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 .
Status of the Claims
Claims 1-16 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 4/22/26.
Claims 1, 2, and 4-6 are amended.
No claims are cancelled, withdrawn, or new.
Response to Arguments
Applicant's arguments (filed 4/22/26, pages 5-11) have been fully considered but are not persuasive. Applicant argues: (1) the limitation in amended Claims 1, 2, 4, and 5 stating “selected to suppress olfactory perception” is not a statement of intended use, (2) Cameron does not describe a method in which an agent is selected for suppressing olfactory perception, (3) the Office Action has not established inherency with regarding to suppressing olfactory perception, (4) a general disclosure of citronella oil does not anticipate the claimed use of citronellal, (5) the disclosure of Cameron [0094] regarding “a sensor to determine the presence of a negative environmental condition” does not anticipate a limitation regarding selection of a composition agent that suppresses olfactory perception, and (6) Nicolello does not provide a reason why a person of ordinary skill in the art would select a specific compound. The Examiner respectfully disagrees.
Examiner’s note: as a preliminary matter, the Applicant’s arguments appear to focus on the specific intent behind the selection of very specific compounds. As discussed below, the claims in this application are not interpreted to infer an intent in the selection of a specific compound and/or the intent behind selecting specific compounds does not further limit a method step where the prior art also discloses the selection of the same and/or overlapping compounds. However, it is clear here that Applicant’s specific compounds are substantially narrower in scope than the prior art. The Applicant is strongly encouraged to consider amending the limitations of Claim 3 into Claim 1 and filing rebuttal evidence to demonstrate the claimed method results in a composition and/or compound which possesses an unexpected result. See MPEP 2145.
Regarding Argument (1), the claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. Here, the limitation “an agent selected to suppress olfactory perception” may be interpreted to mean: “an agent selected which suppresses olfactory perception” or “an agent which is selected to suppress olfactory perception.” However, an interpretation of the limitation to mean “an agent which is selected to suppress olfactory perception” presents the following issues:
The interpretation is a statement of intended use. A recitation of the intended use of the claimed limitation must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The interpretation would be subject to rejection under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The interpretation renders the limitation subjective such that the scope of the limitation is unclear. The MPEP states “Some objective standard must be provided in order to allow the public to determine the scope of the claim. A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite.” See MPEP 2173.95(b)(IV). Here, the interpretation would be subjective because the compound would not necessarily need to suppress olfactory perception as long as the intent behind the selection of a compound was to suppress olfactory perception.
Therefore, for the purpose of this application, the limitation “an agent selected to suppress olfactory perception” is interpreted to broadly mean: “an agent selected which suppresses olfactory perception...”
Regarding Argument (2), as discussed above, the claims in this application are interpreted such that the limitation “an agent selected to suppress olfactory perception” means: “an agent selected which suppresses olfactory perception.” While Cameron may not explicitly describe a method in which an agent is selected for the express purposes of suppressing olfactory perception of a specific compound, Cameron discloses a method in which a compound is selected which does suppress olfactory perception of the specific compounds, similarly as claimed and in which a subject is exposed to said compound. Therefore, Cameron discloses a method within the meaning of the amended Claims as interpreted herein.
Regarding Argument (3), MPEP 2112(II) states “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.” Here, the specific components which may be selected in the Applicant’s method step are disclosed by the prior art. What the prior art does not disclose is the explicit function/property/characteristic of the selected components, namely their ability to suppress olfactory perception of a specific compound. Thus, the rejection under inherent anticipation does not need to demonstrate that the limitation “suppresses olfactory perception” is present in the prior art where the function/property/characteristic is inherent to the compound disclosed by the prior art.
Regarding Argument (4), a general disclosure of citronella oil anticipates the claimed use of citronellal. As discussed above, the claims in this application are interpreted such that the limitation “an agent selected to suppress olfactory perception” means: “an agent selected which suppresses olfactory perception...” Here, where the compound citronella oil comprises citronellal, the use of citronella oil in a composition anticipates all elements of the limitation and the lack of intent behind the selection of citronella oil does not negate the general disclosure of citronella oil, and thereby citronellal, in the composition.
Regarding Argument (5) the disclosure of Cameron [0094] anticipates Claim 4 as interpreted above. Cameron [0094] explicitly discloses that the device, and thereby the method associated with the usage thereof, may detect the presence of smoke or vapor odor. Thus, where the composition of Cameron suppresses olfactory perception of smoke as discussed above, Cameron [0094] demonstrates that the compound may be used in the presence of detected smoke, similarly as claimed.
Regarding Argument (6), while Nicolello does not provide a reason why a person of ordinary skill in the art would select a specific compound, Nicolello teaches that the claimed compound, methyl-2-methylbutyrate, is found in an ingredient disclosed by Cameron. Nicolello is not cited to demonstrate “why” a specific compound is used, but rather teaches that a component disclosed by Cameron comprises the compound claimed in the limitation. Therefore, Nicolello does not need to provide a reason “why” methyl-2-methylbutyrate is present in a compound disclosed by Cameron in order to demonstrate the obviousness of the claimed limitation.
The following rejections are maintained and modified where necessary based on Applicant’s amendments.
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.
Claims 1, 2, and 4-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cameron (US 20170181474 A1).
Regarding Claim 1, Cameron discloses:
a method of suppressing perception of smoke or vapor odor from an inhalation-based nicotine delivery device and/or of reducing an urge to use an inhalation-based nicotine delivery device ("Provided are systems, methods, and electronic vapor devices to implement a smoking cessation" Abstract; [0005]; [0006]), comprising:
exposing a subject to a composition comprising an agent selected to suppress olfactory perception of 1-pentanethiol, an agent selected to suppress olfactory perception of guaiacol, or combinations thereof (The substance can comprise one or more of substances including, but not limited to Citronella Oil and pineapple juice concentrate. [0123]; [0124], Citronella Oil is considered to contain citronellal which is taught to be a suitable agent by the Applicant).
