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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9 and 16-19, in the reply filed on 08/21/2026 is acknowledged.
Claims 10-14 and 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/21/2026.
Status of Claims
Preliminary amendment filed on 03/05/2024 is acknowledged.
Claim 15 is cancelled. Claims 16-19 are new.
Claims 10-14 and 20-21 are withdrawn due to being drawn to nonelected groups.
Claims 1-6 and 8-9 are amended.
Claims 1-9 and 16-19 are being examined on the merits herein.
Priority
This instant application 18689307, filed on 03/05/2024, is a PCT/EP22/79226, filed on 10/20/2022, which claims foreign priority of European Patent Office (EPO) 21203749.3, filed on 10/20/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 03/05/2024, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 recites at least “dodecanal” and “10-undecenal” as duplicates in different lines. Please double check other compounds for duplications.
Appropriate correction is required.
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.
Claims 1-5, 8-9 and 16-19 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.
Claim 1 recites R or R’ “represents ... a C1 to C18 hydrocarbon group, optionally comprising ... oxygen atoms ...nitrogen atoms ...sulfur atom”. It is unclear whether the hydrocarbon group is substituted with other atoms, e.g., oxygen, nitrogen and/or sulfur, since hydrocarbon group normally does not comprise such atoms, the claim language fails to express a definite meaning.
Claim 1 recites “or both R’, when taken together, ..., each optionally substituted with one or more of a C1-15 alkyl, ..., each optionally substituted with one or more of a C1-8 alkyl, ...”. It is unclear whether these are two optionally substituted groups that independently defines the R’ cyclo-groups (e.g., C5-16 cycloalkyl, C5-16 cycloalkenyl, C4-14 heterocycloalkyl or C4-14 heterocycloalkenyl group) when both R’ being taken together, or it is meant that the second optional substitutions are further defining the first optionally substituted groups (e.g., C1-15 alkyl, C2-15 alkenyl, C1-15 alkoxy, C3-15 cycloalkyl, C5-15 cycloalkenyl, C6-10 aryl and/or C6-10 aryloxy group). The claim language fails to express a definite limitation scope.
Claim 2 presents the formula of pro-fragrance compound, while the illustration does not define “S” in the formula (I). Because uppercase letters in the formula, e.g., “P”, “Q”, “G”, represent chemical groups, such as, “P” is not atom P; following the logic, letter “S” by default would not be the sulfur atom. It is unclear as it is written currently whether S is the atom sulfur or represents a chemical group.
Claim 2 recites “and with the proviso that at least one of the P groups is of formula (II)”. By what is written, it reads that there are other P groups that can be defined other than formula (II). However, P is defined only by formula (II). Therefore, the claim scope generates conflicting limitations and renders the claim indefinite.
Claim 2e) and f) have “with a m+1 valence” or “in which case w=1 and n=1” in parentheses. It is unclear whether the limitation within the parentheses is part of the claimed invention, or it is merely an example and therefore it is not required limitation.
Claim 2e) recites “derived from a cyclic, linear, alicyclic or branched alkyl, cyclic, linear, alicyclic or branched alkenyl, phenyl, alkylphenyl or alkenylphenyl hydrocarbon radical having from 1 to 22 carbon atoms”. It is unclear the phrase “having from 1 to 22 carbon atoms” is defining only “alkenylphenyl hydrocarbon radical”, or it is defining the alternatives including “cyclic, linear, alicyclic or branched alkenyl, phenyl, alkylphenyl or alkenylphenyl hydrocarbon radical”, or even including the “a cyclic, linear, alicyclic or branched alkyl”. If it is supposed to define all the alternatives including “a cyclic, linear, alicyclic or branched alkyl”, the phrase “a cyclic, linear, alicyclic or branched” does not have to be repeated in front of alkenyl.
Claim 2 recites “o, p, q, r, s, t, u and v all represent independent of each other fractions between 0 and 1” but fails to define what these fractions represent. It is unclear whether they are supposed to indicate polymerization proportions of the final polymer, monomeric unit numbers, integers, or weight ratios out of the final polymer product.
