Claims 1-20 are pending in this application.
DETAILED ACTION
Notice of Pre-AIA or AIA Status
1 The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2 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 8-19 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 8 and 15 recite weight ratio “from 100:0”. There is insufficient antecedent basis for this limitation in the claims. Claim 8 requires a second fragrance material to be included in the consumer product. Therefore, the second fragrance should have at least some weight in the consumer product in order to determine its weight ratio with the first fragrance in the consumer product. Correction is required.
Claim 16 indefinites because the Markush language of this claim is improper. The phrase “selected from ….” Should be followed by “A, B, C and D” or followed by “A, B, C or D” not followed by “A, B or C and D”. See MPEP 2173.05(h)(I). Correction is required.
Claims 9-14 and 17-19 being dependent upon rejected claim. Therefore, claims 9-14 and 17-19 are rejected as well.
Double Patenting
3 A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/326,079 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Rejections - 35 USC § 102
4 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.
5 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 1-7 and 20 are rejected under 35 U.S.C. 102(a)1 as being anticipated by Yoshimura et al. (JP 2021112860 A). English translation of the Patent No. (JP 2021112860 A) is used in this Office action.
Yoshimura et al. (JP’ 860 A) teaches a cleaning composition comprising ortho-vanillin having the following formula:
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Which is identical to the formula II that represents the compound meta-(C1 alkoxy)salicylaldehyde which also known as ortho-vanillin as recited in the claimed specification, page 6, formula II) and as claimed in claims 1-4 (see the Patent JP’ 860 A at page 9, formula (I)-3) and wherein ortho-vanillin compound (I)-3, presents in the cleaning composition in the amount of 0.05 parts by mass or more as claimed in claims 1 and 5 (see English translation, page 32, claim 2), wherein the cleaning composition also comprises other ingredients include pigments (treatment adjunct) as claimed in claim 1 (see page 27, paragraph, 6). Yoshimura et al. (JP’ 860 A) teaches ortho-vanillin compound having a formula identical the claimed formula as recited in the claimed specification which inherently should synthetically prepared as claimed in claim 6 and wherein ortho-vanillin also inherently should have the same property of perfume delivery as claimed in claim 7. Yoshimura et al. (JP’ 860 A) also teaches a method of treating a surface by contacting the inner surface of molding die with a resin composition comprising ortho-vanillin compound (I)-3 as claimed in claim 20 (see English translation, page 28, the fifth paragraph). Yoshimura et al. (JP’ 860 A) teaches all the limitations of the instant claims. Hence, Yoshimura et al. (JP’ 860 A) anticipates the claims.
6 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.
Claims 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura et al. (JP 2021112860 A) in view of Le-Thiesse et al. (US 2011230565 A1). English translation of the Patent No. (JP 2021112860 A) is used in this Office action.
Yoshimura et al. (JP’ 860 A) teaches a cleaning composition comprising ortho-vanillin having a formula (I)-3, that represents the compound meta-(C1 alkoxy)salicylaldehyde which also known as ortho-vanillin as recited in the claimed specification, page 6, formula II) and as claimed in claims 8-11 (see the Patent JP’ 860 A at page 9, formula (I)-3) and wherein ortho-vanillin compound (I)-3, presents in the cleaning composition in the amount of 0.05 parts by mass or more as claimed in claim 12 (see English translation, page 32, claim 2), and wherein the cleaning composition also comprises vanillin and ethylvanillin as claimed in claim 8 (see page 9, formulae (I)-1 and (I)-2) and wherein the cleaning composition also comprises other ingredients include pigments (treatment adjunct) as claimed in claim 16 (see page 27, paragraph, 6).
Yoshimura et al. (JP’ 860 A) as described above, teaches a compound ortho-vanillin having a formula (I)-3, that represents the claimed compound meta-(C1 alkoxy)salicylaldehyde which implies that the compound synthetically prepared as claimed in claim 13 and should have similar property of perfume delivery as claimed in claim 14.
The instant claims differ from the teaching of Yoshimura et al. (JP’ 860 A) by reciting vanillin, ethylvanillin or a combination as a second fragrance material in a consumer product and the claim also recites the weight ratio between the first fragrance material and the second fragrance material as claimed in claim 8.
However, Yoshimura et al. (JP’ 860 A) teaches a resin cleaning composition comprising a compound (I) that selected from vanillin, ethylvanillin and ortho-vanillin (see the Patent JP’ 860 A at page 9, formulae (I)-1, (I)-2 and (I)-3) and wherein the resin cleaning composition may contain two or more types of the compound (I) (see English translation, page 25, paragraph, 8).
Le-Thiesse et al. (US’ 565 A1) in analogous art of a detergent formulation, teaches a detergent composition (see claim 24) comprising vanillin in the amount of 65% and ethylvanillin in the amount of 35% (see page 2, paragraph, 0036), wherein the detergent composition also comprises carriers include propylene glycol and diethylene glycol as claimed in claim 17 (see page 2, paragraph, 0040), wherein the detergent composition is used as an odor masking agent and a cosmetic for creams as claimed in claim 18 (see claims 21 and 24) and wherein the detergent composition also used in room air deodorants as claimed in claim 19 (see page 4, paragraph, 0137).
Therefore, in view of the teaching of Bauer et al. (US’ 230 A1), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to be motivated to modify the detergent composition of Yoshimura et al. (JP’ 860 A) by using vanillin and ethylvanillin as the second fragrance as taught by Bauer et al. (US’ 230 A1) and to optimize the amounts and the weight ratio between the first fragrance of ortho-vanillin that taught by Yoshimura et al. (JP’ 860 A) and the fragrance of vanillin and ethylvanillin that taught by Bauer et al. (US’ 230 A1) in the cleaning composition in order to get the maximum effective amounts of these ingredients in the detergent composition and, thus, the person of the ordinary skill in the art would expect such a cleaning composition to have similar property and similar results to those claimed, absent unexpected results.
Conclusion
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/EISA B ELHILO/Primary Examiner, Art Unit 1761