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 .
Non-Final Rejection
Claims 1-13 and 15-17 are pending. Claim 14 is cancelled in the paper filed 12/28/2023.
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 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.
Regarding claim 1, last line of second page recitation of “peptides (eg lysine)”, the phrase "e.g." renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Also see first line of 3rd page of claim 1, first line recites limitation to “or still a polymer” is confusing and indefinite. Also claim 1, 3rd page, the variable R6 has “such as” language which 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).
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1- 5 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Berthier et al. (US 9,765,282).
Berthier et al. teach a polysiloxane conjugate fragrance delivery system comprising a textile surface (see col.16,ln.10-20) treated with a perfume of the formula I
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See col.2 and claim 11, teaching the same formulas I and II when variables w, m, and n are = to 1 as required in claim 1 a-d. Claim 1e is taught in col.47,ln64 teaching X is sulfur atom. and claim 11, teaching X represents a sulfur atom in col.47,ln.64 of claim 11.
Claim 1f description of G is disclosed in col.47,ln.65 of claim 11 teaching G represents C2-C8 hydrocarbon and the formula of claim 1g to the variable Q derived from monomer B-1is copied from col.48 formula iii meeting the Q polymer.
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The formula IV meets the limitation wherein the hatched lines indicate the location of the bond between said monomeric unit and G. And the col.48, ln.25-45 teach the claimed Y of claim 1g copied herein below:
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with the R12 corresponding to the R7 of the claim 1 and the A of the prior art corresponding to the M of the claim 1. See claim 11. Accordingly, the polymer of claims 1 and 11 being exemplified on the textile of the example 5 anticipates the clams 1-2.
The perfume compound of claim 3 is taught by claim 1 and 2 in col.45 and claim 14 copied herein below noting that X is Sulfur and P is as formula II as claimed.
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Claim 4 limitation to 3 - ( dodecylthio ) - 1 - ( 2 , 6 , 6 - trimethyl - 3 - cyclohexen - 1 yl ) - 1 - butanone monomer is referred to as “ Prior art ( WO 03 / 049666 ) in example 7-8 in col.37-38.
Claim 5 limitation is met by Berthier et al. not teaching encapsulation. Accordingly the claims are anticipated.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fehr et al. (WO03049666A2).
With respect to the textile article of claim 1, Fehr et al. teach perfume compounds that remain on the laundry (textile) after many days. The formula I of claim 1 is taught in Fehr et al. page 3,
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and page 17 teaches the compound of formula 1 in a composition with a carrier. The formula II in claim 1d is also taught on page 3.
And the X in claim 1 e is taught on page 4 coped below:
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And the claim 1 f is taught on pages 4-5 copied herein below.
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Claim 1 G is copied above from the pages 5-6. Fehr et al. teach their Q represents hydrogen atom on page 5,ln.3.
Regarding the formula II of claim 2, see pages 2-5 teaching the same
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and see also the prior art claim 1 on page 45-46 where X is the sulfur in formula ii and the same G and Q variables.
Regarding claim 3, see page 40, on the upper table Fehr et al. teaching
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.
Regarding claim 4, Fehr et al. example 4 teach synthesis of 3-(dodecylthio)-l-(2, 6, 6-trimethyl-3-cyclohexen-l-yl)-l-butanone and page 41 teaches
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.
Regarding claim 5, Fehr et al. do not teach their pro-perfume as encapsulated thus, meets the limitation to non-encapsulated. Accordingly the claims are anticipated.
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.
Claims 6-13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Panandiker et al. (US2019/0367850A1) in view of Fehr et al. (WO03049666A2) or Berthier et al. (US 9,765,282).
Panandiker et al. teach a dryer sheet (encompassing the claim 6 textile article) comprising a pro-perfume [0135, on page 10. See abstract and claim 1. Limitation to a textile carrier layer is met by the dryer sheet comprising a rayon or polyester nonwoven fabric [0063]. Limitation to a non-textile coating layer is met by Panandiker et al. teaching in [0058] that a dryer sheet comprises a substrate that has a flexible substrate that is a sheet and a branched polyester polymer that coats at least a portion of said substrate's surface. See page 4.
Claim 6 is dependent on the pro-perfume of claim 1 and Panandiker et al. do not specifically teach the pro-perfume of claim 1. Fehr et al. is relied upon as set forth above teaching the pro-perfume formula of claim 1. Berthier et al. is relied upon as set forth above teaching the pro-perfume formula of claim 1.
