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 .
This office action is in response to the reply filed 2/5/2026.
Election/Restrictions
Claims 6-7 and 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group and/or species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/14/2025..
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/5/2026 is being considered by the examiner as the references cited were previously supplied by Applicant on 3/24/2025. The EP2340806 reference was marked as not considered as it was already cited and considered by the Examiner on the PTO-892 mailed 11/6/2025.
Response to Arguments
All of Applicant’s arguments filed 12/1/2025 have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The arguments in the response filed 12/1/2025 will be addressed below to the extent they apply to the current rejections.
112 Rejections
Applicant remarks that the amendments to claims 10-11 clarify that the total weight percentage refers to the recited component and water.
This is not persuasive as the claim does not define “all amounts” to be limited to components (a), (b), (c), (d) and water. The claims recite comprising language and claim 1 explicitly permits the inclusion of small amounts of anionic surfactants and claims 10-11 do not exclude this ingredient and do not exclude the presence of other ingredients. If it is Applicant intent that claims 10-11 be limited to ingredients (a), (b), (c), (d) and water, the Examiner suggests amending the claim to recite “…on condition that the amounts of (a), (b), (c) and (d) together with water add up to 100 wt. percent based on the total weight of the microemulsion.”
103 Rejections
In summary, Applicant argues that Fraser des not disclose any working embodiments that exclude an anionic surfactant and there is no teaching of a microemulsion system that is free of anionic surfactant.
This is not persuasive as Applicant’s are arguing limitations that are not recited by the instant claims. The claims as amended do not exclude an anionic surfactant. The claims recite “substantially free” which is not the same as “free of.” “Substantially free” implies that small amounts of anionic surfactant can be effectively included. As discussed below, Fraser teaches amounts of 1-5% of anionic surfactant which reads on “substantially free” absent a definition in the spec and claims of what this term means.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 8-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “substantially free of anionic surfactants,” both “substantially free” and “anionic surfactants” were not described (i.e. never mentioned) in the originally filed specification, as such there is no support for the claimed amendment. While the specification provides support for a microemulsion consisting of the claimed fragrance/perfume oil, nonionic solubilizer, solvent, 1,2-pentanediol and water, the specification does not support specific exclusion of anionic surfactants. As stated by MPEP 2170.05(i), negative limitations and exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. The mere absence of a positive recitation is not basis for an exclusion. As the originally filed specification is silent to anionic surfactants, they is insufficient support for their exclusion. This is a new matter rejection.
Claims 2-5 and 8-11 are rejected in view of their dependency on claim 1 as they do not cure its deficiencies and thus are deficient for the same reasons.
Maintained/Modified Claim Rejections - 35 USC § 112(b)
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 3-4 and 9-11 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 3, 4 and 9 recites “the fragrance or perfume oils” this lacks sufficient antecedent basis as the claim from which it depends recites “at least one fragrance or perfume oil” thus it’s unclear of the claim is referring to one, more than one or all fragrance or perfume oils. For purposes of compact prosecution, claim 3-4 and 9 will be examined as reciting “at least one fragrance or perfume oil.”
Regarding claims 10 and 11, these claims recite “on condition that all amounts together with water add up to 100wt.%,” however, the claim does not define what is embraced by “all amounts”. Is it simply the amounts of compounds (a)-(d) and water; or is it the wt. % of all components present in the composition as the claimed recite “comprising” language which permits the inclusion of additional non-recited ingredients and instant claim 1 allows for the inclusion of small amounts of anionic surfactant. For purposes of compact prosecution, either interpretation will be deemed to read on the instant claims.
New Claim Rejections - 35 USC § 112(b)
Claims 1-5 and 8-11 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 1 recites “substantially free of anionic surfactants,” the term “substantially” is a relative term which is not defined by the claimed and the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As demonstrated by US2013/0202546 [0059] substantially free can refer to a component that is present in amounts of less than 0.5%, however, US2017/0189433 [0120], teaches that substantially free can refer to less than 10%, thus “substantially free” has a widely varying meaning in patent specifications and it is not clear which of these meaning, or some other meaning, is meant by the claimed “substantially free” limitations. For purposes of applying prior art, substantially free will be interpreted as less than 10%.
Claims 2-5 and 8-11 are rejected in view of their dependency on claim 1 as they do not cure its deficiencies and thus are deficient for the same reasons.
Maintained/Modified 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.
Claim(s) 1, 3-5 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fraser (EP 2340804).
