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 .
DETAILED ACTION
Claims 1-3 and 5-9 are under consideration.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9, drawn to a fragrance comprising one or more ingredient from Group A and/or from Group B and/or from Group C in the reply filed on November 7, 2025 is acknowledged. The traversal is on the ground(s) that the division into separate groups is improper because any search would invariably encompass compositions and methods. This is not found persuasive because the division into separate groups was predicated upon a lack of unity of invention a posteriori for the reasons as set forth in the Requirement for Restriction. Furthermore, complete searches for compositions and methods are not coextensive, particularly within the limited amount of time allocated by the Office.
Applicant’s election with traverse of the species benzyl 2-hydroxybezoate (BENZYL SALICYLATE), 2-cyclohexylidene-2-pheylacetonitrile (PEONILE) and 3,7-dimethyloctan-1-ol (PELARGOL) is acknowledged. The traversal is on the ground(s) that it would not be burdensome to examine any one of the species. This is not found persuasive because the division into separate species was predicated upon a lack of unity of invention a posteriori for the reasons as set forth in the Requirement for Restriction. Furthermore, complete searches for all of the species of composition are likely impossible, particularly within the limited amount of time and using the limited resources allocated by the Office. The election reads on claims 1-3 and 5-9.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4 and 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-3 and 5-9 as filed on September 6, 2023 are pending and under consideration to the extent of the elected species, e.g., A is benzyl 2-hydroxybezoate (BENZYL SALICYLATE), B is 2-cyclohexylidene-2-pheylacetonitrile (PEONILE) and C is 3,7-dimethyloctan-1-ol (PELARGOL).
In the process of searching, the Examiner found art on the broader recitation of the claims. Said art has been applied in the interest of compact prosecution.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 6, 2023 was considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it is too short and not sufficiently descriptive of the disclosure and because it employs phrases which can be implied, such as, “The present disclosure provides”. Correction is required. See MPEP § 608.01(b).
The use of the terms such as AMBROFIX and AMBROXAN (e.g., page 3, line 21), which are trade names or marks used in commerce, has been noted in this application. These terms should be accompanied by the generic terminology; furthermore these terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, group C, last line: the commas should presumably be semi-colons, else, an “and” should be inserted before the recitation of “lemon oil”.
Claim 1, group D, second line: “ixtures” should recite “mixtures”.
Appropriate correction is required.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of 35 U.S.C. 112 (pre-AIA ). See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 2104969.7, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for one or more claims of this application.
The prior-filed application does not disclose the selection criteria of claims 8 or 9.
The earliest date available to these claims is April 8, 2022.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 1-9 recite(s) nature-based composition(s) comprising ingredients from groups A, B or/and C in amounts according to a circumscribed equation and limit ingredients from group D to less than 10 wt%. These ingredients encompass natural products per se, e.g., benzyl salicylate as elected and as set forth in group A or/and benzyl cinnamate as set forth in group B, and combinations thereof. Claim 2 requires at least one ingredient from group A. Claim 3 requires at least one ingredient from groups B or/and C. Claims 5-9 further limit amounts.
This judicial exception is not integrated into a practical application because the claims are broadly drawn to natural products and combinations thereof and the preamble limitation drawn to a malodor counteracting fragrance composition is merely an intended use of the enumerated fragrances. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no additional elements.
Therefore, claims 1-3 and 5-9 recite natural products and combinations of natural products and there is no evidence of record that the combinations possess any new structural or functional properties, e.g., that any of the claimed combinations are more than the sum of their parts or are markedly different than what is found in nature.
The rationale for this determination is explained below: as per the Patent Subject Matter Eligibility Guidance and MPEP 2106.04(b)-(c), nature-based products that (i) are naturally occurring or (ii) are not naturally occurring but have characteristics that are not markedly different from a naturally occurring counterpart fall within an exception (law of nature or natural phenomena). Compositions, or combinations of naturally occurring nature-based products, are not patent eligible even if the combination itself is not naturally occurring absent the presence of markedly different characteristics in structure, function and/or other properties. Non-limiting examples of markedly different characteristics include biological or pharmacological functions or activities; chemical and physical properties; phenotype; and structure and form. This conclusion finds support in Funk Brothers Seed Co. v Kalo Inoculant Co., 33 U.S. 127, 131 (1948) and is re-iterated in Myriad, 133 S.Ct. at 2117 which states that “the composition was not patent eligible because the patent holder did not alter the bacteria in any way." See also Example 30 of the Life Sciences Examples of May 6, 2016 in which man-made mixtures/combinations of natural products present in prescribed amounts/ranges are deemed ineligible under the “product of nature" exception in view of Funk Brothers and in view of Myriad.
