed air flow (Figs. 4-5 show the airflow from opening 62 having a circumferential component with respect to the freshener 12); where the circumferentially directed air flow can contact the fragrance composition a plurality of times during a travel of the air flow in the fragrance emitting device (the airflow as directed from opening 62 is well capable of performing this claimed function of repeatedly contacting freshener 12 and his limitation amounts to an intended use, see MPEP 2114, II).
Regarding claim 30, Yip further teaches the mobile chamber can be moved from a position where it is exposed to an ambient atmosphere and discharges the active fragrance compound to the ambient atmosphere to another position where it is not exposed to ambient atmosphere and does not discharge the active fragrance compound to the ambient atmosphere (Col. 5 lines 55-61 disclose the freshener 12 is replaceable and removable, and therefore the freshener 12 could reasonably be transferred between the base 16 where fragrance is released to some other location such as a bag where fragrance is not released into the atmosphere – see MPEP 2114, II as this limitation amounts to an intended use of the chamber).
Regarding claim 44, Yip further teaches the fragrance emitting device emits the active fragrance compound to the such that the amount of fragrance emitted is controlled by varying exposure to air and heat to create a variable or constant user perception (the amount of fragrance emitted and an associated user perception would necessarily and inherently be controlled by the devices exposure to air and heat, furthermore the varying of the exposure to air and heat is as claimed merely an intended use of the device and not a structural characteristic, MPEP 2114, II).
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 32-34, 36-37, 42-43, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Yip (US 9,889,220) as applied to claim 28 above and further in view of Wang (CN 107375982).
Regarding claim 32, Yip teaches the active fragrance compound includes a gel and a fragrance (Col. 7 lines 14-23 discloses a gel with a fragrance material) but appears to be silent with regards to an organic aerogel and a non-edible flavorant or fragrance.
Wang (CN 107375982) teaches an air freshener (title) including an organic aerogel where the organic aerogel comprises a biopolymer (p. 2 par. 4 discloses an aerogel mixture that is made from cellulose and other organic extracts) that doesn’t contain any inorganic aerogel and is not blended or dispersed in a hydrogel, inorganic aerogel, or non-aerogel polymer (the components disclosed as being part of the aerogel are not inorganic or hydrogels and do not include non-aerogel polymers), and the fragrance composition further includes a non-edible active fragrance compound that is a flavorant or fragrance (p. 2 2nd to last paragraph, the layer including the aerogel includes lavender essential oil as well as other non-edible fragrances). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Yip such that the fragrance composition includes the non-edible fragrance and biopolymer aerogel of Wang to arrive at the claimed invention. One would have been motivated to do so to allow for the dispersion of fragrances in adverse conditions as is set forth as a benefit of the freshener of Wang (see technical background section on p. 1) to arrive at an improved fragrance emitting device.
Regarding claim 33, Wang further teaches the organic aerogel is present in an amount of 1 to 40 wt%, based on a total weight of the fragrance composition (p. 2 2nd to last paragraph, the amount of 1-7 parts by weight of aerogel overlaps with the claimed range of 1-40% with respect to the individual fifth layer and also in combination with the other layers). The claimed range overlaps with the numerical range disclosed in the art, and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, this claimed concentration is only obvious because the range can be arrived at through optimization that is only routine, and one would be motivated to find some optimal mixture of gel and fragrance to facilitate better release characteristics. See MPEP 2144.05(II).
Regarding claim 34, Wang further teaches the non-edible active fragrance compound is present in an amount of 60 to 99 wt%, based on a total weight of the fragrance composition (p. 2 2nd to last paragraph, the amount of fragrances of both the fifth layer and the total amount in all the layers overlap with the claimed range of 60-99%). The claimed range overlaps with the numerical range disclosed in the art, and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, this claimed concentration is only obvious because the range can be arrived at through optimization that is only routine, and one would be motivated to find some optimal mixture of gel and fragrance to facilitate better release characteristics. See MPEP 2144.05(II).
