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 previous election of Group I, claims 1-13, and species (b4) oxacycloheptadec-10-en-2-one as in claims 1, 2, and 6-13 is noted.
Claims 1, 2, and 6-13 remain pending and under examination. Claims 3-5, 14, and 15 are withdrawn.
Withdrawn Objections/Rejections and Response to Arguments
Applicant’s arguments filed 4/15/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows.
The objection to claim 6 is withdrawn in view of Applicant’s amendment correcting the format to a grammatically correct sentence.
Regarding previously issued rejections of claims 1, 2, and 6-13 under 35 U.S.C. 101, Applicant argues that the claim as amended limits the presence of isocitronellol to a certain percentage and corresponding function. In reply, this argument has been considered. Since it is not apparent that isocitronellol necessarily occurs in nature in the amount claimed, the rejection is withdrawn.
Regarding the previously issued rejections of claims 6 and 9-11 under 35 U.S.C. 112(b), Applicant argues that the claim amendments resolve the issues. Applicant’s argument is persuasive, and the rejections are withdrawn.
Regarding the rejections of claims 1, 2, 11, and 12 under 35 U.S.C. 102(a)(1) as anticipated by Fidelis, Applicant argues that Fidelis does not teach the newly claimed weight percentage feature. In reply, this argument is persuasive, and the rejections are withdrawn.
Regarding the rejections of claims 1, 2, and 6-13 under 35 U.S.C. 103, Applicant argues that neither cited reference teaches the newly claimed citronellol amount. In reply, this argument is persuasive, and the previously issued rejection is withdrawn.
New grounds of rejection necessitated by amendments filed 4/15/2026 are presented below.
New Grounds of Rejection Necessitated by Amendments of 4/15/2026
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”) in view of US2019/0060209A1 (hereafter, “Kolter”).
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 the newly claimed amount of 5,7-dimethyloct-6-en-1-ol, Holscher does not teach this feature with sufficient specificity.
Kolter cures this deficiency. Kolter teaches an odorant and flavoring formulation for topical application (see abstract, in particular). The formulations include water-insoluble polymers and/or may be in the form of aqueous dispersions (see [0016]-[0018]). Citronellol among others are named as odorants of various types which may be included in perfume or insect repelling formulations for instance (see [0024]). The odorant is included in formulation in an amount of 0.1 to 20% by weight of the total formulation and preferably 0.5 to 10% by weight (see [0026]). Menthol is also taught as an odorant (see [0026]) and demonstrated in Example 1 in an amount of 1% by weight of the total formulation, for instance.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to include odorants as taught by Holscher in an amount generally disclosed by Kolter, with a reasonable expectation of success for providing desirable storage and release of the perfume odorant in an applicable composition. One would have been motivated to do so in the absence of Holscher’s specification of a percentage by weight and particularly in view of Holscher’s teaching of embodiments of equivalent and/or similar odorants in dermal formulations.
Further regarding the function of component (a) relative to component (b) as newly recited at the end of claim 1, it is the examiner’s position that these components have been addressed above particularly as taught by Holscher as detailed in the record and further that this claimed function is a property inseparable from the function of the components otherwise addressed in combination above. Accordingly, the combination of Holscher and Kolter are considered to render obvious a formulation having the claimed characteristic.
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.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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