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 1-19 are pending in the instant application.
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 .
Priority
The instant application claims priority to the filing date of 05/03/2024 as shown in Filing Receipt of 05/17/2024.
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, 4, 7-10, 12, 14-15 and 18 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. Claims 1, 7-10, 14 and 15 recite a “bio-based alcohol”. It is unclear what constitutes a “bio-based” alcohol as distinguished from a non-bio-based alcohol. The claim does not define these terms, and the Specification does not appear to provide an objective standard, threshold, or testing methodology by which one of ordinary skill in the art could determine whether a particular alcohol falls within one category or the other. For example, it is unclear whether “bio-based” requires the alcohol to be derived entirely from biological or renewable feedstocks, whether an alcohol containing only a portion of biologically derived carbon qualifies as “bio-based”, or whether the designation is based upon the source of the starting material, the manufacturing process, the carbon content of the resulting alcohol, or another criterion.
Claim 1 includes transitional phrases ‘consisting essentially of 2-(1-butoxypropan-2-yloxy) ethanol and PEG-40 hydrogenated castor oil. The transitional phrases define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim. The examiner cannot analyze whether an unlisted item has a material effect on the basic and novel properties “transmittance”. For examination purposes the transitional phrase, “comprising” is being used.
Claims 4, 12, and 18 contain the trademark/trade names Warm and Cozy and Champagne Toast. 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 a fragrance and, accordingly, the identification/description is indefinite.
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.
Claims 1-3, 6-8 and 16 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Fieber et al. (US 11504310 B2).
Fieber discloses an aqueous microemulsion comprising a non-ionic surfactant system (col 1, lines 14-15). Perfuming compositions and consumer products comprising said microemulsion are also part of the invention (col 1, lines 20-25). The alkyl group of the ethoxylated alcohol of the non-ionic primary surfactant system is chosen in the group consisting of linear, branched, primary, and secondary alcohols (col 4, lines 23-25). The composition also comprises castor oil having more than 19 PEG (col 3, lines 8-10). The composition also includes fragrance as an active ingredient, and water (Col 11, lines 1-10). Fieber defines the term transparent as having transmittance values in the visible light (500-800 nm) of 100% at a path length of 1 cm referenced against demineralized water (col 3, lines 64-66).
Regarding claim 2, hydrogenated castor oil can be present from about 0.05 to 30% by weight (col 4, line 35).
Regarding claim 3, PEG-modified hydrogenated castor oil can have more than 19 PEG units (col 3, lines 1-2).
Regarding claim 5, Fieber discloses that size distribution of droplets is typically below 100 nm (col 3, lines 55-59).
Regarding claim 6, preservatives can be included (col 10, line 20).
Regarding claim 7, Fieber discloses a microemulsion comprising the ingredients claimed. Additionally, Fieber does not explicitly mention that the ingredients are petroleum-based. Such ingredients can naturally be bio-based.
Regarding claim 8, Fieber discloses that HLB is between 9 and 18 (col 4, lines 20-22).
Regarding claim 16, ingredients are discussed above.
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Fieber et al. (US 11504310 B2), Paula’s Choice (Sorbitan Oleate Decylglucoside Crosspolymer, Updated 2023) and Miastkowska et al. (Preparation and Characterization of Water-Based Nano-Perfumes, nanomaterials, 2018).
Fieber discloses an aqueous microemulsion comprising a non-ionic surfactant system (col 1, lines 14-15). Perfuming compositions and consumer products comprising said microemulsion are also part of the invention (col 1, lines 20-25). The alkyl group of the ethoxylated alcohol of the non-ionic primary surfactant system is chosen in the group consisting of linear, branched, primary, and secondary alcohols (col 4, lines 23-25). The composition also comprises castor oil having more than 19 PEG (col 3, lines 8-10). The composition also includes fragrance as an active ingredient, and water (Col 11, lines 1-10). Fieber defines the term transparent as having transmittance values in the visible light (500-800 nm) of 100% at a path length of 1 cm referenced against demineralized water (col 3, lines 64-66).
Paula’s Choice discloses that sorbitan oleate decylglucoside crosspolymer is routinely used in cosmetics (page 1).
Miastkowska discloses that nonionic surface active agents such as alkyl polyglucosides are known for good performance and dermatological properties. They show biocompatibility with the skin and they are used in cosmetics, such as solubilizers, humectants, dispersing agents, and emulsifiers for the stabilization of O/W emulsions (pg 3, 2nd paragraph).
Therefore, it would have been obvious to one of ordinary person in the art before the effective filing date of the claimed invention to have combined teachings of above to create a microemulsion comprising a branched ethoxylated alcohol, sorbitan oleate decyl glucoside, and alkyl polyglucosides. This is taking some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Regarding claim 2, hydrogenated castor oil can be present from about 0.05 to 30% by weight (col 4, line 35).
Regarding claim 3, PEG-modified hydrogenated castor oil can have more than 19 PEG units (col 3, lines 1-2).
Regarding claim 4, one of ordinary skill in the art would routinely experiment with various fragrances within a fragrant microemulsion composition.
Regarding claim 5, Fieber discloses that size distribution of droplets is typically below 100 nm (col 3, lines 55-59).
Regarding claim 6, preservatives can be included (col 10, line 20).
Regarding claim 7, Fieber discloses a microemulsion comprising the ingredients claimed. Additionally, Fieber does not explicitly mention that the ingredients are petroleum-based. Such ingredients can naturally be bio-based. Alkyl polyglucode is taught above.
Regarding claim 8, Fieber discloses that HLB is between 9 and 18 (col 4, lines 20-22).
Regarding claim 9, Fieber discloses ethoxylated alcohols can have between 20-60 PEG units, and that the ethoxylated alcohol can be branched with a chain length containing a total number of carbon atoms between 8 and 18 (col 5, lines 10-20). This would include branched ethoxylated isocetyl alcohol. Fieber also discloses that the alcohol can be linear (col 5, line 15). Sorbitan is taught above.
Regarding claim 10, Fieber discloses that the weight ratio between the second co-surfactant system and the first co-surfactant system is from 5:95 to 95:5 (col 5, lines 59-60). Furthermore, one of ordinary skill in the art would routinely experiment with different amounts of solvents commonly used in perfumery (See Fieber, col 8, lines 29-30).
Regarding claim 11, preservative is discussed above.
Regarding claim 12, fragrance is discussed above.
Regarding claim 13, particle size is taught above.
Regarding claims 14-15, Fieber discloses that the microemulsion comprises between 0.05 to 30% by weight of the primary surfactant system and 0.05 to 30% by weight of co-surfactant systems (col 4, lines 35-47). Likewise, one of ordinary skill in the art would routinely experiment with different weight % of a surfactant system in a perfumery composition. Fieber discloses that microemulsions are very sensitive to composition and temperature, and the formulation of microemulsions requires the 40 finding of the right balance between the main components water, oil, surfactant and optionally additional additives (col 1, lines 39-42).
Regarding claim 16, ingredients are discussed above.
Regarding claim 17, hydrogenated castor oil is taught above.
Regarding claim 18, fragrance is taught above.
Regarding claim 19, particle size is taught above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SEUNGJAI KWON whose telephone number is (571)272-7737. The examiner can normally be reached Mon - Fri 8:00 - 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at 571-272-0623. 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.
/JOHN SEUNGJAI KWON/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
Prosecution Insights