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
This Office action is based on the 18/696049 application originally filed March 27, 2024.
Claims 1-20, filed March 27, 2024, are pending and have been fully considered.
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.
Claim 17 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 17 incorporates Tables listed in the specification which is unclear due to the expansive list of materials or combinations of materials listed in the Tables claimed in claim 17. Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). MPEP 2173.05(s).
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claim(s) 1-4, 6 and 8-20 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Holland et al. (US 2018/0180391) hereinafter “Holland”.
Regarding Claim 1
Holland discloses in the abstract, a composition having improved or enhanced fidelity and/or longevity of the fragrance profile, comprising fragrance materials in a diamond construction and at least one substantially non-odorous fragrance modulator. The methods of use of the compositions for perfuming suitable substrates, including hard surfaces and body parts, particularly skin and hair.
Holland discloses in paragraph 0011, a composition comprising a diamond construction fragrance formulation (see FIG. 1b ) and at least one substantially non-odorous fragrance modulator for delivering enhanced intensity of the perceived fragrance profile over time, preferably the components attributable from the moderate and high volatile fragrance materials. In particular, a composition comprising: (i) a fragrance component present in an amount of from about 0.04 wt % to about 30 wt %, relative to the total weight of the composition; (ii) at least one substantially non-odorous fragrance modulator present in the amount of from about 0.1 wt % to about 20 wt %, relative to the total weight of the composition; (iii) a volatile solvent present in an amount of from about 50 wt % to about 80 wt %, relative to the total weight of the composition; and (iv) optionally water. The fragrance component comprises: (a) at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr (0.000133 kPa) at 25°C present in an amount of from about 10 wt % to about 30 wt %, relative to the total weight of the fragrance component; (b) at least one moderate volatile fragrance material having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25°C present in an amount of from about 40 wt % to about 80 wt %, relative to the total weight of the fragrance component; and (c) at least one high volatile fragrance material having a vapor pressure greater than 0.1 Torr (0.0133 kPa) at 25°C present in an amount of from about 1 wt % to about 30 wt %, relative to the total weight of the fragrance component.
Holland further discloses in paragraphs 0126-0127 and Table 2, (ii) Moderate Volatile Fragrance Materials; preferable examples of moderate volatile fragrance materials having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25°C are provided in Table 2 Moderate Volatile Fragrance Materials. Preferably, the moderate volatile fragrance material is selected from at least 1 material, or at least 2 materials, or at least 3 materials, or at least 5 materials, or at least 7 moderate volatile fragrance materials as disclosed in Table 2. Holland discloses in Table 2 L-Citronellol and Citronellol.
Holland further discloses in paragraph 0071, at least one substantially non-odorous fragrance modulator as described herein below. Preferable examples of the substantially non-odorous fragrance modulators.
Holland discloses in paragraphs 0138-209 and Table 4, compositions comprise at least one substantially non-odorous modulator selected from the group: a) Methyl Glucoside Polyol; Ethyl Glucoside Polyol; Propyl Glucoside Polyol; and their mixtures; (b) Isocetyl Alcohol; (c) PPG-3 Myristyl Ether; Neopentyl Glycol Diethylhexanoate; and their mixtures; (d) Sucrose Laurate, Sucrose Dilaurate, Sucrose Myristate, Sucrose Palmitate, Sucrose Stearate, Sucrose Distearate, Sucrose Tristearate, and mixtures thereof; (e) Trimethylcyclohexane derivatives; (f) L-menthoxy ether derivatives; (g) Tetra-hydronaphthalene derivatives; (h) Hyaluronic acid disaccharide sodium salt, sodium hyaluronate and their mixtures; (i) Ether derivatives; (j) Diethylene Glycol Ether; (k) Hydroquinone Glycoside derivatives; (l) Propylene Glycol Propyl Ether; Dicetyl Ether; Polyglycerin-4 Ethers; Isoceteth-5; Isoceteth-7, Isoceteth-10; Isoceteth-12; Isoceteth-15; Isoceteth-20; Isoceteth-25; Isoceteth-30; Disodium Lauroamphodipropionate; Hexaethylene glycol monododecyl ether; and their mixtures; (m) Neopentyl Glycol Diisononanoate; Cetearyl Ethylhexanoate; and their mixtures; (n) Glyceryl Ether derivatives; (o) Panthenol Ethyl Ether, DL-Panthenol and their mixtures; (p) Aliphatic Dibasic Acid Diester derivatives; (q) Aliphatic Ether derivatives; (r) N-hexadecyl n-nonanoate, Noctadecyl n-nonanoate and their mixtures; (s) Tricyclodecane Amide derivatives; and (t) mixtures thereof.
The claimed invention is anticipated by the reference because the reference teaches a composition which comprises all of the claimed components. In the alternative, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding Claim 2
Holland discloses in paragraphs 0071-0072, the composition further comprises at least one substantially non-odorous fragrance modulator as described herein below. Preferable examples of the substantially non-odorous fragrance modulators are provided in Table 4 below. Preferably, the substantially non-odorous fragrance modulator is present in an amount of from about 0.1 wt % to about 20 wt % or combinations thereof, relative to the total weight of the composition. If there is more than one substantially non-odorous fragrance modulators, then the ranges provided hereinabove cover the total of all of the substantially non-odorous fragrance modulators.
