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 .
Applicant's election with traverse of Group I, claims 24-39, in the reply filed on 06/12/2026 is acknowledged. The traversal is on the ground(s) that the newly amended limitation of 50-95 wt% ethanol is not taught by the references. Applicants arguments with respect to the previously cited reference are moot at this time, as a new rejection has been made in view of Applicants’ amendment. Applicants also assert that the traversal is on the grounds that it would not place an undue burden on the Examiner.
The combination of Feferman and Eggers, and the combination of Feferman, Favrot, Handler, and Eggers, as discussed below, appear to make obvious the shared technical feature of the composition of claim 24, and accordingly, the shared technical feature is not a special technical feature and unity is broken.
Claims 40-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/12/2026.
Claim Status
Claims 24, 25, 27, and 29-43, are pending.
Claims 40-43 are withdrawn.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is less than 50 words in length. Further, the abstract starts with “Various aspects relate to a composition,” which is a phrase that can be implied to mean anything relating to a composition, and therefore does not sufficiently describe the invention. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 24 is objected to because of the following informalities: methyl anthranilate and eugenol are repeated twice. Claim 24 is also missing a semicolon followed by “and” in the second to last line of the claim (“; and”). Appropriate correction is required.
Claim 27 is objected to because of the following informalities: “carbon-emissions alcohol distillate” should read “carbon-emissions-derived ethanol distillate” in order to be consistent with the terminology of claim 24.
Claim 27 is also objected to because of the following informalities: “about 70% to about 95%” should read “about 70 wt.% to about 95 wt.%” in order to be consistent with claim 24. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) or pre-AIA 2nd ¶
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 24, 25, 27, and 29-39, 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 24 recites “wherein the ethanol distillate is a sufficiently distilled distillate,” and it is unclear what is required for the distillate to be considered “sufficiently distilled.” For purposes of examination, the claim is interpreted as “wherein the carbon-emissions-derived ethanol distillate comprises ethyl alcohol…”.
Claim 24 recites “less perceivable ethanol odor,” and it is unclear how, and under what conditions, the ethanol odor is determined, how it is determined to be less, and whether it is evaluated after being applied, in a bottle, etc.
Further, a Markush grouping is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group “comprising” or “consisting essentially of” the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h)(I). Here, claims 24 and 36 recite “selected from the group comprising,” which is indefinite because it is unclear what alternatives are intended to be encompassed by the claim. For purposes of examination, the claims will be interpreted as “selected from the group consisting of.”
Claims 25, 27, 29-39, are rejected for the same reasons for depending upon, or containing all limitations of, rejected claim 24.
Claim 25 recites “volatile and non-volatile by-products,” and it is unclear under what conditions the byproducts are to be volatile or non-volatile, where volatility is highly dependent upon temperature and pressure. For purposes of examination, the terms are given the broadest reasonable interpretation of wherein non-volatile means compounds having low volatility under ambient conditions (i.e., substances that do not readily evaporate into gas at room temperature and standard pressure) and volatile as compounds having high volatility under ambient conditions and standard pressure.
Claim 29 recites wherein the carbon-emissions comprise H2, and the limitation is unclear where H2 contains no carbon, and therefore cannot be a carbon-emission.
Claims 30 and 31 recite a percentage of the fragrance component and it is unclear if these percentages are a wt%, vol%, mass%, mol%, etc. For purposes of examination, the claim is interpreted as a wt%.
Claim 35 recites “wherein the composition is free of a vinic alcohol,” and it is unclear what exactly the claim is intending to exclude, where vinic alcohol appears to be a product by process limitation of ethanol, and claim 24 recites carbon-emissions-derived ethanol distillate which also appears to be a product by process limitation of ethanol, both being fermentation products that appear to produce the same chemical (ethanol). Therefore, it is unclear how claim 24 can require ethanol but also exclude the same chemical compound of ethanol it in claim 35.
