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 .
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.
DETAILED ACTION
Status of claims
The amendment filed on 05/11/2026 is acknowledged. Claims 1-11, 13-16, 18-20, 22, 23, 27, 29, 30, 32, 34, and 38 have been canceled and claims 28, 31, 39, and 40 have been withdrawn. Claims 12, 17, 21, 24-26, 33, and 35-37 are under examination in the instant office action.
Applicants’ amendments necessitate reconsideration of species election dated 03/22/2024 and a species election requirement among claims 12, 21, 24, 26, 28, and 31. Applicant indicated that compound 2 (2-(1-(3,3-dimethylcyclohexyl)ethoxy)-2-methylpropyl tetrahydrofuran-2-carboxylate) would be elected if a species election is needed.
Applicants’ elected species of compound 2 in claims 21 and 28 is free of the prior art. As a result, the search has been extended to non-elected compound 7 in claims 24 and 31 (2-(1-(3,3-dimethylcyclohexyl)ethoxy)-2-oxoethyl 4-oxopentanoate). MPEP 803.02 III:
If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended.
Claims 12, 17, 24 25, 26, 31, 33, and 35-37 will presently be examined to the extent they read on the elected subject matter of record.
Rejections withdrawn
Applicant’s amendments and arguments filed on 05/11/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 102(a)(1) rejection of claims 12, 17, 19, and 25-27 over McGee et al. (US 2010/0034766 A1) and 35 U.S.C. 103(a) rejections of claims 12, 17, 19, 22, 23, 25-27, 29, 30, 33, and 35 over McGee et al. (US 2010/0034766 A1) and of claims 12, 17, 19, 22, 23, 25-27, 29, 30, 33, and 35-37 over Williams (US 6,384,269 B1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
New ground of rejections necessitated by Applicant’s amendment
The amendments necessitate the following new ground of rejection.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 12, 17, 24-26, 31, 33, and 35-37 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hölscher (US 2013/0261036 A1).
Hölscher teaches a method of imparting or intensifying particular musk and fruity notes to a product (the instant claims 12, 17, 26)
comprising incorporating, into the article (abstract and paragraph 19, 61-66, 81-85, 90-96, and 111, and claims 5 and 13), a perfume of formula
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with ------ being saturated or unsaturated, R1 = H, X = O, n=1, R2 being (iv) a CH2-carbonyl-O-R3 group, wherein R3 = a straight, branched or cyclic and saturated or unsaturated C1-4 alkyl group, i.e., incluidng methyl → 2-(1-(3,3-dimethylcyclohexyl)ethoxy)-2-oxoethyl 3-oxobutanoate) (abstract and claim 1)
in admixture with further perfumes with a perfume to further perfume mass ratio of 1:25-100 (the instant claim 25, 33, and 35) (paragraph 67, 68).
Hölscher does not teach esters of aliphatic carboxylic acids, esters of cyclic alcohols, esters of cycloaliphatic alcohols, and esters of cycloaliphatic carboxylic acids being must have further perfumes (the instant claims 36 and 37).
Hölscher teaches does not teach the same perfume (2-(1-(3,3-dimethylcyclohexyl)ethoxy)-2-oxoethyl 3-oxobutanoate vs the claimed 2-(1-(3,3-dimethylcyclohexyl)ethoxy)-2-oxoethyl 4-oxopentanoate, compound 7) in the instant claims 12, 24, 26, and 31.
This deficiency is cured by the rationale that when chemical compounds have “very close” structural similarities and similar utilities, without more a prima facie case may be made. In the instant case, the difference between the claimed compound 7 and the compound taught by Hölscher is the claimed 4-oxopentanoate vs 3-oxobutanoate taught by Hölscher, i.e., R2 being CH2-carbonyl-O-CH3 vs R2 being CH2-CH2-carbonyl-O-CH3. Please refer to MPEP 2144.09 II.:
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Response to Applicants’ arguments:
Applicant’s arguments, filed on 05/11/2026, have been fully considered but they are moot in view of new ground of rejections.
Conclusion
No claims are allowed.
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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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