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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 19 February 2026. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Election/Restrictions
Applicant's election of Group I (claims 1-10) in the reply filed on 26 July 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Applicant's election of Formulae IIA as specie 1 is acknowledged.
Applicant's election of Formulae (IIA1-1) to (IIA1-3) as specie 2 is acknowledged.
Applicant's election of Formulae (IIA1-1) to (IIA1-2a) as specie 3 is acknowledged.
Claims 11-15 and 17 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-10 are under examination and the requirement for restriction is made final.
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.
Claim 1 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of co-fixative [co-fixative (c-F),herein after], wherein said co-fixative (c-F) is a co-fixative chosen among those of Formula (IIA) [co-fixative (c-F) of class (1), herein after], Formula (IIB) [co-fixative (c-F) of class (II), herein after], Formula (Ilc) [co-fixative (c-F) of class (Ill), herein after], Formula (IID) [co-fixative (c-F) of class (IV), herein after], Formula (lIE) [co- fixative (c-F) of class (V), herein after], Formula (IIF) [co-fixative (c-F) of class (VI), herein after], Formula (IIG) [co-fixative (c-F) of class (VII), herein after], or Formula (IIH) [co-fixative (c-F) of class (VIII), herein after] is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
The Examiner has provided compounds that differ greatly structurally.
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The species [located in instant specification, pages 25-35] are independent or distinct because the species exhibit different chemical, physical, and biological properties and thereby impart different characteristics to the composition. In addition, these species are not obvious variants of each other based on the current record.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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 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 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Vyver (WO-2020058193-A1, located in Information Disclosure Statement) in view of Zucca (US-7884130-B2) and “Application Guide” Sigma-Aldrich et al.
Please note: The paragraph citations correspond to the English language equivalent US-20210317384-A1.
With regard to claim 1, Vyver teaches a fragrance delivery composition comprising (Abstract, para [0002]):
0.01 to 10.0 wt.% of at least one fragrance fixative comprising a carbohydrate ester of the following structure (para [0073]):
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Wherein R2, R8, R9, R10, R11, R12, R16 and R17 are independently selected and at each occurrence from —H or —(C═O)—R1; R1 is selected from C1 -C6 alkyl (para [0063]), which reads on the claimed formula IF and overlaps the claimed weight range of point a);
0.01 to 10 of at least one fragrance, such as gamma undecalactone (i.e., y-undecalactone hereinafter) and dodecalactone (para [0104]). This disclosure reads on the claimed formula IIA1-1g (y-undecalactone), formula IIA1-1h (dodecalactone), and weight range of point b.
Vyver further teaches that the composition may include two or more different fragrances (para [0100]) at a total range of 20 to 80 wt.% (para [0098]), which overlaps the claimed weight range of point b and c. Vyver teaches delta-undecalactone (paras [0099]), which would read on utilizing a different co-fixative formula IIF.
Vyver does not teach the selection of said fragrances to be obvious.
In the same field of endeavor, Zucca teaches a gamma-undecenolactone (i.e., y-undecenolactone hereinafter) of the following structure (claim 1):
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Wherein each dashed line is a possible double bond; this compound reads on the claimed Formula IIA1-2.
Zucca further teaches that y-undecenolactone can be reduced to y-undecalactone (which represents the claimed Formula IIA1-1g and Vyver’s component, col 6, lines 2-5). Zucca further teaches the saturated lactones—(R)-y-undecalactone and (S)-y-undecalactone—can be utilized in the same perfumery and food flavoring applications as their unsaturated homologs (col 6, lines 40-47). Notably, Zucca notes that y-decalactone and y-undecalactone deliver substantially similar peach or apricot aroma and taste (col 1, line 25-26) suitable for solid, liquid, gels, creams, ointments and/or sprays formulations (Col 7, lines 14-16).
Furthermore, Zucca establishes that gamma-lactones hold significant commercial value within the food flavoring and perfumery industries, and noting that substantial industrial stakes drive the development of products possessing nuanced organoleptic profiles (col 1, lines 49-52).
Vyver and Zucca do not teach the selection of delta-undecalactone.
In the same field of endeavor, Sigma-Aldrich et al. teaches delta-undecalactone is a highly versatile agent. Specifically, it exhibits rich, creamy apricot and peach depth notes suitable for use in food, beverages, and floral applications. Sigma-Aldrich et al. further teaches that this compound provides desirable fruit profiles (e.g. peach, apricot, mango), diary profiles (e.g., cooked butter, milk, coffee creamers), and nut profiles (e.g., macadamia and pecan) (page 12).
With regard to the composition, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate Vyver’s composition to comprise y-undecalactone and delta-undecalatone. For doing so, the inclusion would exhibit the fruity character note, tasteful properties, and versatility as described in Zucca and Sigma-Aldrich et al. The references collectively teach structurally and functionally analogous components that yield similar fragrance notes and utilities. A person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Vyver’s composition can be provided with a carbohydrate ester, y-undecalactone and delta-undecalatone to successfully yield the recognized effective properties (e.g. fruity and tasteful aroma). Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would expect the modification to be obvious.