Claim 38 recites “wherein the perception of an oxidative marker is diminished,” and it is unclear how, and under what conditions, the perception of an oxidative marker is determined, how it is evaluated, how it is determined to be less, and whether it is evaluated after being applied, in a bottle, etc.
Claim 39 is rejected for the same reasons for depending upon rejected claim 38.
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 24, 25, 27, and 29-39, are rejected under 35 U.S.C. 103 as being unpatentable over Feferman et al (US 20050276775 A1, hereinafter “Feferman”, cited on IDS dated 05/16/2024), in view of Eggers et al (US 20070298995 A1, hereinafter “Eggers”).
Feferman teaches cosmetic compositions, perfumes, and personal care compositions comprising vinic alcohol (ethylic alcohol) in concentrations from 0.1% to 99 and fragrances of natural or synthetic ingredients or essential oils from plants at 0.01 to 30 wt% of the composition (abs, ¶¶ 20, 21, ex I, II). The vinic alcohol is characterized as being a product from the grape fermentation followed by a purification by distillation (abs). The use of vinic alcohol makes it possible to overcome the disadvantages associated with conventionally produced ethyl alcohol, and thus produces cosmetic compositions which do not have the pungent odor and irritation associated with the use of conventionally produced ethanol (¶¶ 7-9, 18). In embodiments, vinic alcohol is included at 40-90 wt% (ex I). Vinic alcohol may be further combined with the ethylic alcohol resulting from other sources, such as fermentation of other substrates or chemical synthesis (¶ 20). The compositions may be in the form of perfumes, creamy perfumes, bath preparations, environmental fragrance, extracts, etc., manufactured in liquid, gelled, viscous, or solid form (¶ 5).
Feferman does not teach the specific fragrance components instantly claimed.
Eggers teaches perfuming compositions comprising from 45-99 wt% ethanol, and one or more fragrances from 0.1-35 wt% (abs, ¶¶ 16, 61). Suitable fragrances include benzaldehyde, 3-hexanol, dihydromyrcenol, linalool, benzyl acetate, eugenol, etc. (¶¶ 78, 84, 96, 135, 141, 154, claim 11). As evidenced by the instant specification, benzaldehyde has a vapor pressure of 0.974 mmHg at 25 deg C (i.e., 0.974 Torr at 25 deg C) and has a fruit olfactive character (see table 3 of the instant specification). The compositions may be in a form selected from an extract, eau de toilette, deodorant formulations, etc. (¶ 101).
Regarding the limitation of carbon-emissions-derived ethanol distillate of claim 24, the limitation appears to be directed to a product by process of obtaining ethanol, which does not appear to be structurally distinct from ethanol derived from other sources, where ethanol is ethanol regardless of its derivation. Thus, where Feferman teaches vinic alcohol, which appears to be a product by process of obtaining an ethanol distillate, and where the ethanol distillate is taught to have less ethanol odor compared to conventionally used ethanol, it appears that the limitation is met. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims. See MPEP 2113(I) and (II). The examiner notes that purely arguendo, even if the ethanol distillate of Feferman further comprises additional impurities or byproducts, the instant claims use the open “comprising” language, which does not expressly exclude additional unrecited elements.
Regarding the amount of ethanol distillate, it would have been obvious to formulate the composition made obvious above with ethanol from 0.1-99 wt%, such as at 40-90 wt% from the working examples, as taught by Feferman.
Regarding the fragrance component, it would have been obvious to select from known fragrance components known to be suitable for perfume compositions comprising ethanol, such as benzaldehyde, as taught by Eggers.
Regarding the less perceivable ethanol odor, where the composition made obvious above is taught to have less perceivable ethanol odor, and appears to comprise the same ethanol as instantly claimed, though by a different product by process as discussed above, the functional limitation appears to be met.
Regarding the greater stability, while Feferman may not specifically teach the ethanol distillate has greater stability, where the composition made obvious above appears to comprise substantially the same components, it would be reasonably expected that the stability would be the same. A rejection can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. See MPEP 2112(I), (II), and (III).
