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 and Status of the Claims
Applicant's election with traverse of Group I, claims 1-13, and species (b4) oxacycloheptadec-10-en-2-one as in claims 1, 2, and 6-13, in the reply filed on 12/22/2025 is acknowledged. The traversal as to the restriction requirement is on the ground(s) that a national stage application containing claims to different categories of invention will be considered to have unity of invention. This is not found persuasive because the technical feature which is a fragrance mixture comprising 5,7-dimethyloct-6-en-1-ol and another fragrance does not make a contribution over the prior art. It is noted that there is no traversal of record as to the requirement for election of species, and all claims encompassing species combinations do not share a common structural element which is a mixture of two named compounds.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3-5, 14, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and method claims, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/22/2025.
Accordingly, claims 1, 2, and 6-13 are pending and under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/11/23 has been considered by the examiner.
Claim Objections
Claim 6 is objected to because of the following informalities: the claim is noted to include a table, however the claim is not in the form of a sentence. The list includes elements of a table and elements of a list with entries separated by a comma, however the combination of list styles does not result in a sentence reciting a Markush list with grammatical correctness and consistency. Moreover, chemical names recited as common names are not normally capitalized. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, and 6-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claim(s) recite(s) a product of nature which is a combination of one chemical compound as identified by the chemical structure recited in claim 1, 5,7-dimethyloct-6-en-1-ol, in mixture with a second chemical compound as identified by its function as a “different fragrance” as further recited in claim 1, “at least one other different fragrance”. This combination of compounds is naturally occurring for instance as in Fidelis et al. (“Correlation between maturity of tree and GCxGC-qMS chemical profiles of essential oil from leaves of Aniba rosaeodora Ducke”, Microchemical Journal, published 6 April 2012 online), and both the structure and function of these compounds and these compounds in combination would have existed in the leaves of the A. rosaeodora trees prior to extraction or isolation processes. As such, this combination of chemical compounds is naturally occurring, and the claimed combination is not markedly different from its naturally occurring counterpart because the structure and functional components of claim 1 in admixture are present in nature. This judicial exception is not integrated into a practical application because the claims recite no additional elements which would structurally or functionally differentiate the claimed combination of chemical compounds in mixture from their combination as in Fidelis, outlined above. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is recited in claim 1 no additional element differentiating the claimed combination mixture of compounds present for instance in Table 1 of Fidelis illustrating components of oils from leaves and fine branches of A. rosaeodora trees.
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 6, and 9-11 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 6 includes a table but is not in the form of a sentence. For the purpose of applying prior art, claim 6 is interpreted to require one of the chemical compounds recited in the table included in claim 6, and Applicant has elected the first table entry which is oxacycloheptadec-10-en-2-one. However, it is unclear if Applicant intends the elected entry compound to be the same component that has claim 1’s component (b) as its antecedent or if the elected entry compound is considered to be an additional fragrance component to the two named in claim 1. The claim recites “a primary fragrance forming a component”, however the structure required by the term “forming” is unclear; it is unclear whether this language pertains to a method of making the claimed mixture or if Applicant references a reactant or product of some chemical reaction or transformation by this language. To be in the form of a sentence reciting alternate options (i.e., Markush language), Applicant would need to include a conjunction between the last two species listed, for instance. Appropriate clarification is required.
Claim 6 contains the trademark/trade names listed in the table encompassed in the claim. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe various listed chemical compounds and, accordingly, the identification/description is indefinite. Appropriate clarification is required. Similarly, claim 12 recites “IsoPar L’ which appears to be a trade name of some kind instead of a chemical compound name.
Claim 9 recites the limitation "the perfume mixture" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. Claim 10 is rejected since it requires all limitations of claim 9.
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 1, 2, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fidelis et al. (“Correlation between maturity of tree and GCxGC-qMS chemical profiles of essential oil from leaves of Aniba rosaeodora Ducke”, Microchemical Journal, published 6 April 2012 online).
Claim 1 is drawn to a mixture comprising (a) 5,7-dimethyloct-6-en-1-ol and (b) at least one other different fragrance. Instantly claimed component (a) 5,7-dimethyloct-6-en-1-ol is identified in the specification as filed at paragraph [0003] to be another name for isocitronellol.