Claim Rejections - 35 USC § 112(b)
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 and 5-9 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 pre-AIA the applicant regards as the invention.
Claim 1 recites fragrance ingredients as a chemical name followed by a parenthetical encompassing a more common name or in some cases trade names. For example, in Group A the second chemical is identified as AMBROFIX, AMBROXAN. AMBROFIX is a registered trademark. AMBROXAN is a registered trademark. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe commercial source(s) of the specified fragrance, accordingly, the identification/description is indefinite. Additionally, to the extent that the parenthetical encompasses trade names or commercial sources of the specified fragrance, it is unclear whether the parenthetical is exemplary of the fragrance or required by the claim. Claims 2, 3 and 5-9 are included in this rejection because they depend from claim 1.
Claim 2 recites an embodiment, a more preferable embodiment, a most preferable embodiment and further recites a preferable embodiment of what appears to be a subgrouping of Group A. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim because it is unclear whether the preferences are required by the claim or are merely exemplary. See MPEP 2173.05(d).
Claim 3 recites an embodiment, a more preferable embodiment, a most preferable embodiment and further recites a preferable embodiment of what appears to be a subgrouping of Groups B and C. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim because it is unclear whether the preferences are required by the claim or are merely exemplary. See MPEP 2173.05(d).
Claim 5 recites an embodiment and a preferable embodiment. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim because it is unclear whether the preferences are required by the claim or are merely exemplary. See MPEP 2173.05(d).
Claim 6 recites an embodiment, a preferable embodiment, a more preferable embodiment and a most preferable embodiment. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim because it is unclear whether the preferences are required by the claim or are merely exemplary. See MPEP 2173.05(d).
Claim 7 recites an embodiment, a more preferable embodiment, an even more preferable embodiment and a most preferable embodiment. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim because it is unclear whether the preferences are required by the claim or are merely exemplary. See MPEP 2173.05(d).
Claim 8 recites an embodiment, a more preferable embodiment, an even more preferable embodiment and a most preferable embodiment. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim because it is unclear whether the preferences are required by the claim or are merely exemplary. See MPEP 2173.05(d).
Claim 9 recites an embodiment, a more preferable embodiment, an even more preferable embodiment and a most preferable embodiment. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim because it is unclear whether the preferences are required by the claim or are merely exemplary. See MPEP 2173.05(d).
Claim Rejections - 35 USC § 102
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 1-3 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brain et al. (US 2015/0267144, published September 24, 2015, of record).
Brain is applied herewith on the broader recitation of the claims in an effort to expedite prosecution
Regarding claims 1, 3, 6-9
Brain discloses deposition of ethyl vanillin (Group B) and/or vanillin (Group C) with friable microcapsules prepared by combining ethyl vanillin or vanillin with preformed microcapsules (title; abstract; claims). The ethyl vanillin and/or vanillin are used as a neat fragrance (paragraphs [0005], [0029]).
Regarding the selection criteria of claims 1 and 7-9, the neat fragrance of Brain may comprise 100 wt% ethyl vanillin.
Regarding claim 2
Brain discloses other suitable fragrances inclusive of benzyl salicylate (Group A, elected) (paragraph [0007]).
Claims 1 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacob et al. (WO 91/13606, published September 19, 1991, as evidenced by the Google translation).
Jacob is applied herewith on the broader recitation of the claims in an effort to expedite prosecution
Regarding claims 1, 6-9
Jacob teaches the use of 3,7-dimethyloctan-1-ol (Group C, elected) as a pure antimicrobially active substance (title; abstract; claims).
Regarding the selection criteria of claims 1 and 7-9, the pure substance of Jacob comprises 100 wt% 3,7-dimethyloctan-1-ol.
Claims 1, 2 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bachmann et al. (US 2017/0181945, published June 29, 2017).
Bachmann is applied herewith on the broader recitation of the claims in an effort to expedite prosecution
Regarding claims 1, 2, 6-9
Bachmann teaches liquid fragrance compositions inclusive of an embodiment consisting essentially of cyclohexylidene phenyl acetonitrile (Group B, elected) and a component A which is a salicylate selected from the group consisting of cyclohexyl salicylate, benzyl salicylate (Group A, elected), iso-bornyl salicylate and phenylethyl salicylate (title; abstract; claims; paragraphs [0014]-[0016]).
The compositions comprise about 40 to 95 wt% of cyclohexylidene phenyl acetonitrile (claim 10; paragraph [0034]).
The compositions comprise about 5 to 60 wt% or 45 to 55 wt% of component A (claim 11; paragraph [0035]).