Regarding claim 25, where Feferman teaches the ethanol distillate further comprises byproducts carried over during distillation, and teaches these byproducts are desirable to achieve a particular odor profile, it would have been well within the relative skills of the skilled artisan to have routinely adjusted the distillation process, temperature, etc., in order to achieve desired ethanol distillate with desired number and type of byproducts for desired odor profile of the ethanol distillate. Accordingly, because fermentation produces a mixture of compounds having a range of volatilities, depending on the distillation conditions, temperature, etc., it would have been reasonably expected that the resulting ethanol distillate would comprise byproducts having varying volatilities, including byproducts that are volatile and non-volatile under ambient conditions. The examiner notes that even though some byproducts are non-volatile under ambient conditions, the elevated temperature of the distillation process would be reasonably expected to carry over these byproducts into the distillate, depending on the temperatures used, processing conditions, etc.
Regarding claim 27, it would have been obvious to formulate the composition made obvious above with the ethanol distillate in known amounts suitable for ethanol in perfume compositions, such as from 40-90%, as taught by Feferman, depending on the desired formulation properties, form, uses, etc.
Regarding claim 29, the carbon emissions from which the ethanol distillate is derived appears to be tied to the product by process of formulating ethanol, as discussed above, and where the ethanol of Feferman appears to be the same chemical as the ethanol instantly claimed, the product by process limitation appears to be met. See MPEP 2113(I) and (II).
Regarding claims 30 and 31, it would have been obvious to formulate the composition made obvious above with a fragrance component ranging from 0.01-30 wt%, as taught by Feferman. Further, it would have been well within the relative skills of the skilled artisan to have routinely optimized the amount of fragrance in order to achieve desired fragrance for desired use, etc. 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. 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. See MPEP 2144.05(II)(A).
Regarding claim 32, where benzaldehyde is made obvious above, and is evidenced by the instant specification as having a fruit olfactory character, the limitation is met.
Regarding claims 33 and 34, where benzaldehyde is made obvious above, and is evidenced by the instant specification as having a vapor pressure of 0.974 mmHg at 25 deg C (i.e., 0.974 Torr at 25 deg C), the limitations are met.
Regarding claim 35, the limitation is unclear for the same reasons discussed above. Where the composition made obvious above comprises ethanol, which appears to be the same chemical as instantly claimed, though by a different product by process, it appears the limitation is met.
Regarding claims 36 and 37, it would have been obvious to formulate the composition made obvious above in the form of a perfume, creamy perfume, bath preparation, environmental fragrance, extract, etc., manufactured in liquid, gelled, viscous, or solid form, as motivated by Feferman.
Regarding claims 38 and 39, the limitation is a functional limitation, and where the ethanol made obvious above appears to be the same as the ethanol instantly claimed, as discussed above, it would be expected that the resulting physical properties, including the perception of oxidative markers would be the same. A rejection can be made where the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. See MPEP 2112(I), (II), and (III). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. See MPEP 2112.01(I). Further, where the composition made obvious above appears to be physically the same, it must have the same properties. See MPEP 2112.01(I) and (II).
Claims 24, 25, 27, and 29-39, are rejected under 35 U.S.C. 103 as being unpatentable over Feferman et al (US 20050276775 A1, hereinafter “Feferman”, cited on IDS dated 05/16/2024), in view of Favrot et al (FR 3075819 A1, hereinafter “Favrot”, cited on IDS dated 05/16/2024), Handler et al (Ind Eng Chem Res, 2015, vol 55, issue 12, pp. 3253-3261, hereinafter “Handler”), and Eggers et al (US 20070298995 A1, hereinafter “Eggers”).
Feferman and Eggers are discussed above, and purely arguendo, if somehow the carbon emissions derived ethanol distillate is not simply a product by process limitation, and the ethanol is different, the following applies.