Fraser teaches a fragrance microemulsion cosmetic comprising 1-25% of a fragrance composition; 1-10% of a non-ionic surfactant; 1-10% of an anionic surfactant; 1-20% of a solvent which is a diol; and at least 50% water (Abs). Fraser teaches microemulsions to be clear and transparent products [0005 and 0006]. Fraser teaches microemulsion to be a homogenous mixture of oil (i.e. non-aqueous phase), water (i.e. aqueous phase) and surfactant [0009]. Example 4 of Fraser teaches the fragrance (i.e. component a), surfactant (i.e. component b) and solvents (i.e. component c and d) to be present in the oil phase (i.e. non-aqueous phase).
Fraser discloses an embodiment wherein the anionic surfactant is present in amounts ranging from 1-5%, this is less than 10% and is deemed to read on “substantially free” in view of the 112b rejection above.
Regarding claims 1(a), 4, 10(a) and 11(a): Fraser teaches the fragrance composition to be the same as perfume composition and this can comprise a single component or can be a mixture of components. Suitable perfumes for use include extracts and distillates of fruit oils, such as lemon oil, pine oil, cedarwood oil, etc. These can be present in amounts ranging from 1-25% by weight to the total microemulsion which overlaps with the ranges claimed [0013-0014].
Regarding claims 1(b), 5, 8-9, 10(b) and 11(b): Fraser teaches that suitable non-ionic surfactants for use include glycerol polyethylene glycol esters, such as Cremophor RH40 and exemplifies the use of this specific surfactant. Fraser teaches Cremophor RH40 to also be called PEG40 hydrogenated castor oil. This can be used in amounts ranging from 1-5% by weight to the total microemulsion ([0027-0025] and Example 2).
Regarding claims 1(c), 10(c) and 11(c): Fraser teaches that fragrances often include solvents which may be used in amounts up to 30%. These solvents can be added without substantially changing the odor of the composition. Common solvents include propylene glycol and dipropylene glycol and they assist in solubilizing a fragrance into a clear aqueous solution or microemulsion [0017]. In view of these teachings it would have been prima facie obvious to a person of ordinary skill before the effective filing date to add up to 30% of propylene glycol by weight of the fragrance for the benefits discussed above. As discussed above, the fragrance can be present in amounts of 1-25%, as such propylene glycol can be present in amounts of up to 7.5% by weight of the microemulsion which overlaps with the claimed ranges.
Regarding claims 1(d), 10(d) and 11(d): Fraser teaches the diol solvent to be present in amounts of 1-20% and includes 1,2-pentanediol selected from a finite number of options [0029].
Regarding claim 3: While Fraser does not teach the perfume oils to have a blotter value as claimed, the prior art makes obvious perfume oils taught by the instant claims and specification to be suitable for use, this it’s reasonable to expect these oils to have the blotter value as claimed.
Regarding claim 9: As discussed above, the nonionic solubilizer is taught to be PEG40 hydrogenated castor oil and Fraser teaches the use of lemon (i.e. fruit) oil, which reads on perfume having a fruit scent.
Regarding claims 10 and 11: In view of the 112(b) rejection above, the microemulsion as a whole comprises the claimed ingredients (a)-(d) and water and while it comprises an anionic surfactant this is permitted in view of the comprising language.
Claim 1 recites “diffusible” microemulsion, this is a recitation of intended use in the preamble. Per MPEP 2111.02: If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
As the prior art makes obvious the claimed structure, the microemulsion of the prior art is expected to be capable of being diffused. This is supported by the filed specification which teaches that the selection of the right solvent, is an important part for later evaporation behavior [0021]. As the prior art teaches the claimed solvents (i.e. propylene glycol and 1,2-pentanediol) in amounts which overlap with the claimed ranges, the fragrance is expected to be capable of diffusing.
Claim(s) 1, 2, 3-5 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fraser (EP 2340804), as applied to claims 1, 3-5 and 8-11 above, and further in view of Duggal (US 2013/0004440).
As discussed above, Fraser makes obvious the limitations of claims 1, 3-5 and 8-11, however, Fraser does not teach the NTU of the emulsion.
Duggal teaches personal care compositions in the form of microemulsions (Abs) and teaches that the microemulsion is preferably transparent. The transparent liquid microemulsion form of the composition is especially preferred since the transparent form makes for an appealing visual impact on consumers. By the term transparent or translucent composition is meant that the composition has a turbidity value of 0 to 200 Nephelometric Turbidity Units (NTU) preferably less than 100 NTU, more preferably less than 10 NTU and dispersed droplet phase in a size range of 4-50nm [0026].
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Fraser with those of Duggal. One of skill in the art would have been motivated to formulate the microemulsion of Fraser to have a NTU of less than 10, which overlaps with the claimed 1-10, as Duggal teaches that an NTU of less than 10 ensure the microemulsions are sufficiently transparent and appealing for visual impact on consumers. One of skill in the art would have a reasonable expectation of success as both Fraser and Duggal teaches transparent microemulsions.
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian 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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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613