the firm's post-grant practitioners are some of the most experienced in the country.

Long  Phan, Ph.D.
Alec M. Royka
Thomas M. Cunningham, Ph.D.
Grace E. Kim
Robert W. Downs
Marina I. Miller, Ph.D.
Christopher  Ricciuti
Surinder  Sachar
Elissa L. Sanford
James R. Love
Edwin D. Garlepp
Arthur I. Neustadt
Tia D. Fenton
Daniel J. Pereira, Ph.D.
Akihiro  Yamazaki
Jenchieh (Joseph) Yuan
Kasumi  Kanetaka
John  Sipos
John S. Kern
Kevin M. McKinley
Yuki  Onoe
Robert  Tarcu
Yorikatsu  Hohokabe, Ph.D.
Derek  Lightner, Ph.D.
Alexander B. Englehart
Steven B. Chang
Jay E. Rowe, Jr., Ph.D.
Philippe J.C. Signore, Ph.D.
Bogdan A. Zinchenko
Norman F. Oblon
John F. Presper
Dale M. Shaw
Jianping (James)  Wu
Nicholas  Rosa, Ph.D.
Sameer  Gokhale
Aldo  Martinez
Robert T. Pous
Michael R. Casey, Ph.D.
Kevin Ross  Davis
Diane  Jones
Yuanyi (Alex) Zhang, Ph.D.
Brian B. Darville
Ryan W. Smith
Eric W. Schweibenz
Teddy S. Gron
David M. Longo, Ph.D.
Stephen G. Baxter, Ph.D.
Kevin L. Hartman, Ph.D.
Carl E. Schlier
Eckhard H. Kuesters
Stefan Uwe  Koschmieder, Ph.D.
Christopher I. Donahue
Tao  Feng, Ph.D.
Colin B. Harris
Chika (Teranishi) Iitoyo
Craig R. Feinberg
Richard D. Kelly
Andrew M. Ollis
Frank J. West
Kurt M. Berger, Ph.D.
J. Derek  Mason, Ph.D., CLP
Charles L. Gholz
Jeffrey B. McIntyre


Artificial Intelligence (AI)
Artificial Intelligence (AI)
Digital Health
Digital Health
Energy & Renewables
Energy & Renewables

Fast Facts

About Our

Law Firm

About Our Law Firm

Headquartered within steps of the USPTO with an affiliate office in Tokyo, Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law.

Get to know our


Get to know our History

Norman Oblon with Stanley Fisher and Marvin Spivak launched what was to become Oblon, McClelland, Maier & Neustadt, LLP, one of the nation's leading full-service intellectual property law firms.

Our Local and

Global Reach

Our Local and Global Reach

Outside the US, we service companies based in Japan, France, Germany, Italy, Saudi Arabia, and farther corners of the world. Our culturally aware attorneys speak many languages, including Japanese, French, German, Mandarin, Korean, Russian, Arabic, Farsi, Chinese.

A few of our


A few of our ACCOLADES

Oblon's professionals provide industry-leading IP legal services to many of the world's most admired innovators and brands.




From the minute you walk through our doors, you'll become a valuable part of a team that fosters a culture of innovation, client service and collegiality.

A few ways to

GET In Touch

A few ways to GET In Touch
US Office

Telephone: 703-413-3000
Learn More +

Tokyo Office

Telephone: +81-3-6212-0550
Learn More +


Patent Forms

Downloadable Patent Forms

The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.

Plural Unreduced Selections with Unpredictable Effect Not Necessarily Routine Optimization

  • March 8, 2022
  • Article

Associated People

Associated Technologies

The PTAB in Ex parte Sturgis (Appeal 2021-002857; USSN 15/696,282) reversed an examiner’s obviousness rejection of claims for failing to sufficiently establish obviousness via routine optimization The reversal was mainly based upon plural selections being claimed without any particular directions on choosing in the prior art and an unpredicted effect based on the cited art.

The claims in question related to a deodorant / antiperspirant composition recited in two independent claims as indicated below.

