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
Applicant’s election without traverse of Group II, claims 8-15 in the reply filed on August 26, 2026 is acknowledged.
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.
The following claims are rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims in the table below of U.S. Patent No. 12,053,563.
Pending claims
Patent claims
8
8
9
9
10
10
11
12
13
13
14
14
15
15
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim requires that the carrier contains all three compounds wherein the pending claims only require one. Therefore, It is clear that all the elements of the application claim 8 are to be found in patent claim 8 (as the application claim 8 fully encompasses patent claim 8). The difference between the application claim 8 and the patent claim 8 lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 8 of the patent is in effect a “species” of the “generic” invention of the application claim 8. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 8 is anticipated by claim 8 of the patent, it is not patentably distinct from claim 8 of the patent.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 8-11 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Flachsmann et al (US 2010/0209378).
With regards to claim 8, Flachsmann teaches a fragrance composition for consumer products (abstract) that contains a plurality of fragrances (0082 example 7) and solvents that include cyclomethicone (0054), isopropyl myristate (0054), and 3-methoxy-3-methyl-1-butanol (0087 example 8). Flachsmann teaches the components to be combined and place into a container (0087) and for the compounds to be selected in order to increase the effectiveness over time (0004).
With regards to claim 9, Flachsmann teaches the fragrance to include essential oils (0049).
With regards to claim 10, Flachsmann teaches fragrance to be 75% in 25% solvent (0083) and then diluted with the carrier at a 75:25 ratio of carrier:fragrance ratio (0087) reading on 18.75% fragrance.
With regards to claim 11, Flachsmann teaches the amount of carrier to be 75% (0087).
With regards to claim 14, Flachsmann teaches the composition to be used in different containers such as glass bottles (0087) and for the composition to be used in aerosol, sprays, liquids, solid, gels, and powders (0042) all using different containers.
With regards to claim 15, Flachsmann is silent on the ability of the composition to minimize damage caused by each fragrance. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components in the claimed amounts are used, the claimed physical properties relating to the ability of the composition to minimize damage caused by the fragrance are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claims 8-11 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herd et al (US 2011/0095097).
With regards to claim 8, Herd teaches air freshener systems (abstract) that includes the use of cyclomethicone in combination with other solvents (abstract), such as 3-methoxy-3-methyl-1-butanol (0030), in order to enhance performance and maintain consistent fragrance (abstract). Herd teaches the fragrance to include several types of fragrances (0037) to be used in combination (0049).
With regards to claim 9, Herd teaches the fragrance to include oils (0005).
With regards to claim 10, Herd teaches the amount of fragrance to be 15% by weight (0045).
With regards to claim 11, Herd teaches the composition to contain 85% solvent (0045).
With regards to claim 14, Herd teaches the use of different containers depending on the use of the composition, such as a glass container (0035).
With regards to claim 15, Herd is silent on the ability of the composition to minimize damage caused by each fragrance. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components in the claimed amounts are used, the claimed physical properties relating to the ability of the composition to minimize damage caused by the fragrance are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claims 1-11 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yeung et al (WO 2012/088758).
With regards to claim 8, Yeung teaches a composition for air freshening or disinfecting (abstract) that contains fragrances (abstract) and solvents and co-solvents that includes isopropylmyristate (pages 3 and 14) and 3-methoxy-3-methyl-1-butanol (page 14). Yeung teaches the composition to contain a mixture of multiple fragrance compounds (page 11).
With regards to claim 9, Yeung teaches the fragrance to include essential oils (page 13).
With regards to claim 10, Yeung teaches the concentration of the fragrance to range from 5 vol% to 20 vol% (pages 26-30 examples 14-23).
With regards to claim 11, Yeung teaches the total amount of solvent to be from 95-80% (pages 26-30 examples 14-23).
With regards to claim 14, Yeung teaches the composition capable of use in either plastic or glass bottles with no limitation on the size or shape of the container (page 15).
With regards to claim 15, Yeung is silent on the ability of the composition to minimize damage caused by each fragrance. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components in the claimed amounts are used, the claimed physical properties relating to the ability of the composition to minimize damage caused by the fragrance are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
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.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Flachsmann et al (US 2010/0209378).
The disclosure of Flachsmann is adequately set forth in paragraph 6 above and is herein incorporated by reference.
With regards to claim 12 and 13, Flachsmann does not teach the concentration of the claimed compounds.
It is first important to note that the broadest reasonable interpretation of the claim only requires one of the claimed compounds. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05. Further, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the amount of a given solvent in order to balance factors such as composition viscosity, volatility, and other properties of the composition.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Herd et al (US 2011/0095097).
The disclosure of Herd is adequately set forth in paragraph 7 above and is herein incorporated by reference.
With regards to claim 12 and 13, Herd teaches the amount of the cyclomethicone to be from 50-60% and the amount of the 3-methoxy-3-methyl-1-butanol to be from 8-13% (claim 12).
Herd does not teach the claimed concentrations of either component. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05. Further, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know at alter the amount of a given solvent in order to balance factors such as composition viscosity, volatility, and other properties of the composition.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yeung et al (WO 2012/088758).
The disclosure of Yeung is adequately set forth in paragraph 8 above and is herein incorporated by reference.
With regards to claim 12 and 13, Yeung does not teach the concentration of the claimed compounds.
It is first important to note that the broadest reasonable interpretation of the claim only requires one of the claimed compounds. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05. Further, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the amount of a given solvent in order to balance factors such as composition viscosity, volatility, and other properties of the composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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, Joseph Del Sole can be reached at 5712721130. 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.
/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
Prosecution Insights