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
This application contains claims directed to more than one species of the generic invention in regard to the solvent component. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
an organic solvent (e.g. ethanol) and/or an aqueous solvent (e.g. water)
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: 1, 4-8, 13-21 and 23.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Said solvents lack unity of invention because even though the inventions of these groups require the technical feature of being solvents, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the references used in the below prior-art rejections.
During a telephone conversation with Nicholas Teo on 09/16/26 a provisional election was made without traverse to prosecute the invention of where the solvent is an admixture of water and organic solvent (ethanol), claims 1, 4-9, 12-21 and 23 read on said elected species. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-11 are withdrawn from further consideration by the examiner because they do not require the further solvent of water, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 4-9, 12-21 and 23 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.
Independent claim 1 is indefinite for a number of reasons.
The limitation of: “a cyclic oligosaccharide in a range of from greater than 0.5 wt% to about 25 wt% of the composition;” lacks clarity in regards to the actually scope of the claimed concentration range. [Emphasis added]. The problem is that the use of the article “a” in said concentration limitation, seems to imply that the set forth concentration range is just one possible concentration range out of numerous other concentration ranges not listed. To overcome his problem, and to positively require that the cyclic oligosaccharide must fall within the listed concentration range, the article “a” needs to be replaced by the word --the--.
The use of the acronyms “GLDA, EDTA, EDDS, MGDA” for the required chelant component(s) in the claim can lead to clarity issues if they are not commonly understood. To ensure clarity, said acronyms should be accompany by their full definitions. This ensures that the claims are understandable to a person of ordinary skill in the art.
The requirement "wherein a log K, ion metal constant of the chelant is greater than or equal to 9" renders claim 1 indefinite. Firstly, the claim does not specify the conditions under which the "log K" value is determined, temperature, pH, solvent system type). Since "log K" values vary depending on said experimental conditions, the lack of such details leads to ambiguity. Secondly, it is known that Log K is the base-10 logarithm of the stability constant (K), which quantifies the strength of the interaction between a ligand and a metal ion. However, claim 1 has NO requirement that any metal ion(s) is/are actually present in the composition which further renders the claim indefinite. Thirdly, for the same ligand the log K values are different for different metals (e.g. Fe ions, Cu ions, Ni ions, Pd ions, Pt ions etc.). For example, for GLDA log K values Calcium (Ca²⁺): log K = 5.9 (at 0.1 M, 25 °C), Iron(III) (Fe³⁺): log K = 15.2 (at 0.1 M, 25 °C), thus the same chelant has log K values below 9 and above 9 depending on the type of metal ions being chelated, thus also rendering claim 1 indefinite.
The preambles of dependent claims 4-9 and 12-21 all lack clarity because they read: “The fragrance composition of claim . . .”. The problem here is that there is a lack of antecedent base in the preamble of independent claim 1 to a “fragrance composition”.
Dependent claims 16-17 are also unclear, since they define the parts by weight of chelant component in reference to the parts by weight of by metal present in the composition. However, as already stated above, independent claim 1 has NO requirement that any metal is actually present in the claimed composition.
Dependent claims 20-21 are unclear for the same reason independent claim 1 is unclear in regards to the requirement "wherein a log K, ion metal constant of the chelant is greater than . . .". Firstly, the claims do not specify the conditions under which the "log K" value is determined, temperature, pH, solvent system type). Since "log K" values vary depending on said experimental conditions, the lack of such details leads to ambiguity. Secondly, it is known that Log K is the base-10 logarithm of the stability constant (K), which quantifies the strength of the interaction between a ligand and a metal ion. However, these claims like independent claim 1, have NO requirement that any metal ion(s) is/are actually present in the composition which further renders the claim indefinite. Thirdly, for the same ligand the log K values are different for different metals (e.g. Fe ions, Cu ions, Ni ions, Pd ions, Pt ions etc.). For example, for GLDA log K values Calcium (Ca²⁺): log K = 5.9 (at 0.1 M, 25 °C), Iron(III) (Fe³⁺): log K = 15.2 (at 0.1 M, 25 °C), thus the same chelant has log K values below 9 and above 9 depending on the type of metal ions being chelated, thus also rendering claims indefinite.
All other dependent claims are also indefinite because they are either directly or indirectly dependent on an indefinite independent claim 1.
Independent claim 23 use of the acronyms “GLDA, EDTA, EDDS, MGDA” for the required chelant component(s) in the claim, this can lead to clarity issues if they are not commonly understood. To ensure clarity, said acronyms should be accompany by their full definitions. This ensures that the claims are understandable to a person of ordinary skill in the art.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 does NOT further limit the chelant component used in the composition of independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
EXAMINATION NOTE
In light of the complete indefiniteness of dependent claims 16-17 (see above), no prior-art rejection is possible over these claims. As such, they are withdrawn from further consideration.
Furthermore, in light of the indefinite issue regarding the “log K, ion constant of the chelate” as set forth in independent claim 1 and dependent claims 20-21, this “limitation” will be held in abeyance for the following prior-art rejections.
Claim(s) 1, 4-9, 12-15, 19-21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makins Holland et al. U.S. Patent Application Publication No.: 2006/0030511 A1.
Makins Holland et al. discloses fragrance release composition and personal care articles comprising a complexed perfume, see abstract.
Applicant’s claims are deemed to be directly anticipated over Examples 2-3. Example 3 teaches a fragrance composition which comprises in part: 5 wt.% methylated beta-cyclodextrin, 10 wt.% ethanol, 81.14 wt.% water, 0.665 wt.% fragrance 1, 0.335 wt.% fragrance 2, and 0.1 wt.% tetrasodium EDTA.
Claim(s) 1, 4-5, 7-9, 12-15, 18-21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020075892 (A).
Applicant’s claims 1, 4-5, 7, 9, 12-15, 18-21 and 23 are deemed to be directly anticipated over JP 2020075892 (A)’s Example 8 which teaches a spray for preventing axillary odour containing Hydroxypropyl-B-cyclodextrin 1.0 wt.%, EDTA-2Na (0.001 wt.%), purified water 12.379 wt.%, butylene glycol 1.5 wt.%, tea dry distillation liquid ethanol solution 1.0 wt.% and 0.01wt.% of citric acid (a second chelant).
Likewise, Applicant’s claims 1, 4-5, 7-9, 12-15, 19-21 and 23 are deemed to be directly anticipated over JP 2020075892 (A)’s Example 10 which teaches a deodorant spray for shoes containing Hydroxypropyl-ß-cyclodextrin 3.0 wt.%, EDTA-2Na (0.01 wt.%), perfume 0.05wt.%, purified water 15.4 wt.%, ethanol 4.0 wt.%.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
