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 . Claims included in prosecution are claims 1-8, 10, and 12.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, 10, and 12, in the reply filed on 6/4/26 is acknowledged.
Accordingly, claims 9 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 101/ § 112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Lack of Method Step
1. Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is not directed to a single statutory class.
The claim(s) are directed to neither a “process” nor a “machine”, but rather embraces or overlaps two different statutory categories of invention set forth under that statue, which is drafted so as to set forth the statutory classes of invention in the alternative only. See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
Claim 1 recites a “A method of using a composition comprising a fragrance component” however, the method is presented without any active steps. The claim simply recites wherein the method comprises using the composition as a skin moisturizer” which is neither a process nor a machine, where no active steps of the “use” as a skin moisturizer are claimed.
Claims 1-8 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.
A single claim which recites both a product and a method of using that product is indefinite under 35 USC 112, second paragraph. See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: actually applying the composition to the skin.
Note, for the sake of compact prosecution, claim limitations will be interpreted as intended use limitations.
Indefiniteness
2. Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites wherein the perfumery consumer product may be a “a fine perfume”, “a splash or eau de parfum”, “a cologne”, “a coloring preparation”, “a color care product”, “a hair shaping product”, “a dental care product”, “a disinfectant”, “a hair spray”, “a hair remover”, or “a makeup”. However, claim 6, from which claim 8 depends, recites wherein the perfumery consumer product is used as a “skin moisturizer”. It is unclear how products such as a dental care product or a eau de parfum etc. may act as a skin moisturizer. Therefore, the claim is indefinite.
Claim Rejections - 35 USC § 102
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.
1. Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shoji et al. (JP 2011084617, Apr. 28, 2011) (hereinafter Shoji).
Shoji discloses a perfume composition (Abstract). Formulation example 1 comprises a lotion which comprises a solubilization system which comprises several components such as ethyl alcohol, glycerin, and butylene glycol (satisfies claim 5) along with perfume composition formulation 1 (Translated Desc. Pg. 6). Formulation example 2 comprises moisturizing system which comprises a polymer system which comprises several components such as glycerin and butylene glycol (satisfies claim 5) along with perfume composition formulation 2 (Translated Desc. Pg. 6). Perfume composition formulation 1 comprises benzyl acetate (2%), Florol (i.e., (+ −)-tetrahydro-2-isobutyl-4-methyl-4(2h)-pyranol) (75%), Hedione (i.e., methyl 2-((1RS,2RS)-3-oxo-2-pentylcyclopentyl)acetate) (1%), Geraniol (i.e., 3,7-dimethyl-2,6-octadien-1-ol) (0.38%), and Citronellol (i.e., (+ −)-3,7-dimethyl-6-octen-1-ol) (0.15%) (Translated Table 6). Perfume composition formulation 2 comprises benzyl acetate (3.5%), phenylethyl alcohol (10%), Florol (i.e., (+ −)-tetrahydro-2-isobutyl-4-methyl-4(2h)-pyranol) (20%), and Hedione (i.e., methyl 2-((1RS,2RS)-3-oxo-2-pentylcyclopentyl)acetate) (8.9%) (Translated Table 7).
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Regarding claims 1-8 reciting using the fragrance component as a skin moisturizer, this is merely a recitation of the intended use of the claimed fragrance component. As discussed above, the perfume composition of Shoji is in the form of a body lotion and a moisturizing gel. As such, it would be reasonable for one of ordinary skill in the art to conclude that the composition of Shoji would be useable for moisturizing the skin since it may be in the form of a body lotion and/or a moisturizing gel, whether the prior art discloses such use or not.
The prior art anticipates the indicated claims because it discloses fragrance components used in skin moisturizers (i.e., body lotion and/or moisturizing gel) in amounts that overlap with the instant claims and utilizing adjuvants/carriers as instantly claimed.
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.
1. Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fieber et al. (US 2020/0306152, Oct. 1, 2020) (hereinafter Fieber).