Claim 2 recites “R7 represents, simultaneously or independently” without indication of what reference it is meant to function simultaneously or independently. If it is meant to be between different R7 in the formula, then phrase “of each other” should be added behind independently to overcome the rejection.
Claims 5, 8 and 17 each recite weight amount without defining the calculation basis of the concentration.
Claims 3-4, 9, 16 and 18-19 are rejected accordingly because they are directly or indirectly depending on claim 1, and they do not further clarify the issues addressed above in claim 1.
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 1-9, 16-17 and 19 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Womack et al. (WO2021123144, 06/24/2021, IDS of 03/05/2024; PCT/EP2020086995, designated states including US, US priority date 12/20/2019).
Womack throughout the reference teaches a perfume composition comprising at least two pro-perfume (or pro-fragrance, also termed perfumery raw materials, Pg. 3, lines 5-6) compounds for improving, enhancing, conferring and/or modifying the fragrance impression and/or fragrance intensity of a consumer product, based on various mechanisms that pro-perfumes releasing perfume compounds when prompted to light, air/oxygen, heat, moisture, enzymes (e.g., Abstract; Technical field, Pg. 1, Lines 5-15; Claim 1).
For Claim 1, Womack teaches a perfume composition comprising at least two pro-perfumes (e.g., page 2, lines 18-29; page 6, line 7 - page 14, line 19; page 23, line 19 - page 24, line 27; tables 1, 13, 15, 19). Womack exemplifies compositions in Example F of Table 13 (Pg. 102), comprising pro-perfume compound 1 and pro-perfume compound 43, wherein compound 1 is a sulfur-containing compound (±)-3-(dodecylthio)-1-((1SR,2RS)-2.6.6-trimethylcyclohex-3-en-1-yl)butan-1-one synthesized based on formula (I) (Pg. 46, Example 1, Lines 21-24), and compound 43 is (±)-2-benzyl-5-butyl-6-pentyl-1,3-dioxan-4-ol synthesized based on formula XII (Pg. 71, Lines 14 and 33), while formula XII shows the compound containing formula R16CHO with substituents (Pg. 32, lines 24-25; Claims 10-11).
Womack also exemplifies in Example E of Table 14 (Pg. 103-104), Womack presents the composition comprising mixture of pro-perfume compounds 2a/2b 0.05% and compound 27 0.3%, wherein compounds 2a/2b are synthesized according to formula (I) as sulfur-containing compound 2a, (±)-4-(dodecylthio}-4-(2,6,6-trimethylcyclohex-1-en-1-yl}butan-2-one (Pg. 47, Lines 13-14), and compound 2b, (±)-4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-2-one (Pg. 47, Lines 30-31), and compound 27 as (+)-1,3-dibenzyl-2-(undecan-2-yl)imidazolidine synthesized based on formula (VII) (Pg. 64, Lines 7-8). Womack shows Formula (VII) (Pg. 26, Lines 10-14; copied below) with R16 defined as the residue of formula R16CHO. Compound 27 represents the aldehydic perfumery raw material having the instantly claimed chemical structure of R-CH2-CHO or R'-CH(R')-CHO comprising two nitrogen atoms.
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For the phrase “effective to reduce the formation of hydrogen sulfide” in claim limitation, it is interpreted as intended use, or outcome, or property of the composition, because it does not structurally contribute to the subject matters of the composition. MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada' s polymer latexes for lack of novelty."). Because Womack teaches using the same essential components in the perfume composition as instantly claimed, the composition taught by prior art would necessarily present such property, or achieve such outcome, or be capable of obtaining such intended use.
