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 .
The preliminary amendment filed 02/22/2024 is entered.
Claims 1-11 are pending.
The Drawings filed 02/22/2024 are approved by the examiner.
The IDS statement filed 02/22/2024 has been considered. An initialed copy accompanies this action.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Albelda et al. (WO 2011/144519 A1).
Albelda et al. teach fragrance compositions comprising at least one fragrance (abstract). Scores of potential fragrancing substances for provision as the fragrance component are disclosed (see the essential oils, fragrancing substances, and note families listed among p.13 to 16) that read on a perfume ingredient (and combinations thereof) having a top note and/or middle note. The fragrancing substances are preferably provided in an amount of 1-40 wt.% of the composition (Id. on p.16). The fragrance composition may further comprise water and a volatile solvent (p.16 line 47 to p.17 line 42). Albelda et al. further teach the composition may comprise various additives present in an amount of 0.001-10 wt.% of the composition (p.18 lines 4-17). Non-volatile solvents are one genus of suitable additive (Id.), and Albelda et al. further teach octyldodecanol (i.e., 2-octyldodecan-1-ol) as a suitable species of the non-volatile solvent additive (p.18 lines 44-47). Note, octyldodecanol meets the claimed formula (I) where Z is CH2OH, x is 9, and y is 7. While the HSP of the non-volatile solvents are not disclosed or recognized by Albelda et al., octyldodecanol is nevertheless disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters, even claimed as having so, such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters. However, regardless of Albelda et al. discovering, recognizing, or disclosing the HSP properties or functionality of the non-volatile solvent as a fixative or not, something which is old (the presence of prior art compounds possessing certain HSP properties or intended use as a fixative) does not become patentable upon the discovery or quantification of a new property. The fragrance composition is provided to a spraying device and is useful for various applications (p.1) meeting consumer products comprising the fragrance.
The cited teachings of Albelda et al. do not fairly meet the claimed combination of components under the meaning of anticipation (for example, one would need to arguably select a particular fragrance component and then select/provide a particular non-volatile solvent such as octyldodecanol as an additive in the composition). However, the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select a perfume component having a top and/or middle note per p.13-16 and select/provide a particular non-volatile solvent such as octyldodecanol as an additive per p.18 in order to obtain a fragrance composition with a very reasonable expectation of success. The disclosed concentrations (Id.). read on, overlap, and/or encompass the instantly claimed concentrations and ratios
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claims 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al. (US 8,822,404 B2).
Wong et al. teach a perfuming composition and consumer products thereof comprising a perfuming component and isocetyl alcohol as a fragrance evaporation modulator in the presence of ethanol (abstract). A fragrance evaporation modulator is synonymous with a fixative. Many preferred perfuming ingredients are listed in col. 5 to 6 that read on a perfume ingredient (and combinations thereof) having a top note and/or middle note. The fragrance/perfuming component is provided in an amount of 3-40 wt.% of the composition (col. 2 lines 39-44 and col. 6 lines 24-30). Note that ethanol is a volatile solvent. The composition may further comprise water (col. 2 lines 50-52). Isocetyl alcohol as the fragrance modulator reads on the instantly claimed fixative and 14-methylpentadecan-1-ol species thereof. The isocetyl alcohol is 0.01-20 wt.% of the composition (col. 2 lines 47-49). The composition may further comprise PPG-3 myristyl ether and/or neopentyl glycol diethylhexanoate as a co-modulator in an amount of 50 wt.% or less relative to the combined weight of the modulator (isocetyl alcohol, Id.) and the co-modulator (col. 6 line 40 to col. 7 line 31) which also reads on the instantly claimed fixative and 3-tetradecoxypropan-1-ol and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate species thereof, respectively. See also the claims of the reference. Note the concentrations of components meet, read on, and overlap the concentrations claimed as well as the ratios claimed. While the HSP of the modulators are not disclosed or recognized by Wong et al., isocetyl alcohol, PPG-3 myristyl ether, and neopentyl glycol diethylhexanoate are nevertheless disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters, even claimed as having so, such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters. However, regardless of Wong et al. discovering, recognizing, or disclosing the HSP properties or not, something which is old (the presence of prior art compounds possessing certain HSP properties) does not become patentable upon the discovery or quantification of a new property.