The prior art cited against the claims was the applicant’s own prior work, Scavone, and a secondary reference. The rejection relied upon the Scavone’s disclosure that one or more fragrance can be complexed to cyclodextrin, in describing that “[a] representative, non-limiting, list of fragrance materials that may be complexed with the cyclodextrin includes … and mixtures thereof.”  The examiner characterized Scavone as describing “greater than about 75%,” the percent of fragrance complexed with cyclodextrin, and that there was overlap with some of the claimed fragrances.

Scavone actually described that “[i]n accordance with at least some of the preferred embodiments, the percent of fragrance material that is complexed with cyclodextrin is greater than about 75%, in some instances greater than about 90%, and in other instances greater than about 95%.”  Scavone also described that

[0044] [a] representative, non-limiting, list of fragrance materials that may be complexed with the cyclodextrin includes anethole, benzaldehyde, decyl aldehyde, benzyl acetate, benzyl alcohol, benzyl formate, benzyl propionate, iso-bornyl acetate, camphene, cis-citral (neral), citronellal, citronellol, citronellyl acetate, paracymene, decanal, dihydrolinalool, dihydromyrcenol, methyl benzyl carbinyl acetate, dimethyl benzyl carbinyl acetate, dimethyl phenyl carbinol, eucalyptol, helional, geranial, geraniol, geranyl acetate, geranyl nitrile, cis-3-hexenyl acetate, dihydrocitronellal, d-limonene, linalool, linalool oxide, tetra-hydro linalool, alpha-methyl ionone, methyl nonyl acetaldehyde, methyl phenyl carbinyl acetate, laevo-menthyl acetate, menthone, iso-menthone, myrcene, myrcenyl acetate, myrcenol, nerol, neryl acetate, nonyl acetate, phenyl ethyl alcohol, phenyl acetaldehyde, alpha-pinene, beta-pinene, gamma-terpinene, terpineol, alpha-terpineol, beta-terpineol, terpinyl acetate, vertenex (para-tertiary-butyl cyclohexyl acetate), gamma-methyl ionone, undecalactone, undecylenic aldehyde, alpha-damascone, beta-damascone, amyl acetate, lemon oil, orange oil, and mixtures thereof.

[0045] Additional fragrant or odor controlling materials suitable for use in embodiments of the present invention include, but are not limited to, hexyl cinnamic aldehyde, alpha-amylcinnamic aldehyde, p-anisaldehyde, cinnamic aldehyde, cuminic aldehyde, p-t-butyl-alpha-methyldihydrocinnamaldehyde, 4-hydroxy-3-methoxycinnamaldehyde, 2-phenyl-3-(2-furyl)prop-2-enal, vanillin isobutyrate, ethyl vanillin acetate, vanillin acetate, cyclamen aldehyde, heptanal, lauryl aldehyde, nonanal, octanal, phenyl propyl aldehyde, vanillin, salycil aldehyde, cytral, 2,4-dihydroxy-3-methylbenzaldehyde, 2-hydroxy-4-methylbenzaldehyde, 5-methyl salicylic aldehydes, 4-nitrobenzaldehyde, o-nitrobenzaldehyde, 5-ethyl-2-thiophenecarbaldehyde, 5-methyl-2-thiophenecarboxaldehyde, 2-thiophenecarbaldehyde, asaronaldehyde, 5-(hydroxymethyl)-2-furaldehyde, 2-benzofurancarboxaldehyde, 2-benzofurancarboxaldehyde, 4-ethoxy-3-methoxy benzaldehyde, [p]rotocatechualdehyde, [h]eliotropine, 2,3,4-trimethoxybenzaldehyde, 3,4,5-trimethoxybenzaldehyde, 2,8-dithianon-4-3n-4-carboxaldehyde, [s]orbinaldehyde, 2,4-heptadienal, 2,4-decadienal, 2,4-nonadienal, (E,E)-,2,4-octadien-1-al, 2,4-octadienal, 2,4-dodecadienal, 4-undecadienal, 2,4-tridecadien-1-al, 2-trans-4-cis-7-cis-tridecatrienal, piperonylidenepropionaldehyde, 2-methyl-3-(2-furyl)acrolein, 2,4-pentadienal, 2-furfurylidene butyraldehyde, 3-(2-furyl)acrolein, Pyruvaldehyde, Ethanedial, menthol, 3-buten-2-one, 3-methyl-4-(2,6,6-trimethyl-2-cyclohexen-1-yl), 4-(2,6,6-trimethylcyclohen-1-en-1-yl)but-3-en-2-one, 3-buten-2-one,4-(2,6,6-trimethyl-2-cyclohexen-1-yl)-, (E)-, menthyl lactate, isomenthyl acetate, isomenthyl propionate, isomenthyl isobutyrate, camphor, p-menthane, cresol, tetrahydromyrcenol, cytronellol [sic], cytronellyil [sic] derivatives, geranyl derivatives, linalyl acetate, mugetanol, eugenol, jasmal, pinanol, cedrene, beta pinene, cineole, nonadienol, ethylhexanal, octanol acetate, methyl furfural, terpinene, thujene, amylacetate, benzylacetate, di-hydrocumarin, di-hydromyrcenyl acetate, [i]soamylacetate, para-cymene, triethyl acetate, para-cresol, ethyl acetate, benzyl-benzoate, isopropyl myristate, methyl abietate, [e]thanol, [i]sopropanol, diethyl sebacate, [g]lycerol, propylene glycol, 1,2-butylene glycol, dipropylene glycol, 2-methyl-2,4-pentanediol, diethylene glycol monoethyl ether, diethyl phthalate, hexyl salycilate [sic], triethyl citrate, benzyl salicylate, and mixtures thereof.