With regard to claim 2, Vyver teaches the carbohydrate ester of the following structure (para [0078]), which reads on the stereochemistry:
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Wherein R2, R8, R9, R10, R11, R12, R16 and R17 are independently selected and at each occurrence from —H or —(C═O)—R1; R1 may be independently selected from isopropyl (paras [0079 and 0083]). Vyver further teaches suitable carbohydrate esters include sucrose octoisobutyrate, sucrose heptaisobutyrate acetate, sucrose hexaeisobutyrate diacetate, sucrose pentaisobutyrate triacetate, sucrose tetraisobutyrate tetraacetate, sucrose triisobutyrate pentaacetate (para [0082]), which all compounds read on the claimed formula containing an R1 isopropyl. These compounds also correspond to the suitable fixative compounds listed in [instant specification located on page 12, line 13-16].
With regard to claim 3, Vyver teaches that at least one fragrance fixative is at a concentration ranging from 0.1 to 10 wt.% (para [0025]), with the total fragrance fixative component comprising at least 80 wt.% of total composition (para [0035]), which is higher than the claimed range.
Vyver does not teach the concentration in the claimed range. However, Vyver teaches fragrance fixatives stabilize fragrances by slowing and balancing the evaporation rates of individual ingredients, enabling extended scent release without altering the fragrance profile (para [0005]).
With regard to concentration, Vyver offers the motivation to optimize the fixative concentration range as it directly controls fragrance leakage and release over time (para [0005]). As such, the concentration of the fragrance fixation will affect the leakage of the fragrance over time. Therefore, the amounts of fragrance fixation can be optimized to reach the desired retention of the fragrance contents via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art before the effective filling date, to adjust the fragrance fixation as disclosed by Vyver to arrive at the claimed invention.
With regard to claim 4, Vyver teaches that the fragrance includes y-undecalactone (para [0104]), which read on the claimed Formula (IIA1-1g).
As stated above, Vyver in combination of Zucca teach the selection.
With regard to claim 5, Vyver teaches that the fragrance includes y-undecalactone (para [0104]), which read on the claimed Formulas (IIA1-1g).
As stated above, Vyver in combination of Zucca teach the selection.
With regard to claim 6, Vyver teaches y-undecalactone (para [0104]), which is a direct homolog of the claimed decalactone represented by the claimed Formula IIA1-1F.
As stated above, Vyver in combination of Zucca teach the selection.
As stated above, Zucca notes that y-decalactone and y-undecalactone deliver a peach or apricot aroma and taste (col 1, line 25-26).
With regard to the y-undecalactone and y-decalactone are homologs, it would have been prima facie obvious to one of ordinary skill in the art at the time of Applicant's invention to modify the teachings of Vyver by substituting the overlapping genus in the substituents to arrive at the claimed compound. The references teach an identical core structure and overlapping various functional groups to modify; y-decalactone are y-undecalactone are structurally and functionally analogous components that yield similar fragrance notes, compatibility with one another, and utility. MPEP 2144.09 (I) states “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In rePayne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In rePapesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In reDillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).
With regard to claim 7, Vyver teaches that at least one fragrance at a concentration of 0.1 to 10 wt.% (para [0010]), which may be combined within a total fragrance range of 20 to 80 wt.% (para [0098]), both parameters overlap the claimed limitation range.
Vyver does not explicitly teach the claimed concentration of y-undecalactone or delta-undecalactone.
In the same field of endeavor, Zucci further specifies that these fragrances are preferably used in amounts from 0.0025% and 10% by weight relative to the total weight of the composition (col 7, lines 11-14) suitable for solid, liquid, gels, creams, ointments and/or sprays formulations (Col 7, lines 14-16). Specifically, Zucca’s Example 9 formulation for y-undecalactone evaluates y-decalactone at a total concentration of 7.88 wt.%, while also noting the use of y-undecalactone and delta-dodecalactone (Example 9, Example 9 continued), which falls within the claimed co-fixative and range.
With regard to the concentration, it would have been obvious it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to select and adjust the fragrance ingredients concentration at the levels established in Zucca or at the appropriate proportions to optimize the desired note while remaining within Vyver’s concentration range represents a matter of routine optimization. A person of ordinary skill in the art would have a reasonable expectation of success in achieving the claimed invention, as Vyver’s composition can be provided with y-undecalactone to successfully yield the claimed invention. Therefore, given the overlapping components disclosed in a single composition, a person of ordinary skill in the art would expect the modification to be obvious.
With regard to claims 8-10, Vyver teaches the use of solvents, including ethanol, propanol, glycerol, propylene glycol, diethylene glycol, dipropylene glycol (para [0131), which reads on the claimed alcohol limitation. Vyver further teaches the solvent to carbohydrate ester weight ratio may range from 1:1 to 1:20 (para [0144]), which reads on both claimed limitation of a weight ratio of 1 to 20 and 1 to 17.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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