It would have been obvious to one of ordinary skill in the art, at the time the invention was made to modify pro-perfume used in the dryer sheet of Panandiker et al. with the claimed pro-perfume as taught by each of Fehr et al. and Berthier et al. with a reasonable expectation of success and similar results because Panandiker et al. [0144] guide one of ordinary skill to their dryer sheet that can use a perfume matrix system where fragrance is dissolved or dispersed in a polymer matrix prior to formulating into the product or 2 ) added separately from the polymer during or after formulation of the product in general. One of ordinary skill is motivated to combine the teachings of Panandiker et al. with each of Fehr et al. or Berthier et al. since Panandiker et al. [0135] teach the inclusion of general pro-perfume in their dryer sheets.
Claim 7 is taught on page 5, [0066] teaching the dryer sheet can be prepared by loading the fabric conditioning agent onto the nonwoven substrate. See the 2nd paragraph in [0066] on page 5. And [0144].
Claims 8, 16-17 limitations to the pro-perfume compound in the recited wt% amounts are met by Panandiker et al. page 10, [0135-0136] teaching less than about 25%.
Claim 9 limitation to a perfume base, perfume carrier and perfume adjuvant is met by the art teaching perfume carrier [0134] and other encapsulated perfumes, perfume raw materials, perfume oils [0150], low odor detection threshold perfume [0136].
Claim 10 is taught on page 5, [0066] teaching the dryer sheet can be prepared by loading the fabric conditioning agent onto the nonwoven substrate. See the 2nd paragraph in [0066] on page 5.
Claims 11-12 limitations are met by Panadiker et al. teaching that the dryer sheet dispenses an antistatic effect and perfume deposition for at least one treatment of a minimum load in an automatic laundry dryer. See page 5, [0066] copied herein:
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Claim 13 is met by Panandiker et al.[0135] and [0144] guide one of ordinary skill to their dryer sheet that can use a perfume matrix system where fragrance is dissolved or dispersed in a polymer matrix prior to formulating into the product or 2 ) added separately from the polymer during or after formulation of the product in general. And the pro-perfumes of Fehr et al. teaching the pro-perfume formulas of claim 1 and Berthier et al. teaching the pro-perfume formulas of claim 1 as explained above. One of ordinary skill is motivated to modify the pro-perfume used in the dryer sheet of Panandiker et al. with the claimed pro-perfume as taught by each of Fehr et al. and Berthier et al. with a reasonable expectation of success and similar results because Panandiker et al. guide one of ordinary skill to a plurality of pro-perfumes.
Clams 9-10 of Panandiker et al. teach the method of claim 15.
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 1-13 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,264,295 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims overlap with the consumer product comprising the same pro-perfume compound composition that has already been patented; for example, all the elements of the instant application claims 1-4 are to be found in the allowed claim 1 (thus the application claims are fully encompassed by allowed/patented claim 1). The difference between the application claim 1 and the patent claim 1 lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus, the invention of claim 1 of the patent is in effect a species of the generic invention of the application claim 1. It has been held that the generic invention is “anticipated” by the species. See in re Goodman, 29 USPQ2d 2010 (Fed.Cir. 1993). Since application claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct form claim 1 of the patent.
Claims 1-13 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,325,839 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims overlap with the perfuming consumer product comprising the same pro-perfume compound composition that has already been patented and it is clear that all the elements of the instant application claims 1-4 are to be found in the allowed claims 1-2 (thus the application claims are fully encompassed by allowed/patented claims 1-2). The difference between the application claim 1 and the patent claim 1 lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus, the invention of claim 1 of the patent is in effect a species of the generic invention of the application claim 1. It has been held that the generic invention is “anticipated” by the species. See in re Goodman, 29 USPQ2d 2010 (Fed.Cir. 1993). Since application claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct form claim 1 of the patent.
Claims 1-13 and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. US 2024/0376411 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the instant application claim 1 are found in the copending claims 1-20 (thus the application fully encompasses copending claims). Since application claim 1 is anticipated by claim 5 of the copending case, it is not patentably distinct form claim 5 of the copending case. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above. Specfically, Williams et al. (US2015/0217015) claim 16 is commonly known to include about 0.02-0.08wt% of a dodeyl thio damascene pro-perfume material in a freshening composition.
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/PREETI KUMAR/ Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761