DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicant’s Amendments and Remarks, filed 13 November 2025, in the matter of Application N° 18/345,877. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No claims have been added or canceled.
Claims 1 and 4 have been amended. Claim 1 adds the language “for removing hard-to-remove odors including garlic, smoke, and formaldehyde related odors”. Claim 4 has been editorially amended to pluralize “odor” to “odors”.
No new matter has been added.
Thus, claims 1-7 continue to represent all claims currently under consideration.
Information Disclosure Statement
No new Information Disclosure Statements (IDS) have been filed for consideration.
New Rejections
Applicant’s amendments have necessitated the following ground(s) of rejection:
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 1-3 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.
As amended, the preamble of claim 1 now recites “[a]n odor control composition ‘for removing hard-to-remove odors including garlic, smoke, and formaldehyde related odors’. [emphases added]
At the outset, the Examiner broadly and reasonably interprets the newly added language as being a recitation of intended use. As such, the newly added language is not considered to further limit or breathe life into the composition at issue.
Within that language, the above emphasized terms individually raise issues of indefiniteness.
The term “hard-to-remove” in claim 1 is a relative term which renders the claim indefinite. The term “hard-to-remove” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term is considered to be synonymous with “difficult,” another term of degree, and with respect to the odors listed in the claim, it is unclear which odors are included in the definition.
Regarding claim 1, the phrase “including” 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) for “such as”.
Regarding claim 1, the phrase “related,” used in conjunction with formaldehyde, renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by “related”), thereby rendering the scope of the claims unascertainable. See MPEP §2173.05(d) for “or the like”.
Claims 2 and 3 are additionally rejected as they depend from amended claim 1.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 14 July 2025 since the art that was previously cited continues to read on the amended and previously cited limitations.
Claim Rejections - 35 USC §103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Dodd et al. (USPN 6,344,218 B1) in view of Hecking (US Pre-Grant Publication Nº 2012/0301421 A1).
The limitations of the claimed invention are directed to a composition “consisting essentially of”: soya-ethyl morpholinium ethosulfate (herein, also referred to as “SME”), and sodium alginate (or “ALG”), wherein the ratio of SME:ALG is about 90:7 to about 97:3. Claim 2 narrows this ratio to about 95:5 to about 97:3.
Regarding Applicant’s use of the transitional phrase “consisting essentially of,” the Examiner broadly and reasonably interprets the phrase as possessing and reciting the scope of “comprising.”
MPEP §2111.03(III) states that “[f]or the of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, ‘consisting essentially of’ will be construed as equivalent to ‘comprising.’” Having reviewed the entire specification, the Examiner can find: 1) no antecedent basis for this transitional phrase, and 2) no discussion of what ‘consisting essentially of’ is meant to exclude in order to achieve the alleged basic and novel characteristics of the claimed composition. [emphasis added]
As such, the recited scope of the composition of claim 1 is “comprising.”
Claim 3 more broadly recites a composition comprising soya-ethyl morpholinium ethosulfate and sodium alginate.
Claims 4-7 are directed to methods of eliminating odors using the composition of claim 3.
Dodd discloses a deodorizing composition comprising an effective amount of odor controlling agent to provide odor controlling benefit, and from about 0.01% to about 10% by weight of a thickener (see e.g., Abstract and claim 1). Claim 21 discloses that the thickener is present at a level of from about 0.1% to about 5% and is selected from such compounds as sodium alginate.
The odor controlling agent is disclosed as being selected from such agents as: zeolites, activated carbon, zinc salts, and cyclodextrins (see e.g., claims 2, 3, and 13-15). Typical levels of the odor controlling agent from about 0.1% to about 10%, preferably rom about 0.2% to about 4%, more preferably from about 0.3% to about 3%, most preferably from about 0.4% to about 2%, by weight of the composition (see e.g., col. 5, lines 52-58).
The foregoing is considered to encompass and teach the claimed ratio of odor controlling agent to sodium alginate. For instance, a composition containing 0.32 wt% of an odor controlling agent and about 0.01 wt% of a thickener will produce a composition with a percent weight ratio 32:1 or 97:3.
Where Dodd appears to diverge from the instant invention is in its failure to expressly disclose SME as an odor controlling agent.