The cited teachings of Wong et al. do not fairly meet the claimed combination of components under the meaning of anticipation (for example, one would need to arguably select a particular fragrance component). However, the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select a perfume ingredient having a top and/or middle note per the list of preferred perfume ingredients per Table 1 in combination with the isocetyl alcohol modulator/fixative and optional PPG-3 myristyl ether and/or neopentyl glycol diethylhexanoate co-modulators/fixatives in order to obtain a fragrance composition with a very reasonable expectation of success.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claims 1, 2, 4-8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2015/0217015 A1).
Williams et al. teach compositions comprising a perfume material and a sulfur-containing pro-perfume (abstract). Pro-perfumes are synonymous with profragrances. The composition comprises a PRM component that reads on a perfume ingredient (and combinations thereof) having a top note and/or middle note (para. 0032-0036). Williams et al. list suitable sulfur-containing pro-perfumes are of a particular formula (para. 0016+). Preferred species thereof are further listed including, e.g., 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone, 4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)-2-butanone, and 4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-1-en-1-yl)-2-butanone, (para. 0024-0025). These compounds read on the claimed fixative. While not disclosed or recognized by Williams et al., these preferred compounds are disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters (Example 1B) such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters (HSP). However, regardless of Williams et al. discovering, recognizing, or disclosing the HSP properties or functionality of the non-volatile solvent as a fixative or not, something which is old (the presence of prior art compounds possessing certain HSP properties or intended use as a fixative) does not become patentable upon the discovery or quantification of a new property. Williams et al. further teach the composition comprises a volatile solvent and water (para. 0100 and Examples). The pro-perfume is present in an amount of at least 0.0001 wt.% such as 0.0001-3 wt.% (para. 0026). The perfume materials to said pro-perfume is at a ratio of about 2:1 to 1:1 (para. 0004). The disclosed concentrations and ratios read on, overlap, and/or encompass the instantly claimed concentrations and ratios
While the cited teachings of Williams et al. do not fairly meet the claimed combination of components under the meaning of anticipation (i.e., one would need to arguably select a particular perfume/PRM component and then, while preferred, would need to select one or more of the particular dodecylthio-trimethylcyclohexenyl-butanone-based compounds as the pro-perfume component), the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select a perfume component having a top, middle, and/or bottom note per para. 0032-0036 and select/provide one of the preferred dodecylthio-trimethylcyclohexenyl-butanone-based compounds as the pro-perfume component express/preferred teachings per para. 0024-0025 in order to obtain a perfume composition with a very reasonable expectation of success.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claims 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al. (US 9,296,978 B2).
Wong et al. teach a perfuming composition and consumer products thereof comprising a perfuming component and neopentyl glycol diethylhexanoate as a fragrance evaporation modulator in the presence of ethanol (abstract). A fragrance evaporation modulator is synonymous with a fixative. Many preferred perfuming ingredients are listed in col. 5 to 6 that read on a perfume ingredient (and combinations thereof) having a top note and/or middle note. The fragrance/perfuming component is provided in an amount of 3-40 wt.% of the composition (col. 2 lines 39-44 and col. 6 lines 33-38). Note that ethanol is a volatile solvent. The composition may further comprise water (col. 2 lines 50-52). Neopentyl glycol diethylhexanoate as the fragrance modulator reads on the instantly claimed fixative and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate species thereof. The neopentyl glycol diethylhexanoate is 0.01-20 wt.% of the composition (col. 2 lines 47-49). The composition may further comprise PPG-3 myristyl ether and/or isocetyl alcohol as a co-modulator in an amount of 50 wt.% or less relative to the combined weight of the modulator (neopentyl glycol diethylhexanoate, Id.) and the co-modulator (col. 6 line 47 to col. 7 line 41) which also reads on the instantly claimed fixative and 3-tetradecoxypropan-1-ol and 14-methylpentadecan-1-ol species thereof, respectively. See also the claims of the reference. Note the concentrations of components meet, read on, and overlap the concentrations claimed as well as the ratios claimed. While the HSP of the modulators are not disclosed or recognized by Wong et al., isocetyl alcohol, PPG-3 myristyl ether, and neopentyl glycol diethylhexanoate are nevertheless disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters, even claimed as having so, such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters. However, regardless of Wong et al. discovering, recognizing, or disclosing the HSP properties or not, something which is old (the presence of prior art compounds possessing certain HSP properties) does not become patentable upon the discovery or quantification of a new property.