Fieber discloses a microemulsion comprising an oil phase comprising a hydrophobic active agent (Abstract). The micro emulsion may be used in perfumed consumer products for personal care products (¶ [0002]). According to a particular embodiment, the hydrophobic active ingredient comprises or consists of a perfume (¶ [0108-0109]). The oil phase (i.e., hydrophobic active agent) concentration is between 0.5 and 40% wt. % (¶ [0113]). The composition may further comprise a perfumery carrier and at least one perfumery adjuvant (satisfies claim 5) (¶ [0118]). The perfuming consumer product is meant as a consumer product which is expected to deliver at least a pleasant perfuming effect to the surface to which it is applied ( e.g. skin or hair). In other words, a perfuming consumer product according to the invention is a perfumed consumer product which comprises a functional formulation, as well as optionally additional benefit agents, corresponding to the desired consumer product (¶ [0125]). Suitable perfumery consumer product include a perfume, such as a fine perfume, a body splash, a cologne or an after-shave lotion; a body-care product, such as a hair care product ( e.g. a shampoo, hair conditioner, a coloring preparation or a hair spray), a cosmetic preparation (e.g. a vanishing cream, body lotion or a deodorant or antiperspirant), or a skin-care product (e.g. a perfumed soap, shower or bath mousse, body wash, oil or gel, bath salts, or a hygiene product) (satisfies claim 6-8) (¶ [0128]). Suitable fragrances for use include F1 and F2 (¶ [0156]). F1 comprises benzyl acetate, 2-phenylethanol, (+ −)-tetrahydro-2-isobutyl-4-methyl-4(2h)-pyranol, methyl 2-((1rs,2rs)-3-oxo-2-pentylcyclopentyl)acetate, (+ −)-2,6-dimethyl-7-octen-2-ol, 3,7-dimethyl-2,6-octadien-1-ol, (+ −)-3,7-dimethyl-6-octen-1-ol, (+)-(1s,1′r)-2[1-(3′,3′-dimethyl-1′-cyclohexyl)ethoxy]-2-methylpropyl propanoate, (+ −)-1-(octahydro-2,3,8,8-tetramethyl-2-naphthalenyl)-1-ethanone, 1-oxa-12/13-cyclohexadecen-2-one, and (+ −)-(4e)-3-methyl-4-cyclopentadecen-1-one (satisfies fragrance component of claim 1-2 & 4) (Table 1). F2 comprises benzyl acetate, (+ −)-2,6-dimethyl-7-octen-2-ol 2) 4-cyclohexyl-2-methyl-2-butanol, 1-(5,5-dimethyl-1-cyclohexen-1-yl)-4-penten-1-one, (+)-(1s,1′r)-2-[1-(3′,3′-dimethyl-1′-cyclohexyl)ethoxy]-2-methylpropyl propanoate, (+ −)-1-(octahydro-2,3,8,8-tetramethyl-2-naphthalenyl)-1-ethanone, (−)-(3AR,5as,9as,9br)-3a,6,6,9a-etramethyldodecahydronaphtho[2,1-b]furan, and oxacyclohexadecan-2-one (satisfies fragrance component of claim 1 & 3) (Table 2). The fragrance load ranged from 0.5% to 20% in the inventive compositions (Table 5-6).
Fieber differs from the instant claims insofar as not explicitly disclosing the use of the perfumed consumer product as a skin moisturizer.
However, regarding claims 1-8 reciting using the fragrance component as a skin moisturizer, this is merely a recitation of the intended use of the claimed fragrance component. As discussed above, the perfuming consumer product is a perfumed consumer product which comprises a functional formulation, as well as optionally additional benefit agents, corresponding to the desired consumer product. Furthermore, the perfumed consumer product may be used as a body lotion or many other products recited by the instant claims. As such, it would be reasonable for one of ordinary skill in the art to conclude that the composition of Fieber would be useable for moisturizing the skin since it may be in the form of a body lotion, whether the prior art discloses such use or not.
Regarding the amount of fragrance component recited in instant claim 1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, The oil phase (i.e., hydrophobic active agent) concentration is between 0.5 and 40% wt. %. Furthermore, fragrance load ranged from 0.5% to 20% in the inventive compositions. Accordingly, because the range recited in the instant claims overlaps with the ranges disclosed by Fieber, the ranges disclosed by Fieber meet the instantly recited limitations.
Accordingly, the teachings of Fieber render obvious claims 1-8.
2. Claim(s) 1-8, 10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fieber et al. (US 2020/0306152, Oct. 1, 2020) (hereinafter Fieber) in view of SkinScience (How Often Should I Moisturize With Body Lotions, Jun. 29, 2016) (hereinafter SkinScience).
