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
The non-final rejection mailed on 11/12/2025 is hereby vacated due to the 3 months suspension from the RCE filing date on 09/17/2025 which expired on 12/17/2025 and is replaced with the instant non-final rejection.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/17/2025 has been entered.
Status of claims
The amendment filed on 09/17/2025 is acknowledged. Claims 1-11, 13-16, 18, 20, 32, 34, and 38 have been canceled, claims 39 and 40 have been added, and claims 21, 24, 28, and 31 have been withdrawn. It is noted that the status of new claims 21, 24, 28, 31 are incorrectly stated as “(currently amended)” or “(previously presented)”. It should be corrected as “(withdrawn, currently amended)” or “(withdrawn, previously presented)”.
The new claims 39 and 40 are composition claims. The Examiner notes that this application was subject to restriction dated 03/22/2024. Had new perfume composition/product claims 39 and 40 been present at that time, they would have been grouped with Group II perfume composition claims which was not elected. The new claims 39 and 40 directed to an invention that is independent or distinct from the elected group I for the same reasons as discussed in the restriction dated 03/22/2024. Accordingly, claims 39 and 40 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP 821.03.
Claims 12, 17, 19, 22, 23, 25-27, 29, 30, 33, and 35-37 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 09/17/2025 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 double patenting rejection of claim 38 and U.S.C. 103(a) rejection of claims 33-38 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.
Rejections maintained
The following rejections of the claims are maintained for reasons of record and the following. The rejections are modified based on the amendments.
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 12, 17, 19, and 25-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGee et al. (US 2010/0034766 A1).
McGee et al. meet all of the limitations of claims 12, 17, 19, 26, and 27. McGee et al. disclose a method of counteracting malodor (the claimed imparting or increasing a musk odor to a product with sensory effective amount) by adding a composition comprising and at least one compound of formula (B)
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such as item 11 in table 2 with n=1, X=-C(O)-, Y=-CH2-, R3=methyl, the bond between C1 & C2 and C1 & C6 being single bond (1-(3,3-dimethylcyclohexyl)ethyl 4-oxopentanoate in the instant claims 12, 19, 26, and 27) which is compound 1 in the instant specification with musky and apple odor) (instant claims 12, 17, and 26) (abstract, paragraph 12-22 and table 2) into household products (instant claims 12, 26, ) (paragraph 29 and 30).
McGee et al. meet all of the limitations of claims 25 and 33-35. McGee et al. disclose the composition further comprising odorant, i.e., perfume (paragraph 26).
Response to Applicants’ arguments:
Applicants argue that counteracting malodor by adding a composition comprising a compound into household products disclosed by McGee et al. is fundamentally different from the claimed imparting or increasing a musk odor to a product by adding a compound to a product.
However, this argument is not deemed persuasive. The claim language or limitations does not result in a manipulative difference in the method steps when compared to the prior art disclosure. The McGee et al. disclose the same method of incorporating the same compound into the same products in McGee et al. as claimed, consumer products such as household products, personal care products and cosmetics disclosed by McGee et al. (paragraph 29) vs the products from the area of body and hair care, cosmetics and household products disclosed in the instant specification on page 18, line 8-10; thus, the method disclosed by McGee et al. would necessarily possess the same effects upon the products as the claimed product, even though such properties may not have been appreciated by McGee et al. at the time of the invention. Please refer to MPEP 2112.02:
However, when the claim recites using an old composition or structure and the “use” is directed to a result or property of that composition or structure, then the claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978) (Claims 1 and 6, directed to a method of effecting nonaddictive analgesia (pain reduction) in animals, were found to be anticipated by the applied prior art which disclosed the same compounds for effecting analgesia but which was silent as to addiction. The court upheld the rejection and stated that the applicants had merely found a new property of the compound and such a discovery did not constitute a new use.
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, 19, 22, 23, 25-27, 29, 30, 33, and 35 are rejected under 35 U.S.C. 103(a) as being unpatentable over McGee et al. (US 2010/0034766 A1).
The teachings of McGee et al. are discussed above and applied in the same manner. McGee et al. also teach the composition comprising about 0.0001-20% by weight of a compound of formula (B) which is incorporated into a fragrance composition at around 1% by weight (paragraph 32). Based on a fragrance composition comprising ≤100% by weight of fragrance, the mass ratio between a compound of formula (B) and a fragrance is 1 : ≤495 (20% * 1%) : 99% * ≤100% = 1 : ≤495).
McGee et al. teach R3 of formula (B) being C1-3 alkyl. i.e., including R3 being C3 alkyl (n=1, X=-C(O)-, Y=-CH2-), which is the claimed compound in claims 22 and 29 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxoheptanoate, compound 3 in the specification).
McGee et al. do not specify the same compound in claims 23 and 30 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxooctanoate, compound 4 in the specification).
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 4 and the compound taught by McGee et al. is the claimed C4 alkyl vs C3 alkyl at R3 position of formula (B) taught by McGee et al. 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.
McGee et al. do not teach the same mass ratio between a compound of formula (B) and a fragrance (1: ≤495 vs 1 : 25-100 in the instant claims 33 and 35).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of a compound of formula (I) and a fragrance mass ratio is 1:25-100 and the range of a compound of formula (B) and a fragrance mass ratio taught in the prior art is 1:≤495 and therefor, includes the claimed range.
Response to Applicants’ arguments:
Argument regarding the 103 rejection of the difference between the claimed method and the method taught by McGee et al. is basically the same as the above 102 rejection, thus the response discussed above applies here as well and is not persuasive for reason discussed above.