The cited teachings of Wong et al. do not fairly meet the claimed combination of components under the meaning of anticipation (for example, one would need to arguably select a particular fragrance component). However, the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select a perfume ingredient having a top and/or middle note per the list of preferred perfume ingredients per Table 1 in combination with the neopentyl glycol diethylhexanoate modulator/fixative and optional PPG-3 myristyl ether and/or isocetyl alcohol co-modulators/fixatives in order to obtain a fragrance composition with a very reasonable expectation of success.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claims 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al. (US 9,428,712 B2).
Wong et al. teach a perfuming composition and consumer products thereof comprising a perfuming component and PPG-3 myristyl ether as a fragrance evaporation modulator in the presence of ethanol (abstract). A fragrance evaporation modulator is synonymous with a fixative. Many preferred perfuming ingredients are listed in col. 5 to 6 that read on a perfume ingredient (and combinations thereof) having a top note and/or middle note. The fragrance/perfuming component is provided in an amount of 3-40 wt.% of the composition (col. 2 lines 45-51 and col. 6 lines 35-40). Note that ethanol is a volatile solvent. The composition may further comprise water (col. 2 lines 57-59). PPG-3 myristyl ether as the fragrance modulator reads on the instantly claimed fixative and 3-tetradecoxypropan-1-ol species thereof. The PPG-3 myristyl ether is 0.01-20 wt.% of the composition (col. 2 lines 47-49). The composition may further comprise neopentyl glycol diethylhexanoate and/or isocetyl alcohol as a co-modulator in an amount of 50 wt.% or less relative to the combined weight of the modulator (PPG-3 myristyl ether, Id.) and the co-modulator (col. 6 line 49 to col. 7 line 48) which also reads on the instantly claimed fixative and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate and 14-methylpentadecan-1-ol species thereof, respectively. See also the claims of the reference. Note the concentrations of components meet, read on, and overlap the concentrations claimed as well as the ratios claimed. While the HSP of the modulators are not disclosed or recognized by Wong et al., PPG-3 myristyl ether, isocetyl alcohol, and neopentyl glycol diethylhexanoate are nevertheless disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters, even claimed as having so, such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters. However, regardless of Wong et al. discovering, recognizing, or disclosing the HSP properties or not, something which is old (the presence of prior art compounds possessing certain HSP properties) does not become patentable upon the discovery or quantification of a new property.
The cited teachings of Wong et al. do not fairly meet the claimed combination of components under the meaning of anticipation (for example, one would need to arguably select a particular fragrance component). However, the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select a perfume ingredient having a top and/or middle note per the list of preferred perfume ingredients per Table 1 in combination with the PPG-3 myristyl ether modulator/fixative and optional neopentyl glycol diethylhexanoate and isocetyl alcohol co-modulators/fixatives in order to obtain a fragrance composition with a very reasonable expectation of success.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claims 1, 2, 4-8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Vidal et al. (US 10,308,895 B2).