Moreover, Womack exhibits that a composition comprising structurally different pro-perfumes can have a synergistic effect with an increase of up to more than 1000% (Pg. 80, Lines 12-15; Pg. 79-80, Table 2), indicating the composition can effectively modify or impart an odor, such as long-lasting, blooming, malodour counteraction, etc. (Pg. 3, Lines 19-22). Womack specifies that for every pro-perfume there exists one or two types of release mechanism that are particularly efficient or superior to other types that may theoretically be envisaged; if not mentioned within the context of the disclosed invention, it lies well within the knowledge of a skilled person to determine the main types of release mechanism for existing pro-perfumes. MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Furthermore, MPEP 2145 II. states that “prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art”, see In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness. However, the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
For Claim 2, Womack teaches the pro-perfume compounds of formula (I). Womack defines all the groups P, G, Q, and their substitutions, integer numbers of formula (I) through itemized list a)-g) (e.g., Pg. 6, line 7-Pg. 9, line 9; Claim 4; copied below) exactly the same as instantly claimed, except group X in prior art representing variable functional groups, including -O- (i), -S- (ii), and other alternatives (iii-xiv) (Pg. 7, Lines 5-8), of which resulting in instantly claimed formula (I) when X represents -S-.
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For Claim 3, Womack teaches the sulfur-containing pro-fragrance compound is a compound selected from the group consisting of formulae a) to d) (e.g., Claim 6; Pg. 13, Lines 16-22, copied below), the same as instantly claimed formulae a)-d):
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Womack also teaches the sulfur-containing pro-fragrance compound is a linear polysiloxane co-polymer comprising at least one repeating unit of formula (III) (e.g., Claim 6; Pg. 15, Lines 1-8; copied below), which reads into instant claim formula (III):
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For Claim 4, Womack teaches the sulfur-containing pro-fragrance compound can be one or mixture of the following compounds as exemplified in Example F of Table 13 (Pg. 102) and Example E of Table 14 (Pg. 103-104) as discussed above: compound 1 as (±)-3-(dodecylthio)-1-((1SR,2RS)-2.6.6-trimethylcyclohex-3-en-1-yl)butan-1-one (corresponding to 3-(dodecylthio )-1-(2,6,6-trimethylcyclohex-3-en-l-yl)butan-l-one) (Pg. 46, Example 1, Lines 21-24), compound 2a as (±)-4-(dodecylthio}-4-(2,6,6-trimethylcyclohex-1-en-1-yl}butan-2-one (corresponding to 4-(dodecylthio )- 4-(2,6,6-trimethylcyclohex-l-en- l-yl)butan-2-one) (Pg.47, Lines 13-14), compound 2b as (±)-4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-2-one (corresponding to 4-( dodecylthio )-4-(2,6,6-trimethylcyclohex-2-en-l-yl)butan-2-one) (Pg. 47, Lines 30-31), all synthesized based on formula (I).
For Claim 5, Womack exemplifies compositions using sulfur-containing pro-fragrance compound 1 or compound 2 in an amount of 0.05% (Pg. 102, Table 13, Examples A and F; Pg. 103-104, Table 14, Examples A, B and E), representing the low end point of amount range from 0.05 to 50 wt.%. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
For Claims 6-7, Womack teaches the perfumery raw material can be selected from octanal, decanal, dodecanal and others (e.g., Pg. 40, Lines 30-31).
For Claim 8, Womack exemplifies in Example 7 perfume composition (Pg. 93) containing 1% of 4-methoxybenzaldehyde (corresponding to at least 0.75% in instant claim).
For Claims 9 and 19, Womack teaches in Table 9 formulations A-I (Pg. 95) using 7.4% triethanolamine, which is known as a hydrogen sulfide scavenger (as evidenced by instant spec., background). MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. For this instance, compound triethanolamine is taught by prior art, being hydrogen sulfide scavenger is the property of the compound that would necessarily present in prior art.
For Claim 16, Womack teaches the sulfur-containing pro-fragrance compound is a compound selected from the group consisting of formulae a) to d) (e.g., Claim 6; Pg. 13, Lines 16-22) as presented above regarding instant claim 3, and Womack indicates that the R group on sulfur atom is preferably a C6-C16 alkyl or alkenyl group, more preferably C12 alkyl group (Pg. 13, Lines 21-22).
