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 18/719325 application originally filed June 13, 2024.
Amended claims 1-17, filed June 13, 2024, are pending and have been fully considered.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,667,869. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and U.S. Patent Number ‘869 overlap in the claimed method of release from a precursor compound with the selection of claimed Formula(s) for an aldehyde, formate ester and alcohol. Applicant is reminded that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
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) 1-17 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 Womack et al. (WO 2019/243501 A1) hereinafter “Womack” hereinafter cited under US 2021/0115354 “Womack”.
Regarding Claims 1, 2, 9-12 and 15-17
Womack discloses in paragraph 0001, compounds of formula (I) as properfume compounds. In particular, the present invention relates to a method to release a compound being a ketone or aldehyde of formula (II), a formate ester of formula (III) and/or an alcohol of formula (IV), by exposing the compound of formula (I) to an environment wherein it is oxidized. Moreover, the present invention relates to a perfuming composition and a perfume consumer product comprising at least one compound of formula (I).
Womack discloses in paragraph 0007, a) a ketone or aldehyde of formula:
PNG
media_image1.png
242
790
media_image1.png
Greyscale
wherein n represent an integer between 0 and 5. Womack discloses in paragraph 0008, R1, simultaneously or independently, represents at least one substituent of the aromatic ring and are a hydroxyl group, a C1-6 alkyl group, a C1-6 alkoxy group or a RCOO, a ROCO group wherein R is a hydrogen atom or a C1-4 alkyl group; or two adjacent R1, when taken together, represent a —O—(CH2)m—O— wherein m is 1 or 2 or form a C5-10 saturated or unsaturated ring optionally substituted by one or more than one hydroxyl group, one or more than one C1-3 alkyl group and/or one or more than one C1-3 alkoxy group. Womack discloses in paragraph 0009, R2 represents a hydrogen atom, a C1-6 alkyl group or a C6-10 aromatic group optionally substituted by a hydroxyl group, a C1-3 alkyl group, a C1-3 alkoxy group, a RCOO or a ROCO group wherein R is, independently from each other, a hydrogen atom or a C1-4 alkyl group.
Womack discloses in paragraph 0010, b) a formate ester of formula
PNG
media_image2.png
161
826
media_image2.png
Greyscale
wherein R3, R4 and R5 represent, simultaneously or independently, a hydrogen atom, or a C1-18 hydrocarbon group optionally comprising one to three oxygen atoms; or R3 and R4, represent, when taken together, a C3-18 hydrocarbon group optionally comprising one to three oxygen atoms.
Womack discloses in paragraph 0011, c) an alcohol of formula
PNG
media_image3.png
161
826
media_image3.png
Greyscale
wherein R3, R4 and R5 have the same meaning as defined above; wherein at least one of the compounds of formula (II), (III) or (IV) is an active compound.
Womack discloses in paragraphs 0012 and 0121-0123, wherein the precursor compound comprises a compound of formula (I):
PNG
media_image4.png
252
826
media_image4.png
Greyscale
wherein n, R1, R2, R3, R4 and R5 have the same meaning as defined above by exposing the precursor compound of formula (I) to an environment wherein the compound is oxidized; i.e. ambient conditions.
Womack discloses in paragraph 0132, at least one compound of formula (I) as defined above to confer, enhance, improve or modify the odor properties of a perfuming composition, the air surrounding the perfuming composition, a surface, or of a perfumed article, comprising adding to the composition or article or contacting or treating the surface with an effective amount of at least one compound of formula (I) as defined above. The term “surface”, as used herein may refer to a user's skin, hair, a textile, or hard surface, on to which, a perfume composition comprising or containing the at least one compound of formula (I) is applied.
Womack discloses in paragraph 0078, a method for intensifying or prolonging the diffusion effect, and/or perception of the characteristic fragrance of at least one active aldehyde or ketone formula (II), of at least one active formate ester of formula (III) and/or of at least one active alcohol of formula (IV) as defined above, on a surface, wherein the surface is treated with at least one compound of formula (I) as defined above, or with a composition or article containing at least one compound of formula (I), under conditions susceptible of allowing the release of at least one active aldehyde or ketone formula (II), of at least one active formate ester of formula (III) and/or of at least one active alcohol of formula (IV) over time.