Vidal et al. teach a perfuming composition and consumer products thereof comprising a perfuming component and a beta-thio carboxyl profragrance derivative showing improved impact of fragrance intensity and/or modulating fragrance character (abstract). Modulation of fragrance character is synonymous with a component serving as a fixative. Many genera and preferred perfuming ingredients are listed among col. 3 to 7 that read on a perfume ingredient (and combinations thereof) having a top note and/or middle note. See also the Examples. Preferred and claimed species of the profragrance component are 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)butan-1-one, 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-1-one, 4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-2-one, and mixtures thereof (col. 3 lines 47-56 and, e.g., claim 4). See also the claims. As will be explained shortly, these compounds and the profragrance component reads on the claimed fixative. Percentages and/or ratios of the components are also disclosed that read on, overlap, and/or encompass the instantly claimed concentrations and ratios (e.g., col. 3 lines 26-34 and Examples). While the HSP of the profragrance compounds are not disclosed or recognized by Vidal et al., 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)butan-1-one, 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-1-one, 4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-2-one are nevertheless disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters, even claimed as having so, such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters. However, regardless of Vidal et al. discovering, recognizing, or disclosing the HSP properties or functionality of the non-volatile solvent as a fixative or not, something which is old (the presence of prior art compounds possessing certain HSP properties or intended use as a fixative) does not become patentable upon the discovery or quantification of a new property.
The cited teachings of Vidal et al. do not fairly meet the claimed combination of components under the meaning of anticipation (for example, one would need to arguably select a particular fragrance component as well as a particular profragrance modulating compound). However, the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select a perfume ingredient having a top and/or middle note per the list of genera and preferred perfume ingredients in combination with 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)butan-1-one, 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-1-one, 4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-2-one, or a mixture thereof modulating profragrance(s) in order to obtain a perfuming composition with a very reasonable expectation of success.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claims 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al. (WO 2019/156707 A1).
Holland et al. teach fragrance compositions, particularly a top-heavy composition, and consumer products thereof comprising a fragrance component in an amount of about 0.04-30 wt.% and a non-odorous fragrance modulator in an amount of 0.1-20 wt.% (abstract). Fragrance modulators are synonymous with fixatives. The fragrance component includes low volatile, moderate volatile, and high volatile fragrances (abstract). The fact that the composition is a "top-heavy" composition and comprises moderate volatile fragrances and high volatile fragrances meet the claimed perfume ingredient (and combinations thereof) having a top note and/or middle note. If this were not enough, the disclosed potential species of the low volatile fragrance materials (Table 1A beginning on p.11), moderate volatile fragrance materials (Table 2A beginning on p.20), and high volatile fragrance materials (Table 3A beginning on p.44) meet the claimed perfume ingredient (and combinations thereof) having a top note and/or middle note. Modulators include, among others, isocetyl alcohol and neopentyl glycol ethylhexanoate (abstract and Table 4(a) at p.63), which read on the claimed fixative and 14-methylpentadecan-1-ol and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate species thereof, respectively. While the HSP of the modulators are not disclosed or recognized by Holland et al., isocetyl alcohol and neopentyl glycol ethylhexanoate are nevertheless disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters, even claimed as having so, such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters. However, regardless of Holland et al. discovering, recognizing, or disclosing the HSP properties or not, something which is old (the presence of prior art compounds possessing certain HSP properties) does not become patentable upon the discovery or quantification of a new property. The composition can further include a volatile solvent and water (p.89 line 21 to p.90 line 21).
The cited teachings of Holland et al. do not fairly meet the claimed combination of components under the meaning of anticipation (for example, even if the composition inherently contains a top note per being "top-heavy", one would need to select/provide a particular modulator such as isocetyl alcohol or neopentyl glycol ethylhexanoate). However, the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select/provide a particular non-odorous modulator such as such as isocetyl alcohol or neopentyl glycol ethylhexanoate, optionally with further selection of other high, moderate, or low volatile fragrances, in order to obtain a fragrance composition with a very reasonable expectation of success.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claims 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Fadel et al. (WO 2020/234154 A1).