Regarding claim 36, modified Yip further teaches the biopolymer is derived from a living organism (Wang, p. 2 par. 4 the aerogel is made from cellulose, which is derived from living organisms such as plants).
Regarding claim 37, modified Yip further teaches the biopolymer is cellulose (Wang, p. 2 par. 4 the aerogel is made from cellulose).
Regarding claim 42, modified Yip further teaches the non-edible active fragrance compound comprises lavender essential oil (Wang, p. 2 par. 4 the fragrance includes lavender essential oil).
Regarding claim 43, modified Yip further teaches the mobile chamber comprises a fragrance composition including the active fragrance compound and an organic aerogel (Wang, p. 2 par. 4 discloses a cellulose aerogel and lavender essential oil).
Regarding claim 45, modified Yip further teaches he mobile chamber can be moved from a position where it is exposed to an ambient atmosphere and discharges the active fragrance compound to the ambient atmosphere to another position where it is not exposed to ambient atmosphere and does not discharge the active fragrance compound to the ambient atmosphere (Col. 5 lines 55-61 disclose the freshener 12 is replaceable and removable, and therefore the freshener 12 could reasonably be transferred between the base 16 where fragrance is released to some other location such as a bag where fragrance is not released into the atmosphere – see MPEP 2114, II as this limitation amounts to an intended use of the chamber).
Claims 35 and 38-41 are rejected under 35 U.S.C. 103 as being unpatentable over Yip (US 9,889,220) in view of Wang (CN 107375982) as applied to claim 32 above and further in view of Kim (US 2020/0345882).
Regarding claim 35, modified Yip appears to be silent with regards to the particle size.
Kim (US 2020/0345882) teaches an aerogel for releasing an active material (title, abstract) where the size of the aerogel particles is from 0.1-1000 micrometers (par. 31), overlapping with the claimed range of 500 micrometers to 5 millimeters. The claimed range overlaps with the numerical range disclosed in the art, and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 38, modified Yip appears to be silent with regards to the aerogel comprising a synthetically derived organic polymer selected from the claimed group.
Kim (US 2020/0345882) teaches an aerogel for carrying an active material (title, abstract) where the aerogel is a synthetically derived organic polymer including a thermoplastic including silicone or polyvinyl alcohol (par. 61). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Yip such that the aerogel includes a synthetically derived organic polymer includes a thermoplastic silicone or polyvinyl alcohol as taught by Kim to arrive at the claimed invention. One would have been motivated to do so to use a known-appropriate polymer for forming an aerogel for controlled release as desired to arrive at an improved fragrance emitting device. The combination of familiar prior art elements, including known aerogel forming materials for controlled release, according to known means to arrive at results that are nothing more than predictable, including the effective release of a selected active material, is prima facie obvious. MPEP 2143(I)(A).
Regarding claim 39, Kim further teaches the aerogel includes a thermoplastic that includes polyacrylics and polyurethanes (par. 61 discloses a polyacrylic acid and a polyurethane).
Regarding claim 40, Kim further teaches the synthetically derived organic polymer comprises an oligomer, a homopolymer, a copolymer, a block copolymer, an alternating block copolymer, a random polymer, a random copolymer, a random block copolymer, a graft copolymer, a star block copolymer, a dendrimer, a polyelectrolyte, a polyampholyte, an ionomer, or a combination thereof (par. 61 discloses combinations of the listed polymers which would suggest some copolymerization).
Regarding claim 41, Kim further teaches the active fragrance compound includes citronella oil (par. 46). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by Yip such that the fragrance includes a citronella oil as taught by Kim to arrive at the claimed invention. One would have been motivated to do so to use a known-appropriate fragrance for dispensing from an aerogel to arrive at a successful active release device. The combination of familiar prior art elements, including known fragrances for use with aerogels, according to known means to arrive at results that are nothing more than predictable is prima facie obvious. MPEP 2143(I)(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDAN A HENSEL whose telephone number is (571)272-6615. The examiner can normally be reached Mon-Thu 8:30 - 7pm;.
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/BRENDAN A HENSEL/ Examiner, Art Unit 1758
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