Favrot teaches it was known to prepare ethanol from carbon monoxide, carbon dioxide and hydrogen originating from industrial and agricultural waste by fermentation in the presence of acetogenic bacteria, in particular Acetobacterium woodi (¶¶ 1-2, pg 3 2nd ¶). The reference teaches that ethanol is of great industrial interest and describes its use as a solvent in perfumery (pg 3 2nd ¶). The resulting ethanol product can be subject to purification from the culture medium (pg 16 2nd ¶). Ethanol produced by alcoholic fermentation of sugar plants using yeasts is a major generator of CO2, a harmful gas for the environment (pg 3 2nd ¶). The carbon emissions are CO, CO2, H2, and mixtures thereof (¶ 2, pg 3 2nd and last ¶, pg 8 3rd ¶).
Favrot does not specifically teach the carbon-emissions derived ethanol is a distillate.
Handler teaches it was known to distill the carbon-emissions-derived ethanol produced via fermentation in the presence of microorganisms for product separation (pg 3256 1st col ¶¶ 2-4). Production of ethanol from carbon emissions recycles waste into new, useable products, and reduces the production of emissions compared to conventional techniques (abs, pg 3254 1st col 1st ¶). Trace amounts of other coproducts, besides ethanol, are produced in the fermentation process (pg 3256 1st col 3rd ¶).
Handler does not teach the fragrances instantly claimed.
Eggers is discussed above.
Regarding claim 24, it would have been obvious to modify Feferman by further including a carbon-emissions derived ethanol, which were known from Favrot to be suitable for producing ethanol useful for perfumes, in order to produce a perfume having less environmental impact. Alternatively, it would have been obvious to substitute the carbon emissions derived ethanol for the vinic alcohol, where both were known ethanol fermentation products suitable for perfumes, such as in order to produce a composition having less environmental impact.
Regarding the distillate, where Favrot teaches the ethanol can be purified, and where Handler teaches carbon-emissions-derived ethanol was known to be distilled for product separation, it would have been obvious to formulate the carbon-emissions derived ethanol as a distillate, in order to have a more purified and separate ethanol product.
Regarding the amount of ethanol, it would have been obvious to formulate the composition made obvious above with ethanol from 0.1-99 wt%, such as at 40-90 wt% from the working examples, as taught by Feferman.
Regarding the fragrance component, it would have been obvious to select from known fragrance components known to be suitable for perfume compositions comprising ethanol, such as benzaldehyde, as taught by Eggers.
Regarding the greater stability and less perceivable ethanol odor, the limitation is a functional limitation, and where the ethanol distillate made obvious above is carbon-emissions derived, and appears to be produced by substantially the same product by process of the instant specification, it appears that the stability and odor properties are inherent to the ethanol distillate itself. A rejection can be made where the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. See MPEP 2112(I), (II), and (III). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. See MPEP 2112.01(I). Further, where the composition made obvious above appears to be physically the same, it must have the same properties. See MPEP 2112.01(I) and (II).
Regarding claim 25, where the ethanol distillate made obvious above is carbon-emissions derived, and appears to be produced by substantially the same product by process of the instant specification, and where Handler teaches byproducts are produced, it would be reasonably expected that the ethanol distillate made obvious above would further comprise the same byproducts, including volatile and non-volatile byproducts as instantly claimed. See MPEP 2112(I), (II), and (III).
Regarding claim 27, it would have been obvious to formulate the composition made obvious above with the ethanol distillate in known amounts suitable for ethanol in perfume compositions, such as from 40-90%, as taught by Feferman, depending on the desired formulation properties, form, uses, etc.
Regarding claim 29, the carbon emissions comprise CO, CO2, and H2, as taught by Favrot.
Regarding claims 30 and 31, it would have been obvious to formulate the composition made obvious above with a fragrance component ranging from 0.01-30 wt%, as taught by Feferman. Further, it would have been well within the relative skills of the skilled artisan to have routinely optimized the amount of fragrance in order to achieve desired fragrance for desired use, etc. 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. 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. See MPEP 2144.05(II)(A).