Fadel et al. teach fragrance compositions comprising a fragrance component and at least one modulator (abstract and para. 007). Note that a modulator is synonymous with a fixative. The composition further comprises ethanol and water (para. 007-011). Scores of potential perfume materials for provision as the fragrance component are disclosed (see the Tables 1 to 8 among p.29 to 42) that read on a perfume ingredient (and combinations thereof) having a top note and/or middle note. Several embodiments for modulators are disclosed, too. First, Fadel et al. generally teach the modulator has (ii.) at least two Hansen solubility parameters selected from a first group consisting of: an atomic dispersion force from 12 to 20, a dipole moment from 1 to 7, and a hydrogen bonding from 2.5 to 11, when in solution with a compound having a vapor pressure greater than 0.08 Torr at 22°C; and (iii.) at least two Hansen solubility parameters selected from a second group consisting of: an atomic dispersion force from 14 to 20, a dipole moment from 1 to 8, and a hydrogen bonding from 4 to 11, when in solution with a compound having a vapor pressure range of 0.0008 to 0.08 Torr at 22°C (para. 012) which is equivalent to and/or overlaps the claimed HSP limitations. Furthermore, express/exemplary modulators thereof are disclosed at Table 9 beginning on p.110 that appear to encompass the HSP limitations claimed, too. Furthermore, several Examples incorporate isocetyl alcohol (i.e., 14-methylpentadecan-1-ol), octyldodecanol (i.e., 2-octyldodecan-1-ol), and isostearyl alcohol (i.e., 16-methylheptadecan-1-ol) as modulators (Example 1 beginning at para. 0188; see especially para. 0193). Note, octyldodecanol meets the claimed formula (I) where Z is CH2OH, x is 9,and y is 7. While the HSP of the exemplary alcohol modulators are not disclosed or recognized by Fadel et al., these preferred compounds are disclosed in the present application's specification to indeed have the claimed Hansen Solubility Parameters, even claimed as having so, such that the compounds meet the claimed fixative defined by relative Hansen Solubility Parameters. However, regardless of Fadel et al. discovering, recognizing, or disclosing the HSP properties or not, something which is old (the presence of prior art compounds possessing certain HSP properties) does not become patentable upon the discovery or quantification of a new property. Fadel et al. generally teach the modulator(s) are present at 0.1-50 wt.% of the composition and the fragrance component(s) are 0.04-40 wt.% of the composition (Id. in para. 007) that read on, overlap, and/or encompass the instantly claimed concentrations and ratios.
While close, the cited teachings of Fadel et al. do not fairly meet the claimed combination of components under the meaning of anticipation (for example, one would need to arguably select a particular fragrance component and then, while express and/or preferred, would need to select one or more of modulator(s)), the cited teachings of the reference nevertheless meet the claimed limitations under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to select a perfume component having a top and/or middle note per Tables 1 to 8 and select/provide one of the broad modulators with the broad HSP properties per para. 012 and/or one of the modulators express/exemplary/preferred per Table 9 or the Examples in order to obtain a perfume composition with a very reasonable expectation of success.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
The remaining references listed on Forms 892, 1449, and PCT 210 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
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 1-8 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 16, and 17 of U.S. Patent No. 8,822,404. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to compositions and consumer products thereof comprising a perfume/fragrance component and components overlapping the scope of the instantly claimed fixative. The claimed fragrance component of the patented claims reads on the instantly claimed perfume ingredient having a top and/or middle note. The patented claims also recite the presence of a fragrance modulator comprising isocetyl alcohol that reads on the instantly claimed fixative and 14-methylpentadecan-1-ol species thereof. The patented claims also recite the presence of PPG-3 myristyl ether and neopentyl glycol diethylhexanoate that also read on the instantly claimed fixative and 3-tetradecoxypropan-1-ol and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate species thereof, respectively. Percentages of the components are also recited that read on, overlap, and/or encompass the instantly claimed concentrations and ratios.