Regarding the selection criteria of claims 1 and 7, the compositions of Bachmann comprise 5 * [45 to 55 wt%] + 4 * [40 to 95 wt%] + 3 * [0].
Regarding the selection criteria of claim 8, the compositions of Bachmann comprise 4 * [45 to 55 wt%] + 3 * [40 to 95 wt%] + 2 * [0].
Regarding the selection criteria of claim 9, the compositions of Bachmann comprise 3 * [45 to 55 wt%] + 2 * [40 to 95 wt%] + 1 * [0].
The above teachings therefore anticipate the claims.
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 of this title, 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 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bachmann et al. (US 2017/0181945, published June 29, 2017).
Bachmann is applied herewith on the broader recitation of the claims in an effort to expedite prosecution
The teachings of Bachmann have been described supra with regard to the anticipation of claims 1, 2 and 6-9. Claims 1, 2 and 6-9 are therefore also obvious over Bachmann.
Regarding instant claim 3 which recites more than one ingredient drawn from Group B or/and C, Bachmann further teaches the compositions may optionally further comprise a component B which is one or more of inter alia diphenyl oxide (Group C) (claim 1). Bachmann fails to specifically teach or exemplify an embodiment of composition comprising cyclohexylidene phenyl acetonitrile (Group B, elected) and benzyl salicylate (Group A, elected) in combination with another ingredient drawn from Group B or/and C and comprising less than 10 wt% of ingredients drawn from Group D and anticipation cannot be found, however, a reference is analyzed using its broadest teachings (see MPEP 2123) and “[d]isclos[ure of] a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Regarding instant claim 5 which recites inter alia 0.01 to 20 wt% Group A ingredient(s), Bachmann teaches the compositions comprise about 5 to 60 wt% of component A which is a salicylate selected from the group inclusive of benzyl salicylate (Group A, elected) (claim 11; paragraphs [0014]-[0016], [0035]). Regarding instant claim 5 which alternatively recites inter alia 5 to 60 wt% Group B ingredient(s), Bachmann teaches the compositions comprise about 40 to 95 wt% of cyclohexylidene phenyl acetonitrile (Group B, elected) (claim 10; paragraph [0034]). The ranges of Bachmann are not considered to disclose the instantly claimed ranges with sufficient specificity and anticipation cannot be found (see MPEP 2131.03), however, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bachmann et al. (US 2017/0181945, published June 29, 2017) as applied to claims 1-3 and 5-9 above, and further in view of Quellet et al. (GB 2,528,480, published January 27, 2016) and Ishida et al. (JP 2010-053107 A, published March 11, 2010, as evidenced by the Google translation).
Bachmann is applied herewith on the elected embodiment
The teachings of Bachmann have been described supra.
Bachmann does not teach C is 3,7-dimethyloctan-1-ol (PELARGOL) as required by the elected embodiment of the claims.
This deficiency is made up for in the teachings of Quellet and Ishida.
Quellet teaches malodor-blocking perfume compositions comprising ingredients inclusive of Class B ingredients inclusive of 2-cyclohexylidene-2-phenylacetonitrile (Group B, elected) and benzyl 2-hydrobenzoate (benzyl salicylate, Group A, elected) (title; abstract; claims, in particular 1, page 23, lines 2 and 5). These ingredients are cyclic nucleotide-gated (CNGA2) ion channel blocking agents which decrease the flux of calcium ions, thereby decreasing activation of the olfactory sensory neurons (abstract; page 3, lines 7-12). Each ingredient may be present from 0.01 to 100 wt% (claims 2-5).
Ishida teaches monoterpene alcohol CNG channel inhibitors inclusive of (title; abstract; claims; page 2, last full paragraph):
PNG
media_image1.png
176
118
media_image1.png
Greyscale
(3,7-dimethyloctan-1-ol, Group C, elected). The total amount of compounds inclusive of (3) is 0.1 to 90 wt% (page 3, 4th full paragraph).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compositions of Bachmann comprising about 40 to 95 wt% of cyclohexylidene phenyl acetonitrile (Group B, elected) and about 5 to 60 wt% or 45 to 55 wt% of component A which is a salicylate selected from the group inclusive of benzyl salicylate (Group A, elected) to further comprise 0.1 to 90 wt% of compounds inclusive of compound (3) of Ishida because “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06. One would be imbued with the reasonable expectation that combining the compositions as taught by Bachmann which encompass malodor-blocking perfume compositions as taught by Quellet with the compositions as taught by Ishida which likewise inhibit or block CNG channels would result in a third composition also possessing this property.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600