Regarding claim 32, where benzaldehyde is made obvious above, and is evidenced by the instant specification as having a fruit olfactory character, the limitation is met.
Regarding claims 33 and 34, where benzaldehyde is made obvious above, and is evidenced by the instant specification as having a vapor pressure of 0.974 mmHg at 25 deg C (i.e., 0.974 Torr at 25 deg C), the limitations are met.
Regarding claim 35, it would have been obvious to substitute the carbon emissions derived ethanol distillate for the vinic alcohol of Feferman, where both were known ethanol fermentation products suitable for perfumes, such as in order to produce a composition having less environmental impact, as discussed above.
Regarding claims 36 and 37, it would have been obvious to formulate the composition made obvious above in the form of a perfume, creamy perfume, bath preparation, environmental fragrance, extract, etc., manufactured in liquid, gelled, viscous, or solid form, as motivated by Feferman.
Regarding claims 38 and 39, as discussed above, the limitation is a functional limitation, and where the ethanol distillate made obvious above is carbon-emissions derived, and appears to be produced by substantially the same product by process of the instant specification, it appears that the physical properties, including the perception of the oxidative markers instantly claimed, are inherent to the ethanol distillate itself. A rejection can be made where the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. See MPEP 2112(I), (II), and (III). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. See MPEP 2112.01(I). Further, where the composition made obvious above appears to be physically the same, it must have the same properties. See MPEP 2112.01(I) and (II).
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 24, 25, 27, and 29-39, are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/700,645, hereinafter ‘645 (reference application), in view of Favrot et al (FR 3075819 A1, hereinafter “Favrot”), Handler et al (Ind Eng Chem Res, 2015, vol 55, issue 12, pp. 3253-3261, hereinafter “Handler”), Feferman et al (US 20050276775 A1, hereinafter “Feferman”), and Eggers et al (US 20070298995 A1, hereinafter “Eggers”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of '645 disclose a fragrance composition comprising a solvent, a fragrance component, etc., wherein the solvent is ethanol and the fragrance component is bergamot oil, lemon oil, benzaldehyde, benzyl acetate, etc. The fragrance ranging from about 0.01 to about 40 wt%. The solvent comprises about 20 to about 95 wt% of the composition.
The claims of '645 do not disclose the byproducts instantly claimed, nor the perfume forms of claim 36.
Favrot, Handler, Feferman, and Eggers, are discussed above.
Where the composition comprises ethanol, it appears that the product by process limitation of a carbon emissions derived ethanol is met, where the resulting product of ethanol appears to be chemically the same. Even if not, it would have been obvious to modify the composition of '645 by substituting carbon-emissions-derived ethanol distillate for the claimed ethanol, for the same reasons discussed above by Favrot and Handler.
Further, it appears that the byproducts, the stability, and the odor is inherent to the carbon-emissions derived ethanol distillate, for the same reasons discussed above.
It would have been obvious to select from benzaldehyde, etc., as the fragrance, which has a vapor pressure falling within the claimed range, for the same reasons discussed above.
It would have been obvious to formulate the fragrance composition in known forms suitable for fragrance compositions, such as creamy perfumes, bath preparations, environmental fragrances, etc., as taught by Feferman. Additionally and alternatively, it would have been obvious to formulate the fragrance composition in known forms suitable for fragrance compositions, such as an eau de toilette, etc., as taught by Eggers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The following are also rejected for the same reasons for comprising a composition comprising ethanol and a fragrance:
Copending Application no. 18/695,700, while disclosing a fragrance formulation comprising ethanol in an amount of less than about 78 wt%, and from about 0.04-40 wt% of a fragrance composition, the claims do not disclose the byproducts instantly claimed, the fragrance component as instantly claimed, nor the perfume forms of claim 36. It would have been obvious to modify the claims of ‘700 for the same reasons discussed above. Further, it would have been obvious to select from known fragrances suitable for perfume formulations, such as benzaldehyde, as taught by Eggers.
