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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 12, 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 16-24, 26-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16 recites the limitation “wherein the reservoir contains only fluid contents” in lines 4-5. The specification, as originally filed, does not disclose the reservoir containing only fluid contents.
Claim 16 recites the limitation “the fluid contents comprise a liquid perfume composition” in lines 5-6. The specification, as originally filed, discloses the perfume composition (genus). The specification does not disclose a liquid perfume composition (species).
Claim 33 recites the limitation “wherein the reservoir contains only fluid contents” in line 4. The specification, as originally filed, does not disclose the reservoir containing only fluid contents.
Claim 33 recites the limitation “the fluid contents comprise a liquid perfume composition” in line 5. The specification, as originally filed, discloses the perfume composition (genus). The specification does not disclose a liquid perfume composition (species).
Claim Rejections - 35 USC § 102
Claim(s) 16, 17, 26-31 (as best understood) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martens, III et al. (7,213,770).
Martens, III et al. disclose a volatile composition dispenser comprising:
a container 26 having a bottom wall 28 and side walls 30 extending circumferentially around the bottom wall to define a reservoir having a total internal reservoir volume (Vr), wherein the side walls have a circumferential inner edge (bottom end of wall 30 in figure 7 that joins the inner edge of peripheral flange 20) defining a planar reservoir opening (opening defined by walls 30, i.e., opening defined by flange 20), and wherein the reservoir contains only fluid contents (liquid volatile material, col. 1, ll. 7-8; volatile material 32, essential oils, dye, thickener, air), and the fluid contents comprise a liquid perfume composition (essential oils, col. 7, l. 4) having a total perfume fill volume (VFILL) (volume of volatile material 32);
a vapor impermeable substrate 22 attached to the dispenser, wherein the vapor impermeable substrate covers the planar reservoir opening and is a peelable vapor impermeable substrate (col. 5, l. 21);
a porous membrane 24 attached to the dispenser, wherein the porous membrane covers the planar reservoir opening and is disposed between the peelable vapor impermeable substrate and the planar reservoir opening;
a headspace (space between volatile material 32 and membrane 24 when dispenser 12 is oriented with the bottom wall 28 in the down position, i.e., figure 7 rotated 180 degrees; volatile material 32 does not completely fill the void within the blister 18, col. 5, ll. 8-13) between the planar reservoir opening and the liquid perfume composition, the headspace being present before the volatile composition dispenser is activated by peeling or rupturing the vapor impermeable substrate and having a total headspace volume (volume of the air); and
a center longitudinal axis (Yc) (axis bisecting flange 20; horizontal axis in page of figure 7 bisecting the opening into a portion that extends into the page and another portion that extends out of the page) of the planar reservoir opening, wherein the center longitudinal axis (Yc) extends along a length (L) (length of the opening defined by flange 20) of the planar reservoir opening through a first portion (left edge of opening defined by flange 20 and sidewall 30 in figure 7) of the circumferential inner edge, a centroid (center of the opening defined by flange 20) of the planar reservoir opening, and a second portion (right edge of opening defined by flange 20 and sidewall 30 in figure 7) of the circumferential inner edge;
wherein the total internal reservoir volume (Vr) equals the total perfume fill volume (VFILL) plus the total headspace volume;
wherein the vapor impermeable substrate is releasably attached to an outer periphery (flange 20) of the container to form a removeable cover for the dispenser;
wherein the peelable vapor impermeable substrate is made of a material selected from the group consisting of polymeric film, webs, foil, composite material, or combinations thereof (col. 4, ll. 22-26);
wherein the porous membrane comprises polyethylene (col. 4, ll. 13-14);
wherein the porous membrane has a thickness of from about 0.01 mm to about 1 mm (0.05 to 0.06 mm, col. 5, ll. 26-27);
wherein the porous membrane has an evaporative surface area of about 2 cm2 to about 100 cm2 (based on the smallest bottom wall 28 dimension and the largest cup 26 dimension, the evaporative surface area must be within 23.04 cm2 to 36 cm2; col. 4, ll. 35-44);
wherein the porous membrane has an evaporative surface area of about 10 cm2 to about 45 cm2 (based on the smallest bottom wall 28 dimension and the largest cup 26 dimension, the evaporative surface area must be within 23.04 cm2 to 36 cm2; col. 4, ll. 35-44);
wherein the porous membrane has an evaporative surface area of about 15 cm2 to about 35 cm2 (based on the smallest bottom wall 28 dimension and the largest cup 26 dimension, the evaporative surface area must be within 23.04 cm2 to 36 cm2; col. 4, ll. 35-44).