Regarding Claim 2, Cameron discloses a method wherein the agent selected to suppress olfactory perception for masking 1-pentanethiol is citronellal (The substance can comprise one or more of substances including, but not limited to Citronella Oil. [0123]). Citronella Oil is considered to contain citronellal.
Regarding Claim 4, Cameron discloses a method wherein exposure to the composition suppresses olfactory perception by the subject of the smoke or vapor odor, when the subject is in the presence of the smoke or vapor odor ("activating the interface element Identify 1128 can engage a sensor to determine the presence of a negative environmental condition such as smoke, a bad smell, chemicals, etc." [0094]). A claim term is non-limiting where it is “merely expressing a purpose” or “only states an intended result.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374-75 (Fed. Cir. 2001). Here, “suppresses perception by the subject of the smoke or vapor odor” is a statement of intended purpose which does not further limit the claim.
Regarding Claim 5, Cameron discloses a method wherein exposure to the composition reduces the urge by the subject to use an inhalation-based nicotine delivery device ("disclosed is a calibrated gradual reduction method (GRM) to gradually reduce the amount of a substance (e.g., nicotine) consumed by a user." [0034]. “The elements included in increasing ratios may be natural, homeopathic or medicinal elements designed to mimic the sensation or to interact with the same brain receptors as those addictive chemicals, elements and additives and associated combination effects as those found in cigarettes.” [0117]). A claim term is non-limiting where it is “merely expressing a purpose” or “only states an intended result.” Bristol-Myers at 1374-75. Here, “exposure to the composition reduces the urge” is a statement of intended purpose which does not further limit the claim.
Regarding Claim 6, Cameron discloses a method further comprising identifying the subject as a current or past smoker or vapor (Wherein the subject is identified for a reduction of nicotine consumption, the user is identified as a smoker/vapor. [0002], [0034], [0037]).
Regarding Claim 7, Cameron discloses a method further comprising identifying the subject as being at risk of coming into perceptible olfactory proximity to smoke odor or flavoring odor from a tobacco-derived product (The device may comprise a sensor that is configured to detect smoke, vapor, or odors. [0064], [0068]).
Regarding Claim 8, Cameron discloses a method wherein the inhalation-based nicotine delivery device is a cigarette, a cigar, a pipe, or a vaping device ("The electronic vapor device 100 can be, for example, an e-cigarette, an e-cigar, an electronic vapor device…" [0041]).
Regarding Claim 9, Cameron discloses a method wherein exposure involves placing the composition in perceptible olfactory proximity to the subject ("A user can then draw on an outlet 114 to inhale the vapor." [0052]).
Regarding Claim 10, Cameron discloses a method wherein the composition is formulated in a liquid, a lotion, a gel, or a topical semi-solid (The composition may be provided in an e-liquid. [0037], [0120]-[0122]).
Regarding Claim 11, Cameron discloses a method wherein the liquid is a sprayable liquid or a diffusible liquid ("the vaporizable material (e.g., fluid) can be vaporized (e.g., turned into vapor or mist) and the vapor can be dispersed via a system pump" [0053]).
Regarding Claim 12, Cameron discloses a method wherein the composition is provided in a wearable item ("The electronic vapor device 100 can be… a hybrid electronic communication handset coupled/integrated vapor device…" [0041]).
Regarding Claim 13, Cameron discloses a method wherein the wearable item is an adhesive patch, jewelry, clothing, or a device with a refillable cartridge (The vapor device may be an electronic handset integrated vapor device. [0041]. The fluid containers of the vapor device may be configured to be refillable with the vaporizable mixture. [0071], [0120]).
Regarding Claim 14, Cameron discloses a method wherein the composition is provided in a diffuser ("the vapor device 100 can comprise a piezoelectric dispersing element" [0053]. "The vaporizable liquid can be vibrated by the ultrasonic energy produced by the piezoelectric dispersing element, thus causing dispersal and/or atomization of the liquid" [0054]).
Regarding Claim 15, Cameron discloses a method wherein the diffuser is an ultrasonic diffuser, a nebulizing diffuser, an evaporative diffuser, a fan diffuser, a heat diffuser, or a wearable personal diffuser ("outlet 124 can be configured to distribute the vapor into the local atmosphere, rather than being inhaled by a user." [0052]. The vaporizable liquid can be vibrated by ultrasonic energy causing dispersal and/or atomization of the liquid. [0054]).
Regarding Claim 16, Cameron discloses a method wherein the diffuser is a smart diffuser controlled using a smartphone or smart home system application (a smartphone can be used as a primary input/output component of the vapor device 100. [0044]).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Cameron as applied to Claim 1 above, and further in view of Nicolello (Methyl 2-Methyl Butyrate, 2019).
Regarding Claim 3, Cameron discloses wherein the composition comprises citronella oil and pineapple juice concentrate ([0123]) but does not explicitly disclose wherein the composition comprises methyl-2-methylbutyrate.
However, Nicolello teaches that methyl-2-methylbutyrate is a known compound found in pineapples/pineapple juice (Methyl-2-methylbutyrate may be produced through the distillation of essential oils from pineapples. Page 1). Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art that the pineapple juice concentrate of Cameron may contain methyl-2-methylbutyrate as taught by Nicolello, and thus the composition of Cameron may comprise both methyl-2-methylbutyrate and citronellal, similarly as claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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