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 .
Status of Claims
A new claim set was filed on 12/2/24 with the following:
Amended claims
Newly canceled claims
1-12
Newly added claims
13-22
Previously canceled claims
Previously withdrawn claims
Claims under instant examination
13-22
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “…2,5-dimethyl-2-indanemethanol; (2,5-dimethyl-2,3-dihydro-1h-inden-2-yl)methyl methyl ether; (2-methyl-2, 3-dihydro-1h-inden-2-yl)methanol; (5-methyl-2,3-dihydro-1h-inden-2-yl )methanol; (2-methyl-2,3- dihydro-1h-inden- 2-y 1)methyl acetate; 1-(2,5-dimethyl-2,3-dihydro-1h-inden-2-yl)ethenone; (2,4,6-trimethyl-2,3-dihydro-1H-inden-2-yl)methanol; (2,6-dimethyl- 1,2,3,4-tetrahydro-2- naphthalenyl)methanol”. The five occurrences of “1h” should be amended to “1H” for proper nomenclature.
Appropriate correction is required.
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.
Claims 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schneider et al. (JP 2000/212111; published: Aug. 2, 2000).
The passages cited below which indicate the teachings of the ‘111 publication are based on its Google Patents English machine translation (attached herein).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Schneider et al. teach compounds such as 2,5-dimethyl-2-indanemethanol that are useful for perfume, eau de toilette, after-shave lotion, cosmetics, soap, shampoo, conditioners, hair care products, bath jelly, shower jelly, deodorant, air-cleaning agents, detergent or the like (i.e., compositions) (Abstract). 2,5-dimethyl-2-indanemethanol reads on the compound of formula I as recited in instant claims 20.
With regards to instant claims 20-22, Schneider et al. teach a fragrance composition or a perfume product having the abovementioned compound as an active ingredient (claims). Schneider et al. teach that such compounds may be used alone or in admixture with other perfuming ingredients, solvents or additives commonly used in the perfumery industry. Schneider et al. teach the such compounds can be used as liquid or solid detergents for textiles, fabric softeners, and detergent compositions or cleaning products for cleaning various household or industrial surfaces.
Therefore, by teaching all the limitations of claims 20-22, Schneider et al. anticipates the instant invention as claimed.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider et al. (JP 2000/212111; published: Aug. 2, 2000).
The passages cited below which indicate the teachings of the ‘111 publication are based on its Google Patents English machine translation (attached herein).
As noted in the anticipation rejection above Schneider et al. anticipates claims 20-22 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103 over Schneider et al. for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Schneider et al. teach compounds such as 2,5-dimethyl-2-indanemethanol that are useful for perfume, eau de toilette, after-shave lotion, cosmetics, soap, shampoo, conditioners, hair care products, bath jelly, shower jelly, deodorant, air-cleaning agents, detergent or the like (i.e., compositions) (Abstract). 2,5-dimethyl-2-indanemethanol reads on the compound of formula I as recited in instant claims 13-17.
With regards to instant claims 18-19, a recitation of the intended use of the claimed invention (e.g., how the toilet malodor is generated) must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
With regards to instant claims 20-22, Schneider et al. teach a fragrance composition or a perfume product having the abovementioned compound as an active ingredient (claims). Schneider et al. teach that such compounds may be used alone or in admixture with other perfuming ingredients, solvents or additives commonly used in the perfumery industry. Schneider et al. teach the such compounds can be used as liquid or solid detergents for textiles, fabric softeners, and detergent compositions or cleaning products for cleaning various household or industrial surfaces.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Schneider et al. do not specifically teach the step of releasing into the air or over a surface, or to the malodor source, an effective amount of the abovementioned compound, as required by instant claim 13.
Schneider et al. do not specifically teach wherein an effective amount of the claimed compound is released, as required by instant claim 13.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on the disclosures of Schneider et al., it would have been prima facie obvious for a person of ordinary skill in the art to release the claimed compound “into the air or over a surface, or to the malodor source”, as instantly claimed, with a reasonable expectation of success, at the time of the instant application. A person of ordinary skill would have been motivated to do so because Schneider et al. teach that the claimed compound (e.g., 2,5-dimethyl-2-indanemethanol) is useful for perfume, eau de toilette, after-shave lotion, cosmetics, soap, shampoo, conditioners, hair care products, bath jelly, shower jelly, deodorant, air-cleaning agents, detergent or the like (Abstract). Therefore, it is implicitly taught that the 2,5-dimethyl-2-indanemethanol is release into the air in order to function, for example, as an air-cleaning agent. In accordance with MPEP §2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.”
With regards to the effect of the releasing the claimed product into the air or over a surface (“modifies, suppresses, reduces, decreases, or masks an animal/fecal/tar character of the toilet malodor by at least about 50%”), the MPEP states the following (MPEP §2112(I)):
I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY
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“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, Schneider et al. teach the same compound, with the same concentration and they teach that such composition is capable and suitable for use in the perfuming and/or air freshening field (i.e., directed to the same purpose: to impart a pleasant smell). Therefore, in view of MPEP §2112, claiming a new use for such method of using the known composition, which is inherently present in the prior art, does not necessarily make the claim patentable. Such was found prima facie obvious especially since the Applicants did not provide any evidence of unexpected results.
Regarding the concentration (effective amount) of compound of formula (I) as specified in claim 13, MPEP §2144.05 states:
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. “[W]here 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, 235 (CCPA 1955).
Schneider et al. teach that the concentration of the claimed compound of formula (I) is the same as the concentration disclosed in the instant specification: Schneider et al. teach that the typical concentration is about 5 to 10% by mass, of the compound (I) ([0020]) and the instant specification teaches typical concentrations are in the order of 0.01 to 20%, or even 1 to 10% by weight. That is, the range taught by the prior art overlaps the broad concentration recited in the instant specification. Furthermore, the concentration of MOC compound according to the invention used in the various aforementioned consumer products varies within a wide range of values depending on the nature of the consumer product (p. 13). The fact that the instant specification and amended claim 1 indicates that lower concentrations (e.g., 0.01 % to 2.0% by weight) can be used for MOC consumer products, does not suggest or teach that a concentration higher cannot be used (or cannot be effective) for the claimed method. The Applicants' specification provides no evidence that the selected concentration range in claim 1 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to numerous factors (e.g., other perfuming ingredients present in the composition, desired potency), it would have been prima facie obvious to a person of ordinary skill in the art at the time of the invention to combine these teachings and alter the concentration. One of ordinary skill in the art would have been motivated to change the concentration as this could be expected to be advantageous for optimizing the desired potency of scent.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617
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