Fieber discloses a microemulsion comprising an oil phase comprising a hydrophobic active agent (Abstract). The micro emulsion may be used in perfumed consumer products for personal care products (¶ [0002]). According to a particular embodiment, the hydrophobic active ingredient comprises or consists of a perfume (¶ [0108-0109]). The oil phase (i.e., hydrophobic active agent) concentration is between 0.5 and 40% wt. % (¶ [0113]). The composition may further comprise a perfumery carrier and at least one perfumery adjuvant (satisfies claim 5) (¶ [0118]). The perfuming consumer product is meant as a consumer product which is expected to deliver at least a pleasant perfuming effect to the surface to which it is applied ( e.g. skin or hair). In other words, a perfuming consumer product according to the invention is a perfumed consumer product which comprises a functional formulation, as well as optionally additional benefit agents, corresponding to the desired consumer product (¶ [0125]). Suitable perfumery consumer product include a perfume, such as a fine perfume, a body splash, a cologne or an after-shave lotion; a body-care product, such as a hair care product ( e.g. a shampoo, hair conditioner, a coloring preparation or a hair spray), a cosmetic preparation (e.g. a vanishing cream, body lotion or a deodorant or antiperspirant), or a skin-care product (e.g. a perfumed soap, shower or bath mousse, body wash, oil or gel, bath salts, or a hygiene product) (satisfies claim 6-8) (¶ [0128]). Suitable fragrances for use include F1 and F2 (¶ [0156]). F1 comprises benzyl acetate, 2-phenylethanol, (+ −)-tetrahydro-2-isobutyl-4-methyl-4(2h)-pyranol, methyl 2-((1rs,2rs)-3-oxo-2-pentylcyclopentyl)acetate, (+ −)-2,6-dimethyl-7-octen-2-ol, 3,7-dimethyl-2,6-octadien-1-ol, (+ −)-3,7-dimethyl-6-octen-1-ol, (+)-(1s,1′r)-2[1-(3′,3′-dimethyl-1′-cyclohexyl)ethoxy]-2-methylpropyl propanoate, (+ −)-1-(octahydro-2,3,8,8-tetramethyl-2-naphthalenyl)-1-ethanone, 1-oxa-12/13-cyclohexadecen-2-one, and (+ −)-(4e)-3-methyl-4-cyclopentadecen-1-one (satisfies fragrance component of claim 1-2 & 4) (Table 1). F2 comprises benzyl acetate, (+ −)-2,6-dimethyl-7-octen-2-ol 2) 4-cyclohexyl-2-methyl-2-butanol, 1-(5,5-dimethyl-1-cyclohexen-1-yl)-4-penten-1-one, (+)-(1s,1′r)-2-[1-(3′,3′-dimethyl-1′-cyclohexyl)ethoxy]-2-methylpropyl propanoate, (+ −)-1-(octahydro-2,3,8,8-tetramethyl-2-naphthalenyl)-1-ethanone, (−)-(3AR,5as,9as,9br)-3a,6,6,9a-etramethyldodecahydronaphtho[2,1-b]furan, and oxacyclohexadecan-2-one (satisfies fragrance component of claim 1 & 3) (Table 2). The fragrance load ranged from 0.5% to 20% in the inventive compositions (Table 5-6).
Fieber differs from the instant claims insofar as not explicitly disclosing the use of the perfumed consumer product as a skin moisturizer and does not disclose applying an effective amount.
However, SkinScience discloses that moisturizers help solve the issue of dry skin by keeping water contained in the skin, making sure it has the proper hydration necessary to stay healthy and look and feel its best (Pg. 1). Moisturizer should be used once a day, immediately following a bath being the best time. This ensures proper preparation for the upcoming day and that the skin is protected against the environment. If you find that the skin is drying out throughout the day, applying more is advised to ensure the skin stays healthy and hydrated (Pg. 2). An appropriate moisturizer to apply to the skin is body lotion to moisturize the skin when it becomes dry, flaky, or cracked (Pg. 2). If one is experiencing dryness on a regular basis, they should increase the frequency of your lotion applications (Pg. 2).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have used to the perfumed consumer product of Fieber as the moisturizer taught by SkinScience since Fieber discloses wherein the perfumed consumer product may be in the form of a body lotion and body lotions are appropriate moisturizers to apply at least once a day to ensure proper skin moisturization and hydration as taught by SkinScience.
Regarding the amount of fragrance component recited in instant claim 1, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, The oil phase (i.e., hydrophobic active agent) concentration is between 0.5 and 40% wt. %. Furthermore, fragrance load ranged from 0.5% to 20% in the inventive compositions. Accordingly, because the range recited in the instant claims overlaps with the ranges disclosed by Fieber, the ranges disclosed by Fieber meet the instantly recited limitations.
Accordingly, the combined teachings of Fieber and SkinScience render obvious claims 1-8, 10, and 12.
Conclusion
Claims 1-8, 10, and 12 are rejected.
Claims 9 and 11 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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