Hecking is considered to remedy this deficiency disclosing an odor controlling composition comprising at least one odor neutralizing agent (see e.g., Abstract; claim 1). Like Dodd, the practiced compositions may be administered from a spray device (see e.g., claim 11).
The odor neutralizing agent is disclosed in claim 2 as being selected from such agents as zeolites, activated carbons, cyclodextrins, and soyethyl morpholinium ethosulfate.
Based on the combined teachings of the references, the Examiner advances that the ordinarily skilled artisan would have had a reasonable expectation of successfully producing the claimed composition by simply modifying the composition of Dodd with the functionally equivalent soyethyl morpholinium ethosulfate agent disclosed by Hecking.
As established above, the two references employ functionally common odor neutralizing agents such as zeolites, activated carbon, and cyclodextrins. Hecking adds soyethyl morpholinium ethosulfate to this list of agents, thereby establishing its functionality. Thus, the skilled artisan would have expected that its use in the Dodd compositions would yield the same effect. Applicant is directed to MPEP §2144.06(II).
The limitations of claims 4-7 are also considered to be disclosed by the references. Dodd discloses applying its practiced compositions to the hands or as a spray (see e.g., claim 34; col. 5, lines 52-53). Hecking discloses its practiced compositions as being dispensed from a spray container device (see e.g., claim 11). The foregoing is considered to teach that the practiced compositions are applied to either the body or the air.
Lastly, Hecking discloses that its practiced odor neutralizing compositions can be used to neutralize such odors as smoke (e.g., cigarette smoke). See ¶[0006] and ¶[0068].
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success for achieving the recited method of eliminating odor. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Response to Arguments
Applicant’s arguments with regard to the rejection of claims 1-7 under 35 USC 103(a) as being unpatentable over the combined teachings of Dodd et al. and Hecking et al. have been fully considered but they are not persuasive.
Applicant traverses the rejection on the grounds.
First, Applicant asserts that the Examiner’s interpretation of the transitional phrase “consisting essentially of” as comprising is incorrect.
The Examiner disagrees and again directs Applicant to MPEP §2111.03(III) regarding the transitional phrase at issue.
In response to this interpretation, Applicant has quoted a portion of ¶[0019] of the instant specification as saying that it “expressly treats the recited components as the essential ingredients that produce the synergetic effect.” Therein, the selected excerpt simply states that “[b]oth components are essential ingredients that result in a synergistic effect in eliminating odors from the skin.”
Applicant next acknowledges that “[u]nder controlling claim construction principles, ‘consisting essentially of’ excludes formulation excipients and preservatives and therefore limits the claim to the essential components that achieve the stated synergistic effect.”
The Examiner submits that the foregoing definition for ‘consisting essentially of’ is simply not supported by the originally-filed disclosure.
The Examiner agrees that SME and ALG are “essential” to the claimed composition; hence support for “comprising”. However, as reiterated from above, the Examiner can find:
1) no antecedent basis for this transitional phrase, and
2) no discussion of what ‘consisting essentially of’ is meant to exclude in order to achieve the alleged basic and novel characteristics of the claimed composition.
As such, Applicant’s assertion that the Examiner’s broad reading improperly expands the claim scope, is not persuasive. The transitional phrase ‘consisting essentially of’ continues to be broadly and reasonably interpreted as ‘comprising.’
Applicant next argues that the reference does not teach sodium alginate as a required or emphasized component, and instead discloses it as an optional thickener, citing that the reference discloses that it is present “optionally, from 0 to about 10% of thickener.” Applicant next acknowledges that the reference discloses other such ranges of thickeners as 0.1-5%.
Applicant also points out that the claim also recites a proportion of sodium alginate (ALG) to soya-ethyl morpholinium sulfate (SEM) and that contrary to the reference, “Example 1 of the instant specification shows the weight percentage of sodium alginate as 0.05%.”
Here, the Examiner respectfully finds Applicant’s remarks unpersuasive, reiterating from the reference that claim 21, for instance discloses that the thickener is present as admitted to by Applicant in a range of about 0.1% to about 5% and may be selected from such compounds as sodium alginate. Additionally, the reference provides alternative embodiments where the thickener component is not optional and, in fact, present in amounts ranging from 0.01% to about 10% (see e.g., col. 2, lines 34-58). Thus, amount of sodium alginate cited in the sole Example of the instant application is not only encompassed by the reference, but also taught and suggested by the most preferred of ranges (i.e., about 0.1%), absent a clear showing of evidence to the contrary.