Regarding Claims 3, 4 and 8
Holland further discloses in paragraphs 0126-0127 and Table 2, (ii) Moderate Volatile Fragrance Materials; preferable examples of moderate volatile fragrance materials having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25°C are provided in Table 2 Moderate Volatile Fragrance Materials. Preferably, the moderate volatile fragrance material is selected from at least 1 material, or at least 2 materials, or at least 3 materials, or at least 5 materials, or at least 7 moderate volatile fragrance materials as disclosed in Table 2. Holland discloses in Table 2 L-Citronellol and Citronellol.
It is to be noted, Holland discloses Citronellol as a moderate volatile fragrance and fails to state it is a modulator. However, a chemical composition and its properties are inseparable and therefore can be identified as a moderate volatile fragrance and/or a modulator. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. There-fore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) MPEP 2112.01.
Regarding Claim 6
Holland discloses in paragraph 0071, the composition further comprises at least one substantially non-odorous fragrance modulator.
Regarding Claims 9-17
Holland discloses in paragraph 0011, a composition comprising a diamond construction fragrance formulation (see FIG. 1b ) and at least one substantially non-odorous fragrance modulator for delivering enhanced intensity of the perceived fragrance profile over time, preferably the components attributable from the moderate and high volatile fragrance materials. The fragrance component comprises: (a) at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr (0.000133 kPa) at 25°C present in an amount of from about 10 wt % to about 30 wt %, relative to the total weight of the fragrance component; (b) at least one moderate volatile fragrance material having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25°C present in an amount of from about 40 wt % to about 80 wt %, relative to the total weight of the fragrance component; and (c) at least one high volatile fragrance material having a vapor pressure greater than 0.1 Torr (0.0133 kPa) at 25°C present in an amount of from about 1 wt % to about 30 wt %, relative to the total weight of the fragrance component.
The claimed invention is anticipated by the reference because the reference teaches a composition which comprises all of the claimed components. In the alternative, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding Claims 18-20
Holland discloses in paragraph 0095, the composition, depending on its intended use, is a mixture of fragrance materials possibly together with other ingredients such as, for example, perfume carriers. By the term “perfume carrier”, it is meant to include materials which are practically neutral from a perfumery point of view, i.e., which does not significantly alter the organoleptic properties of perfuming components. The perfume carrier may be a compatible liquid or solid fillers, diluents, and the like. The term “compatible”, as used herein, means that the components of the compositions of this invention are capable of being combined with the primary actives of the present invention, and with each other, in a manner such that there is no interaction which would substantially reduce the efficacy of the composition under ordinary use situations. The type of carrier utilized in the present invention depends on the type of product desired and may comprise, but are not limited to, solutions, aerosols, emulsions (including oil-in-water or water-in-oil), gels, and liposomes. Preferably, the carrier is a liquid and will be a solvent such as, for example, dipropylene glycol, diethyl phthalate, isopropyl myristate, benzyl benzoate, 2-(2-ethoxyethoxy)-1-ethanol, or ethyl citrate (triethyl citrate).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holland et al. (US 2018/0180391) hereinafter “Holland”.
Regarding Claim 7
Holland discloses the fragrance composition of claim 1 of the present invention.
Holland further discloses in paragraph 0094, the composition consists essentially of the recited ingredients but may contain small amounts (not more than about 10 wt %, preferably no more than 5 wt %, or preferably no more than 2 wt % thereof, relative to the total weight of the composition) of other ingredients that do not impact on the fragrance profile, particularly the evaporation rate and release of the fragrance materials. For example, a fine fragrance composition may comprise stabilizing or anti-oxidant agents, UV filters or quenchers, or colouring agents, commonly used in perfumery. There are a number of other examples of additional ingredients that are suitable for inclusion in the present compositions, particularly in compositions for cosmetic use. These include, but are not limited to, alcohol denaturants such as denatonium benzoate; UV stabilisers such as benzophenone-2; antioxidants such as tocopheryl acetate; preservatives such as phenoxyethanol, benzyl alcohol, methyl paraben, and propyl paraben; dyes; pH adjusting agents such as lactic acid, citric acid, sodium citrate, succinic acid, phosphoric acid, sodium hydroxide, and sodium carbonate; deodorants and anti-microbials such as famesol and zinc phenolsulphonate; humectants such as glycerine; oils; skin conditioning agents such as allantoin; cooling agents such as trimethyl isopropyl butanamide and menthol; silicones; solvents such as hexylene glycol; hair-hold polymers; salts in general, such as potassium acetate and sodium chloride and mixtures thereof.
Holland discloses applying pH adjusting agents but fails to disclose the claimed pH range of the composition.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the composition of Holland with pH adjusting agents through routine experimentation, in order to have provided for a pH of the claimed fragrance composition is in a range of from about 4 to about 8. The applicant is reminded that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The applied prior art fails to disclose a fragrance composition comprising the molar ratio of pentylene glycol and polycitronellol of claim 5 of the presently claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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