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
Claims 1-13 and 16-22 are currently pending and a preliminary amendment to the claims filed on 04/25/2024 is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The two information disclosure statements (IDS) submitted on 04/25/2024 and 06/05/2026 were filed before the mailing date of the instant first action on the merits. The submissions thereof are in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statements have been considered by the examiner, and signed and initialed copies are enclosed herewith.
Claim Objections
Claims 1, 10 and 22 are objected to a minor informalities.
Claim 1 recites “a pentylene glycol polycitronellol, a mixture thereof” in line 4, but comma (,) is missing between a pentylene glycol and polycitronellol.
Each of claims 10 and 22 skips conjunction word “and” between “polyglyceryl-3-cocoate” and “polyglyceryl-6-ricinoleate”.
Further, it appears that each of claims 10 and 22 recites “polyglyceryl caprate” twice in lines 6-7 (claim 10) and lines 8-9 (instant claim 22).
Appropriate correction is requested.
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 4, 10 and 22 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 broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “plant fragrances” and “fruity esters”, and the claim also recites nutmeg extract … fenchone for plant fragrances, and ethyl 2-methyl butyrate …verdox for fruity esters, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Each of claims 10 and 22 recites ““a mixture of: polyglyceryl-4 laurate/sebacate; polyglyceryl-6 caprylate/caprate; and water, polyglyceryl-4 laurate/sebacate, polyglyceryl-4 caprylate/caprate; and water, or polyglyceryl-4 caprate. Polyglyceryl-6 Caprylate, Polyglyceryl-4 Caprate, Polyglyceryl-3 Cocoate, Polyglyceryl-6 Ricinoleate”. However, it is not clear how the claimed mixtures consists of. Clarification is requested.
Further those claims have period (.) in the middle (i.e., polyglyceryl-4-caprate.). However, the claims must end with a single period, and the claimed period breaks the claim into multiple sentences, making it difficult to ascertain exactly where the claim’s scope begins and ends. Further, last recitation of “polyglyceryl-6-ricinoleate” in claim 10 does not end with “period”. Thus claims 10 and 22 are indefinite.
Appropriate correction is requested.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-9, 11-13, 16-18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Tchakalova et al. (WO2014/090959A1, IDS of 04/25/2024, citation is obtained from its corresponding US2015/0322374A1).
Applicant claims the below claim 1 filed on 04/25/2024:
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Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a cosmetic microemulsion research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from cosmetic, medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
Tchakalova teaches ethanol-free perfuming composition in the form of a transparent, clear microemulsion comprising 0.5-50% fragrance oil that overlaps the instant range of about 0.5 to about 15% or about 5 to about 12%, 1-36% solvent that overlaps the instant range of about 1 to about 15% or about 3 to about 10%, 1-35% non-ionic surfactant that overlaps the instant range of about 10 to about 25% or about 14 to about 20%, and water (e.g., abstract, [0041]-[0043], [0047]-[0054]) wherein the solvent includes alkanediol with carbon number 5-10 which reads on the claimed pentylene glycol (=pentanediol) (e.g., [0043]). Although the prior art remains silent about polycitronellol as the modulator, it would be obvious variation because it would have had the same modulator activity as the pentylene glycol (instant claims 1-3, 5-6 and 12-13, and instant claim 22, in part); the composition further comprise benzyl salicylate (e.g., [0077])(instant claim 4); the composition contains polyethylene glycol-free surfactant including polyglyceryl fatty acid ester such as polyglyceryl-5 oleate (e.g., Table 6) (instant claims 7-9); “the microemulsion is formed by the surfactant encasing the fragrance” would be implicit because the prior art teaches microemulsion containing overlapping ranges of fragrance oil and non-ionic surfactant (instant claim 11); the composition further comprises 1,3-butylene glycol, 1,3-propanediol (e.g., [0043]) in an amount of 1-25% (e.g., [0042]) that reads on the claimed diol and/or solvent and its amount overlaps the instant range of about 5 to about 20% or about 8 to about 15% (instant claims 16-18); the microemulsion composition is used for perfume (e.g., abstract and claim 1 of prior art) (instant claim 20); and although the prior art does not expressly teach a kit, the claimed kit would be implicit because kit contains a composition containing fragrance, surfactant, pentanediol, water, and free of ethanol, and a container containing the composition (instant claim 21).
In light of the foregoing, instant claims 1-9, 11-13, 16-18, and 20-21 are obvious over Tchakalova.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Tchakalova et al. (WO2014/090959A1, IDS of 04/25/2024, citation is obtained from its corresponding US2015/0322374A1) in view of Shick et al. (US2008/0003247A1).
However, Tchakalova does not expressly teach 1,2-hexanediol as the transparent component of instant claim 19. The deficiency is cured by Shick.
Shick discloses transparent ethanol-free aqueous perfume composition in the form of microemulsion containing one or more fragrance, solvent, aqueous medium, surfactant and the solvent is vicinal diol such as 1,2-hexanediol (e.g., abstract and claim 1 of prior art), and the 1,2-hexanediol provides solubilizing powder to substantially reduce the quantity of surfactants to achieve a stable composition and this solvent enables translucent compositions to be obtained, and it does not denature the fragrance substance, and it is neither sticky, nor irritant, nor sensitive to air oxidation (e.g., [0011]) (instant claim 19).
It would have been obvious to modify the teachings of Tchakalova with 1,2-hexanediol of Shick in order to achieve a transparent stable composition without denaturation of fragrance, as taught by Shick.
Claims 10 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tchakalova et al. (WO2014/090959A1, IDS of 04/25/2024, citation is obtained from its corresponding US2015/0322374A1) in view of Ultrus Prospector (obtained from website ([https://www.ulprospector.com/en/eu/PersonalCare/Detail/1481/367271/TEGO-Solve-61-MB, March 2014, pages 1-2]) - TEGO® Solve 61 MB by Evonik – Personal Care - Personal Care & Cosmetics)
However, Tchakalova does not expressly teach the surfactant mixture of instant claims 10 and 22. The deficiencies are cured by Ultrus Prospector.
Ultrus Prospector discloses Tego® Solve 61MB consists of polyglyceryl-6 caprylate, polyglyceryl-3 cocoate, polyglyceryl-4 caprate and polyglyceryl-6 ricinoleate which read on the claimed mixture, and such mixture is a PEG-free solubilizer for natural oils and lipophilic emollients like hydrophobic perfume oils, etc. (e.g., page 1).
It would have been obvious to modify the teachings of Tchakalova with specific mixture of Tego solve 61 MB in order to enhance solubilizing power as taught by Ultrus Prospector (instant claims 10 and 22).
In light of the foregoing, instant claims 10 and 22 are obvious over Tchakalova in view of Ultrus Prospector.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined 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 combined references, especially in the absence of evidence to the contrary.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 and 16-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-12, 14,17, 19, 20, and 22 of copending application No. 19/480297.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claims set require fragrance component, surfactant, modulator, water, transparency component with less than 3% ethanol. The difference between them is that copending ‘297 requires a modulator comprising glycol while the instant requires species of glycol such as penthylene glycol, and however, such definition would have yielded no more than the predictable results of modulator function.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending ‘297 subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613
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