Next, in response to Applicant’s argument that the Examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the instant case, the Examiner has demonstrated that Dodd teaches and suggests the combination of sodium alginate with soya-ethyl morpholinium sulfate and in a ratio range that meets the instantly claimed range of claim 1.
Applicant next cites Dodd at col. 11, lines 22-28 which states:
“The thickener useful in the present invention should be compatible with the odor controlling agent. The binding and/or interaction between the thickener and the odor controlling agent can diminish both the ability of the odor controlling agent to absorb odors and the ability of the thickener to provide high viscosity.”
Applicant next asserts that “it is known fact that sodium alginate and cation surfactants interact through electrostatic interaction, where the positively charged surfactant head groups bind to the negatively charged carboxylate groups on the alginate polymer backbone.”
Based on these statements, Applicant concludes that Dodd teaches away from the claimed combination of ALG and SEM.
The Examiner finds this position unpersuasive for the following reasons.
First, following on the cited statement in Dodd, the reference next discloses that “[e]xamples of suitable thickeners include, but are not limited to, naturally-occurring polymeric materials such as sodium alginate…” (see col. 11, lines 30-32).
Thus, on its face, the reference directly refutes Applicant’s assertion.
Secondly, Applicant’s conclusion appears to be based upon a relationship between sodium alginate and cationic surfactants in general and is not directed to SEM, specifically.
Lastly, Applicant provides no evidence to support the position that sodium alginate’s electrostatic attraction association with cationic surfactants, in general, correlates or speaks to the specific combination of ALG with SEM.
Applicant’s third argument against claim 1 states that “Hecking teaches soyethyl morpholinium ethosulfate as an odor neutralizing agent for use in a deodorizing compositions that are used to deodoriz[e] the interior of vehicles and vehicle ventilation systems.” It is also argued that the composition includes an adhesion agent.
It is also argued that Dodd discloses the combination of an odor-controlling agent and a sanitizing agent.
From this, it is asserted that the Examiner has not articulated reasoning or evidence why a person of ordinary skill in the art would have been led to combine the generic thickener teachings of Dodd with Hecking’s optional list of odor neutralizers to arrive at the instant composition, or that the combination would have been predictable.
The Examiner disagrees.
At the outset, Applicant’s remark leveled at the use of Hecking’s composition for deodorizing vehicles, is directed at the intended use of the practiced composition rather than the composition itself. As such, neither the remark, nor the amendment to the preamble of claim 1, is persuasive.
Regarding the combination of the teachings, the Examiner maintains that Dodd discloses combining sodium alginate with a generic odor-controlling agent. The definition of the agent is simply not inclusive of SEM. The teachings of Hecking are provided, in support of the Examiner’s argument that the ordinarily skilled artisan would have recognized soyethyl (or soya-ethyl) morpholinium sulfate as a functionally-equivalent odor-neutralizing agents.
Hecking’s odor neutralizing agent definition overlaps with Dodd’s with respect to this agent disclosing that other such known odor-reducing agents include zeolites, zinc oxides, and cyclodextrins. The state-of-the-art definition provided by Hecking adds to the skilled artisan’s understanding and expectation that SEM also possesses this functionality and would result in an odor-reducing composition such as instantly claimed, were Dodd be modified to include it.
Applicant’s fourth and final argument against claim 1 alleges an unexpected “synergetic” effect that allows for the combination of ALG and SME to remove ‘hard-to-remove” odors, as evidenced by ¶[0019] and the Figure. It is argued that “[t]his unexpected result – i.e., improved odor removal that arises specifically from the recited combinations and proportions – is a further basis for distinguishing the claimed invention from the cited prior art and rebuts any unsupported assertion of obviousness.”
The Examiner disagrees.
Having considered the limitations of claim 1 versus the discussion of ¶[0019] and the Figure, as well as the sole Example of a handwash formulation at ¶[0020], the Examiner finds Applicant’s assertion of synergism to be unpersuasive.
