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 .
Claim Status
Claims 1-12 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-3 and 7-9) in the reply filed 6/4/2026 is acknowledged. Applicant’s species election without traverse of i) 8-mercaptomenthone (component A) and ii) citronellol (component B) in the reply filed 6/4/2026 is acknowledged.
Claims 4-6 and 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/4/2026.
Claims 2-3 and 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/4/2026.
Claims 1 and 7 are under consideration to the extent of the elected species, e.g. the Component A is 8-mercaptomenthone and the Component B is citronellol.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Finke et al. (US Patent 8,852,565 B2, published 9/24/2009, cited in IDS filed 7/11/2024).
Finke teaches an odor-reducing composition comprising a single alcohol or mixture of two or more alcohols of formula (I). The odor-reducing composition was designed for use towards various unpleasant odors, including fecal or urine odors from animals, in particular pets (par. [0040]). Finke teaches that the composition may include other ingredients in the composition in addition to the one or more alcohols of formula (I). Finke provides examples of odorous substances that can be included in the invention to provide more preferable scents to the composition, including 8-mercaptomenthan-3-one (aka 8-mercaptomenthone) (cf. claim 1 component A). Finke continues to teach that an additional further odorous substance may also be included (par. [0081]). One such ingredient included in the potential options includes citronellol (par. 0082]) (cf. claim 1 component B). Finke teaches that this overall composition comprising the alcohol(s) of formula (I) and the included ingredients that further comprise the composition may be used towards pet odors to deodorize feces and urine scents (cf. claim 7).
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference... has no place in... a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
The only difference between Finke and the instant claims is that Finke does not teach the specific combination of components as claimed in a single embodiment, or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Finke, but ‘such ‘picking and choosing within several variable does not necessarily give rise to anticipation. Where, as here, Finke does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP 2141(1). Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within Finke's disclosure, to arrive at a composition such as that being sought.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant application to produce a deodorant fragrance composition for feces and urine odors from pets comprising a single alcohol or mixture of two or more alcohols of formula (I) as well as other ingredients, including odorous substances that provide preferable scents, including 8-mercaptomenthone and citronellolas taught by Finke. One of ordinary skill in the art would have been motivated to include odorous substances that provide preferable scents with the single alcohol or mixture of two or more alcohols of formula (I) in order to provide a deodorant fragrance composition for deodorizing pet excretion scents. One would have a reasonable expectation of success in applying these ingredients as deodorizing components in a pet product as Finke teaches them as being relevant to that specific application. Combining them into a single embodiment such as that in the instant claims would be expected to lead to a successful deodorizer, as both ingredients are known to be odorous ingredients that can be applied in a pet product according to Finke. A pet product comprising the alcohols of formula (I) and further including other ingredients including 8-mercaptomenthone and citronellol as odorous substances as taught by Finke renders the instant claims prima facie obvious.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the reference.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ishihara et al. (US20050245407 A1, published 11/3/2005, Ishihara et al teaches a fragrance composition that comprises ingredients including 8-mercaptomenthone and citronellol.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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