Claim Rejections - 35 USC § 103
Claim(s) 18-24, 27-31, 33 (as best understood) is/are rejected under 35 U.S.C. 103 as being unpatentable over Martens, III et al. (7,213,770).
Regarding claim 18, Martens, III et al. disclose the limitations of the claimed invention with the exception of the total perfume fill volume being about 2 ml to 50 ml. The container of Martens, III et al. inherently has a total perfume fill volume. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have sized the container/total perfume fill volume to about 2 ml to 50 ml for optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 19, Martens, III et al. disclose the limitations of the claimed invention with the exception of the total perfume fill volume being 75% of a total internal reservoir volume of the reservoir, wherein the headspace comprises a headspace volume of at least 25%, of the total internal reservoir volume. The container of Martens, III et al. inherently has a total perfume fill volume. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have sized the container/total perfume fill volume such that the total perfume fill volume is 75% of a total internal reservoir volume of the reservoir, wherein the headspace comprises a headspace volume of at least 25%, of the total internal reservoir volume for optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 20, Martens, III et al. disclose the limitations of the claimed invention with the exception of the total perfume fill volume being 70% of a total internal reservoir volume of the reservoir, wherein the headspace comprises a headspace volume of at least 30%, of the total internal reservoir volume. The container of Martens, III et al. inherently has a total perfume fill volume. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have sized the container/total perfume fill volume such that the total perfume fill volume is 70% of a total internal reservoir volume of the reservoir, wherein the headspace comprises a headspace volume of at least 30%, of the total internal reservoir volume for optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 21, Martens, III et al. disclose the limitations of the claimed invention with the exception of the total perfume fill volume being 60% of a total internal reservoir volume of the reservoir, wherein the headspace comprises a headspace volume of at least 40%, of the total internal reservoir volume. The container of Martens, III et al. inherently has a total perfume fill volume. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have sized the container/total perfume fill volume such that the total perfume fill volume is 60% of a total internal reservoir volume of the reservoir, wherein the headspace comprises a headspace volume of at least 40%, of the total internal reservoir volume for optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 22, Martens, III et al. disclose the limitations of the claimed invention with the exception of the total perfume fill volume being about 2 ml to 20 ml. The container of Martens, III et al. inherently has a total perfume fill volume. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have sized the container/total perfume fill volume to about 2 ml to 20 ml for optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 23, Martens, III et al. disclose the limitations of the claimed invention with the exception of the total perfume fill volume being about 2 ml to 8 ml. The container of Martens, III et al. inherently has a total perfume fill volume. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have sized the container/total perfume fill volume to about 2 ml to 8 ml for optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 24, Martens, III et al. disclose the limitations of the claimed invention with the exception of the total perfume fill volume being about 2 ml to 6 ml. The container of Martens, III et al. inherently has a total perfume fill volume. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have sized the container/total perfume fill volume to about 2 ml to 6 ml for optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 33, see explanation for claims 16, 19, 22 and 26.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martens, III et al. (7,213,770) in view of Furuuchi et al. (4,582,635).
Martens, III et al. disclose the limitations of the claimed invention with the exception of the perfume composition. Furuuchi et al. discloses a perfume being benzaldehyde (col. 3, ll. 63-64). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have used benzaldehyde perfume in the device of Martens, III et al. as taught by Furuuchi et al. to add color (Furuuchi et al., col. 3, ll. 61-62).
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 16-24 and 26-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,554,192. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,554,192 fully disclose the currently claimed invention.
Claims 16-24 and 26-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,833,276. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,833,276 fully disclose the currently claimed invention.
Response to Arguments
Applicant's arguments filed March 12, 2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument to the headspace in Martens, III et al., the volatile material 32 does not completely fill the void within the blister 18 (col. 5, ll. 8-13).
Conclusion
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/CHRISTOPHER S KIM/Primary Examiner, Art Unit 3752 CHRISTOPHER S. KIM
Examiner
Art Unit 3752
CK
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