Copending Application no. 18/696,049, while disclosing a fragrance formulation comprising ethanol and from about 0.04-40 wt% of a fragrance composition, the claims do not disclose the byproducts instantly claimed, the amount of ethanol, the fragrance component as instantly claimed, nor the perfume forms of claim 36. It would have been obvious to modify the claims of ‘049 for the same reasons discussed above. Further, it would have been obvious to include ethanol in known amounts, such as those taught by Feferman and Eggers above.
Copending Application no. 18/568,722, while disclosing a fragrance composition comprising a fragrance component and a solvent, wherein the fragrance component is in the range from about 2-20 wt%, and wherein the solvent includes ethanol and is included in an amount of about 40-90 wt%, the claims do not disclose the byproducts instantly claimed, the fragrance component as instantly claimed, nor the perfume forms of claim 36. It would have been obvious to modify the claims of ‘722 for the same reasons discussed above.
Claims 24, 25, 27, and 29-39, are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10,336,966, hereinafter ‘966, in view of Favrot et al (FR 3075819 A1, hereinafter “Favrot”), Handler et al (Ind Eng Chem Res, 2015, vol 55, issue 12, pp. 3253-3261, hereinafter “Handler”), Feferman et al (US 20050276775 A1, hereinafter “Feferman”), and Eggers et al (US 20070298995 A1, hereinafter “Eggers”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘966 disclose a fragrance composition comprising a fragrance component in an amount from about 1 wt% to about 30 wt%, a solvent in an amount from about 55 wt% to about 75 wt%, wherein the solvent a branched or unbranched C1 to C10 alkyl, alkenyl or alkynyl group having at least one alcohol moiety. Fragrances include benzaldehyde, etc.
The claims of ‘966 do not disclose ethanol specifically, the byproducts instantly claimed, nor the perfume forms of claim 36.
Favrot, Handler, Feferman, and Eggers, are discussed above.
Where the composition comprises C1-C10 alkyl alcohols, it would have been obvious to select from ethanol. Further, where ethanol is made obvious it appears that the product by process limitation of a carbon emissions derived ethanol is met, where the resulting product of ethanol appears to be chemically the same. Even if not, it would have been obvious to modify the composition of '645 by substituting carbon-emissions-derived ethanol distillate for the claimed solvent (which includes ethanol), for the same reasons discussed above by Favrot and Handler.
Further, it appears that the byproducts, the stability, and the odor is inherent to the carbon-emissions derived ethanol distillate, for the same reasons discussed above.
It would have been obvious to select from benzaldehyde, etc., as the fragrance, which has a vapor pressure falling within the claimed range, for the same reasons discussed above.
It would have been obvious to formulate the fragrance composition in known forms suitable for fragrance compositions, such as creamy perfumes, bath preparations, environmental fragrances, etc., as taught by Feferman. Additionally and alternatively, it would have been obvious to formulate the fragrance composition in known forms suitable for fragrance compositions, such as an eau de toilette, etc., as taught by Eggers.
The following are also rejected for the same reasons for comprising a composition comprising ethanol and a fragrance:
U.S. Patent No. 9,102,898, while disclosing a perfume comprising ethanol and a fragrance, the claims do not disclose the byproducts instantly claimed, the fragrance component as instantly claimed nor their amount, nor the perfume forms of claim 36. It would have been obvious to modify the claims of ‘898 for the same reasons discussed above by Favrot and Handler; including known amounts of ethanol and fragrance suitable for perfume compositions as taught by Feferman or Eggers; using known fragrances suitable for perfume composition as taught by Eggers; and formulating the fragrance in known forms, such as an bath preparation, environmental fragrance, eau de toilette, etc., as taught by Feferman and Eggers.
Conclusion
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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