The Examiner acknowledges the following:
Claim 1 recites a ratio range of SLE:ALG of about 90:7 to 97:3 (about 12.86:1 to 32.3:1);
¶[0019] discusses a combination and ratio range of SEM:ALG about 90:10 to 97:3 wt(%), and that the synergistic effect was observed in these proportions;
¶[0019] also states that the “optimum proportion of SME and ALG in the hygiene composition can be about 95:5 [or 19:1]”;
¶[0020] Example 1 to a handwash formulation combines SME and ALG in a ratio of 1 wt% to 0.05 wt%, a weight ratio of 20:1; and that the Figure is referenced with respect to this Example in ¶[0020], and
the Figure shows results for the combination of SME+ALG versus SME and ALG alone, and against body odor, smoke, and “bathroom” odors.
Regarding the purported evidence of synergism, the Examiner submits that there is a disconnect between the claimed ratio and the overall ratio supported by the originally-filed specification. This is not considered to raise a written description issue per se; however, the claimed ratio does lack antecedent basis to the specification as originally filed (an objection).
Secondly, Applicant’s preference for a SME:ALG ratio of about 95:5 or 19:1 is not wholly consistent with the with the sole example provided which has a weight ratio of 20:1
Thirdly, the Examiner presumes, given their shared discussion in ¶[0020], that the results in the Figure are those demonstrated for the odor-neutralizing efficacy of the composition of the Example. Therein, at best, it might be argued that Applicant has demonstrated efficacy for a composition containing a weight ratio of about 20:1 SME:ALG.
However, the Examiner submits that it is not immediately clear that this is the case, and through the lens of ¶[0019] and the Figure, it is in no way clear what compositions of the recited ratio range is being tested. The alleged synergistic effect is not commensurate in scope with the limitations of claims 1 and 4.
Lastly, the Examiner notes that the amended intended use presented in claim 1 recites that the “hard-to-remove” odors indefinitely include garlic, smoke, and formaldehyde related odors. The only one of those odors to be mentioned with respect to the tests depicted in the Figure is smoke. Therein, the alleged evidence is not commensurate in scope with the intended use.
Applicant’s remarks with respect to claim 1 are thus unpersuasive.
Applicant’s traversal of claims 2 have been considered, but are unpersuasive for the reasons discussed above.
Applicant’s traversal of independent claim 4 and dependent claims 5-7 is noted as relying upon the same “optional” argument as presented above with respect to the thickening agent, as well as the alleged synergistic effects demonstrated by the claimed combination.
The Examiner respectfully submits that these remarks remain unpersuasive for the reasons discussed above.
Applicant’s arguments, for the above reasons, are found unpersuasive. Said rejection is therefore maintained.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/240,528 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The limitations of instant claims 1-7 are discussed above.
The ‘528 reference application discloses an odor reducing composition comprising a morpholinium compound (i.e., soyaethyl morpholinium ethosulfate) present in an amount ranging from 0.1-1.5 wt% of the composition and sodium alginate present in an amount ranging from 0.01-0.5 wt% of the composition (claims 1-7). Claim 7 discloses that the weight ratio of the morpholinium compound to the sodium alginate is at least 5:1.
Claims 8-15, and 18-20 disclose additional compounds and ingredients that are a part of the claimed composition. However, owing to the scope of the instantly recited composition, the Examiner submits that these claims also read on the instant invention as they are not precluded.
The compositional limitations disclosed in claim 16 are also considered to read on the claimed compositions and methods, particularly those teaching that the composition is in the form of either a skin wash or spray.
Lastly, the disclosed method of claim 17 is considered to teach and suggest the instantly recited method limitations of claims 4-7.
Thus, were the ‘528 application available as prior art, the Examiner advances that it would render the instantly claimed invention prima facie obvious, where it does not anticipate it.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s filed response has been fully considered and the Examiner notes that no response to the rejection of claims 1-7 on the grounds of nonstatutory double patenting over the copending teachings of 18/240,528 has been provided.
The Examiner acknowledges that Applicant concedes the rejection.
Please also note that a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP §714.02 and 37 CFR 1.111(b)). Thus, the double patenting rejection of record is maintained as no action regarding these rejections has been taken by Applicant at this time.
All claims have been rejected; no claims are allowed.
Conclusion
Applicant’s amendments 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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615