That is, Scavone described a relatively long list of options, not including the majority (9 of 13) of the compounds from claim 13.  Of the compounds recited in claim 13, Scavone disclosed ethyl vanillin, vanillin, benzaldehyde, dimethyl anthranilate, and 3,6-nonadien-l-ol (“nonadienol”).  Not disclosed were ethyl-2-methyl butyrate, beta gamma hexanol, isoamyl acetate, amyl acetate, cis-3-hexenyl acetate, gamma-octalactone, isoeugenyl acetate, canthoxal, and triplal.

The applicant argued that Scavone failed to teach any particular reason to select certain perfume raw materials, failed to teach anything about the specific structure or parameters of individual perfume raw materials, and failed to designate a typical, preferred, or optimum species of perfume raw materials.  The applicant also argued that Scavone failed to discuss the properties of perfume raw materials and that there was no established predictability of the technology, noting that Scavone did not identify, disclose, or discuss the advantageous properties of perfume raw materials based on their complex stability constant, ClogP, and weight average molecular weight, and their ability to be released from an anhydrous antiperspirant or deodorant stick when complexed with cyclodextrin.

The PTAB acknowledged that Scavone’s ¶ [0024] did teach the amount of perfume in the cyclodextrin perfume complex “can vary greatly depending on the manufacturing techniques employed,” and that Scavone indicated the percent of fragrance material associated with the interior of a cyclodextrin complex (as opposed to being on the exterior region, i.e., a selection) is results effective.  However, in the PTAB’s view, Scavone did not disclose that where more than one fragrance is complexed with cyclodextrin, differences in concentration of certain fragrance materials in that complex provide for difference in result of the product.  That is, the PTAB took the position that the effect of combining the selected elements – particularly scent molecules with the cyclodextrin, in the particular amounts –  in the applicant’s claim was unpredictable.  Citing to In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017) the PTAB restated that “a conclusion of obviousness cannot stand where there is a failure to provide an appropriately supported explanation why it would have been routine optimization to select and adjust particular percentages of a claim element.”


The reversal in Ex parte Sturgis is a reminder that a rejection based mainly on the mere existence of a set of choices in the prior art, even where a portion (but not all) of the choices are known to be result effective, can be insufficient for a finding of obviousness in unpredictable arts.