Claims 1-8 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 15, and 16 of U.S. Patent No. 9,296,978. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to compositions and consumer products thereof comprising a perfume/fragrance component and components overlapping the scope of the instantly claimed fixative. The claimed fragrance component of the patented claims reads on the instantly claimed perfume ingredient having a top and/or middle note. The patented claims also recite the presence of a fragrance modulator comprising isocetyl alcohol, PPG-3 myristyl ether, and/or neopentyl glycol diethylhexanoate that read on the instantly claimed fixative and 14-methylpentadecan-1-ol, 3-tetradecoxypropan-1-ol, and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate species thereof, respectively. Percentages of the components are also recited that read on, overlap, and/or encompass the instantly claimed concentrations and ratios.
Claims 1-8 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 16, and 17 of U.S. Patent No. 9,428,712. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to compositions and consumer products thereof comprising a perfume/fragrance component and components overlapping the scope of the instantly claimed fixative. The claimed fragrance component of the patented claims reads on the instantly claimed perfume ingredient having a top and/or middle note. The patented claims also recite the presence of a fragrance modulator comprising PPG-3 myristyl ether, neopentyl glycol diethylhexanoate, and/or isocetyl alcohol that read on the instantly claimed fixative and 3-tetradecoxypropan-1-ol, [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate, and 14-methylpentadecan-1-ol species thereof, respectively. Percentages of the components are also recited that read on, overlap, and/or encompass the instantly claimed concentrations and ratios.
Claims 1, 2, 4-8, 10 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-16 of U.S. Patent No. 10,308,895. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to compositions and consumer products thereof comprising a perfume/fragrance component and components overlapping the scope of the instantly claimed fixative. The claimed perfuming ingredients of the patented claims read on the instantly claimed perfume ingredient having a top and/or middle note. The patented claims also recite the presence of a profragrance derivative component comprising 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-3-en-1-yl)butan-1-one, 3-(dodecylthio)-1-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-1-one, or 4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-2-one that read on the instantly claimed fixative. Percentages and/or ratios of the components are also recited that read on, overlap, and/or encompass the instantly claimed concentrations and ratios.
Claims 1-8 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,648,898. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to compositions and consumer products thereof comprising a perfume/fragrance component and components overlapping the scope of the instantly claimed fixative. The claimed fragrance oil of the patented claims reads on the instantly claimed perfume ingredient having a top and/or middle note. The patented claims also recite the presence of a modulator comprising neopentyl glycol diethylhexanoate or isocetyl alcohol that read on the instantly claimed fixative and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate and 14-methylpentadecan-1-ol species thereof, respectively. Nerolidol, another recited modulator, is known to have HSP of 16.315, 2.691, and 6.481 and therefore appears to mee the claimed HSP limitations, too. Percentages of the components are also recited that read on, overlap, and/or encompass the instantly claimed concentrations and ratios.
Claims 1-9 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-12 of copending Application No. 18/251,272 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to compositions and consumer products thereof comprising a perfume/fragrance component and components overlapping the scope of the instantly claimed fixative. The claimed fragrance components of the reference application read on the instantly claimed perfume ingredient having a top and/or middle note. The reference application claims also recite the presence of a modulator comprising neopentyl glycol diethylhexanoate that reads on the instantly claimed fixative and [3-(2-ethylhexanoyloxy)2,2-dimethylpropyl]2-ethylhexanoate species thereof. Isocetyl alcohol, isostearyl alcohol, octyldecanol, and octyldodecanol are other recited species of modulators that read on the instantly claimed fixative and 14-methylpentadecan-1-ol, 16-methylheptadecan-1-ol, 2-octyldecan-1-ol, and 2-octyldodecan-1-ol species thereof, respectively. Percentages of the components are also recited that read on, overlap, and/or encompass the instantly claimed concentrations and ratios.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Note that the reference application’s claims have been allowed as of 06/23/2026 but have not yet issued as a patent.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone 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 https://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. 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.
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
July 13, 2026
Prosecution Insights