For Claim 17, Womack exemplifies in a pro-perfume composition with combination of a pro-perfume of formula (I) compound, TEA-esterquat (methyl bis[ethyl (tallowate)]-2-hydroxyethyl ammonium methyl sulfate, Stepantex® VL 90A), present at 12.3 wt%, with a pro-perfume formula (IV) (corresponding to aldehydic perfumery raw material compound) (e.g., Pg. 83, Example 4, lines 23-25); or present at 12.1% and 16.2% in combination with other ingredients including the aldehydic perfumery raw materials in formulations A-I (Pg. 94, Example 8, Table 8), amounts falling within the amount range from 0.1 to 30 wt.% as in instant claim 17. MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
Claim Rejections - 35 USC § 103
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 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 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Womack et al. (WO2021123144, 06/24/2021, IDS of 03/05/2024; PCT/EP2020086995, designated states including US, US priority date 12/20/2019) as applied to claims 1-9, 16-17 and 19 above, in view of Nwachukwu et al. (US20170274110, 09/28/2017, IDS of 03/05/2024).
Womack teaches a perfume composition comprising at least two pro-fragrance compounds which can be sulfur-containing compounds, such as sulfur-containing compound 2a, (±)-4-(dodecylthio}-4-(2,6,6-trimethylcyclohex-1-en-1-yl}butan-2-one, compound 2b, (±)-4-(dodecylthio)-4-(2,6,6-trimethylcyclohex-2-en-1-yl)butan-2-one (Pg. 47, Lines 30-31), and aldehydic perfumery raw material compound 27 as (+)-1,3-dibenzyl-2-(undecan-2-yl)imidazolidine; the compositions present in amounts can effectively and synergistically reducing the malodor, as discussed and applied to claims 1-9, 16-17 and 19 above in great detail, and incorporated herein.
Womack does not teach an amount of at least 1.5 wt.% of the aldehydic perfumery raw material in the composition as recited in instant claim 18.
Nwachukwu throughout the reference teaches a freshening composition including about 0.02 wt.% to about 1.0 wt.% of sulfur-containing pro-perfume material (e.g., Abstract) (overlapping with the amount 0.1-30 wt.% in instant claim 17, or from 0.05 to 50 wt.% in instant claim 5), preferably be compounds such as 3-( dodecylthio )-1-(2,6,6-trimethylcyclohex-3-en-1-yl)-1-butanone, 4-( dodecylthio )-4-(2, 6, 6-trimethy lcyclohex-2-en-1-y 1)-2-butanone, 4-( dodecylthio )-4-(2,6,6-trimethylcyclohex-1-en-1-yl)-2-butanone (e.g., [0014-0015]) (corresponding to compounds in instant claim 4).
Nwachukwu teaches that the composition can include a mixture of aldehydes that contribute to scent character and neutralize malodors in vapor and/or liquid phase via chemical reactions. Aldehydes that are partially reactive or volatile may be considered a reactive aldehyde, which can react with sulfur-based odors, forming thiol acetals, hemi thiol acetals, and thiol esters in vapor and/or liquid phase, desirable for these vapor and/or liquid phase reactive aldehydes to have virtually no negative impact on the desired perfume character, color or stability of a product [0022]. Nwachuwu specifies that the malodor control composition may comprises, by total weight of the freshening composition, from about 0% to about 30% of volatile aldehydes from group 1, alternatively about 25%; and/or about 0% to about 10% of volatile aldehydes from group 2, alternatively about 10%; and/or from about 10% to about 30% of volatile aldehydes from group 3, alternatively about 30%; and/or from about 35% to about 60% of volatile aldehydes from group 4, alternatively about 35% (e.g., [0026]) (overlapping with at least 1.5 wt.% as in instant claim 18).
It would have been prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate Nwachuwu teaching of ingredients amounts into the composition taught by Womack, because Nwachuwu specifies how aldehydes can react with sulfur-containing pro-perfume compounds to reduce malodor, which shares the same intended use and strategy as Womack with shared compounds. It would have been convenient for artisans to modify the concentration for reasonable expectation of success.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP §2144.05(I) states that “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, “[i]t would have been prima facie obvious for one of ordinary skill in the art to optimize additive amount through nothing more than “routine experimentation,” because of a reasonable expectation of success resulting from the optimization for desirable features of intended use of the composition (MPEP §2144.05 (II)). See Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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