Womack further discloses in paragraphs 0079-0082, a perfuming composition comprising: i) at least one compound of formula (I), as defined above; ii) at least one ingredient selected from the group consisting of a perfumery carrier and a perfumery base; and iii) optionally at least one perfumery adjuvant.
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 3-5
Womack discloses in paragraph 0009, R2 represents a hydrogen atom, a C1-6 alkyl group or a C6-10 aromatic group optionally substituted by a hydroxyl group, a C1-3 alkyl group, a C1-3 alkoxy group, a RCOO or a ROCO group wherein R is, independently from each other, a hydrogen atom or a C1-4 alkyl group.
Regarding Claim 6
Womack discloses in paragraph 0008, R1, simultaneously or independently, represents at least one substituent of the aromatic ring and are a hydroxyl group, a C1-6 alkyl group, a C1-6 alkoxy group or a RCOO, a ROCO group wherein R is a hydrogen atom or a C1-4 alkyl group; or two adjacent R1, when taken together, represent a —O—(CH2)m—O— wherein m is 1 or 2 or form a C5-10 saturated or unsaturated ring optionally substituted by one or more than one hydroxyl group, one or more than one C1-3 alkyl group and/or one or more than one C1-3 alkoxy group.
Regarding Claim 7
Womack discloses in paragraph 0030, according to any embodiments, the aldehyde or ketone of formula (II), the formate ester of formula (III) and/or the active alcohol of formula (IV) are perfuming ingredients. According to any embodiment at least one of the compounds of formula (II), (III) or (IV) is a perfuming ingredient. Preferably, at least two of the compounds of formula (II), (III) or (IV) are perfuming ingredients.
Regarding Claim 8
Womack discloses in paragraph 0042, according to any embodiments, the ketone or aldehyde of formula (II), the formate ester of formula (III) and the alcohol of formula (IV) are released from the precursor compound of formula (I) via oxidation of the precursor compound of formula (I) under ambient conditions. Even more, the precursor compound of formula (I) is oxidized under ambient conditions and in absence of any catalyst. For the sake of clarity, by the expression “ambient conditions”, or the similar, it is meant the normal meaning understood by a person skilled in the art, i.e. the oxidation occurs at room temperature, under air, sunlight and atmospheric pressure. In other words, the environment wherein the compound is oxidized is air.
Regarding Claim 13
Womack discloses in paragraph 0115, a perfume, a fabric care product, a body-care product, a cosmetic preparation, a skin-care product, an air care product or a home care product.
Regarding Claim 14
Womack discloses in paragraph 0116, non-limiting examples of suitable perfumed consumer products include a perfume, such as a fine perfume, a splash or eau de parfum, a cologne or a shave or after-shave lotion; a fabric care product, such as a liquid or solid detergent, a fabric softener, a liquid or solid scent booster, a fabric refresher, an ironing water, a paper, a bleach, a carpet cleaner, a curtain care product; a body-care product, such as a hair care product (e.g. a shampoo, a coloring preparation or a hair spray, a color-care product, a hair shaping product, a dental care product), a disinfectant, an intimate care product; a cosmetic preparation (e.g. a skin cream or lotion, a vanishing cream or a deodorant or antiperspirant (e.g. a spray or roll on), a hair remover, a tanning or sun or after sun product, a nail product, a skin cleansing, a makeup); or a skin-care product (e.g. a soap, a shower or bath mousse, oil or gel, or a hygiene product or a foot/hand care products); an air care product, such as an air freshener or a “ready to use” powdered air freshener which can be used in the home space (rooms, refrigerators, cupboards, shoes or car) and/or in a public space (halls, hotels, malls, etc.); or a home care product, such as a mold remover, a furnisher care product, a wipe, a dish detergent or a hard-surface (e.g. a floor, bath, sanitary or a window-cleaning) detergent; a leather care product; a car care product, such as a polish, a wax or a plastic cleaner.
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Latosha Hines/Primary Examiner, Art Unit 1771