Fidelis discloses an essential oil distillate from Aniba rosaeodora Ducke leaves for use in perfume formulations (see title and abstract, in particular). Fidelis teaches isocitronellol (Table 2, entry no. 72) as well as different fragrance compounds in admixture in a distillate prior to separation and analysis by GCMS. For instance, isocitronellol is in admixture with at least one other different fragrance in Samples 4, 10, and 20, respectively representing extracts from leaves of 4, 10, and 20 year old trees (see Table 2).
Accordingly, Fidelis teaches each and every limitation of claim 1.
Further regarding claim 2, Fidelis includes isocitronellol in combination with for instance D-nerolidol (see Table 2, entry no. 74), a fragrance which may be considered to have at least a woody and/or fruity odor. As to claims 11 and 12, Fidelis further includes benzyl benzoate (see entry no. 94 in Table 2).
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 1, 2, and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over US2019/0136148A1 (hereafter, “Holscher”).
Claim 1 is drawn to a mixture comprising (a) 5,7-dimethyloct-6-en-1-ol and (b) at least one other different fragrance. Instantly claimed component (a) 5,7-dimethyloct-6-en-1-ol is identified in the specification as filed at paragraph [0003] to be another name for isocitronellol. Claim 6 is noted to read on the elected species for component (b) at least one other different fragrance, which is oxacycloheptadec-10-en-2-one (also known as Ambrettolide TM by Symrise).
Holscher discloses fragrant mixtures particularly perfume oils, and perfume products containing the fragrant mixture (see abstract, in particular). As to component (a), Holscher names fragrances or perfume oils which function as odor-masking agents wherein citronellol is named among preferred fragrances and ketone fragrances (see [0236] especially second full sentence in column 1 of page 15); citronellol is named among known state of the art aroma substances (see [0314]), and further teaches that positional isomers of these substances may also be used as aroma substances (see [0314], last two lines; see also [0236])). Further regarding component (b) as well as claims 2 and 6, Holscher teaches ambrettolide among preferred odorant perfume components desirably functioning as a base note of an odorant mixture (see [0071]-[0074]). Further, Holscher teaches the combination of the odorant mixture with a carrier (limitation of claim 11 (see [0112]) such as a solvent which is ethanol for instance (see [0244])(limitation of claim 12). Holscher’s formulations include personal care preparations (see Holscher claim 14)(limitation of claims 9 and 10). Holscher specifies the proportion of the odorant mixture in the perfumed product is 0.01 to 10%, a range overlapping the instantly claimed range of 0.5 to 25% by weight (see Holscher claim 15)(limitation of claim 13).
Because Holscher does not teach an example or embodiment particularly combining isocitronellol as an isomer of citronellol in combination with ambrettolide, this rejection is made using obviousness rationale. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine with Holscher’s preferred odor-masking agent citronellol or its positional isomer isocitronellol in admixture with Holscher’s preferred odorant perfume component which may be ambrettolide, with a reasonable expectation of success. One would have been motivated to do so based on Holscher’s teaching of the state of the art as to the known roles of each of these components in fragrant mixtures for perfume products and particularly in view of Holscher’s teaching that the sensory properties of some odorants in admixture are positively influenced by combination of additional odorant or perfume formulations resulting in desirable sensory impression being shifted in the direction of natural, fresh, and stronger impression (see[0079] and [0110]). It is the examiner’s position that the aforementioned combination of components based on Holscher’s teaching is a combination of prior art elements according to known methods to yield predictable results in the formulation of perfume or perfume-containing fragrance compositions for cosmetic or personal care applications.
Regarding claims 7 and 8, Holscher’s “odorant (b)” which may be citronellol, which may be included as an isomer thereof, is disclosed to be present in a mass ratio of not less than 99:1 to Holscher’s formula (I) (also Holscher’s compound (A) component). Likewise, Holscher’s “odorant (c)” which may be ambrettolide (see [0073] and [0074]) is present relative to Holscher’s formula (I) component not less than 99:1 by mass ratio (see [0075]). Altogether, Holscher’s components which correlate to the instantly claimed components (a) and (b) are disclosed to be present in amounts where are included in a value within the instantly recited ratio ranges. Moreover, one would have been motivated to adjust the amounts and/or relative amounts of these components in a final product in order to achieve the desired perfume odor profile or properties as is customary in the art.
Conclusion
No claim is allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617