Applicant’s argument of small structure difference to fragrance compounds can lead to drastic and unpredictable changes to their odor profiles according tom Kulka and Sell is basically the same as the previous argument, thus the response discussed previously applies here as well and is not persuasive for reason discussed.
Furthermore, the election of compound 1 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxopentanoate, item 11 taught by McGee et al.), compound 3 (1-(3,3-dimethylcyclo hexyl)ethyl 4-oxoheptanoate), compound 4 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxo octanoate), and compound 6 (1-(3,3-dimethylcyclohexyl)ethyl 3-oxoheptanoate, now cancelled) as the elected species of the claimed genus (as indicated in the office action dated 09/06/2024 on page 3) is a clear admission on the record that compound 1, 3, 4, and 6 are obvious variants. If the examiner finds one of the inventions unpatentable over the prior art, the admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention. Please refer to MPEP 809.02(a):
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
New ground of rejection
The 35 U.S.C. 103(a) rejection of claims 33-38 over Williams (US 6,384,269 B1) in the previous office action date 03/17/2025 is withdrawn and a new ground of rejection is applied to include claim 12, from which claim 33 depends, and claims 17, 19, 22, 23, 25-27, 29, and 30.
Claims 12, 17, 19, 22, 23, 25-27, 29, 30, 33, and 35-37 are rejected under 35 U.S.C. 103(a) as being unpatentable over Williams (US 6,384,269 B1).
Williams teaches a method of conferring (the claimed imparting) musky-velvety, voluminous and very tenacious note to a perfumed article comprising incorporating, into the article, 5% by weight of a compound of formula I
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with R1 = R2 = H, R3 = R4 = CH3, R5 = C4 alkyl, and X =
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with n= 1 and R6 = R7= H (the claimed 1-(3,3-dimethylcyclohexyl)ethyl 4-oxooctanoate, compound 4 in the instant specification) for (abstract, column 4, line 21-27, and claims 1, 6, and 7) in admixture with other perfuming ingredients including alcohol, ester etc., (the paragraph bridges column 3 and 4) and exemplified a mixture of the compound and other perfuming ingredients with a 1:10 mass ratio in example 4.
Williams does not specify the same compound in claims 19 and 27 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxopentanoate, compound 1 in the specification) and claims 22 and 29 (1-3,3-dimethylcyclohexyl)ethyl 4-oxoheptanoate, compound 3 in the specification).
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 1 and the compound taught by Williams is the claimed C1 alkyl vs C5 alkyl at R5 position of formula I taught by Williams and the difference between the claimed compound 3 and the compound taught by Williams is the claimed C3 alkyl vs C5 alkyl at R5 position of formula I taught by Williams. 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.
Also, as indicated in the response in the rejection above, the election of compound 1 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxopentanoate, item 11 taught by McGee et al.), compound 3 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxoheptanoate), and compound 4 (1-(3,3-dimethylcyclohexyl)ethyl 4-oxooctanoate) as the elected species of the claimed genus (as indicated in the office action dated 09/06/2024 on page 3) is a clear admission on the record that compound 1, 3, and 4 are obvious variants. If the examiner finds one of the inventions unpatentable over the prior art, the admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention. Please refer to MPEP 809.02(a).
Williams does not teach the same mass ratio between the compound and other fragrance ingredients (1:10 vs the claimed 1:25-100 in the instant claims 33 and 35).
This deficiency is cured by the rationale that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties or alternatively, it is routine optimization to adjust the mass ratio between a compound of formula I and other perfume ingredients as a perfume product.
The claimed range of mass ratio between a compound of formula (I) and a fragrance is 1:25-100 and the range of mass ratio between a compound of formula (1) and a fragrance taught in the prior art is 1: 10 and both have the same function of imparting musky note to a perfumed article.
Or, alternatively, mass ratio between a compound of formula (I) and other perfume is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize or, alternatively obvious to try to reach another workable product or process. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal mass ratio between a compound of formula (I) and other perfume in order to best achieve the desired results.
Furthermore, mass ratio between a compound of formula (I) and other perfume of 1:5-1000 is disclosed in the instant specification as suitable fragrance ingredients (page 17), thus, the criticality of 1:25-100 over 1:10 is not established.
Although other perfuming ingredients in example 4 comprising esters, it would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in example 4 and the paragraph bridges column 3 and 4 in Williams to replace the esters perfume ingredients in example 4 with other perfume ingredients such as alcohol, etc., (the instant claims 36-38). Alcohol, etc., and ester being suitable other perfuming ingredients was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for replacing the esters perfume ingredients in example 4 with other perfume ingredients such as alcohol, etc. flows from all having been used in the prior art, and from all being recognized in the prior art as useful for the same purpose. Furthermore, esters fragrance ingredients are disclosed in the instant specification as suitable fragrance ingredients (page 13 and 15), thus, the criticality of excluding ester fragrance ingredients is not established.
Response to Applicants’ arguments:
Applicants argue that Williams does not tech 1-(3,3-dimethylcyclohexyl)ethyl 4-oxooctanoat but teaches synthesis compounds a-f in example 1 which is different from the claimed compounds.
However, this argument is not deemed persuasive. Formula I
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with R1 = R2 = H, R3 = R4 = CH3, R5 = C4 alkyl, and X =
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with n= 1 and R6 = R7= H, i.e., X being -CH2-, taught by Williams is the claimed 1-(3,3-dimethylcyclohexyl)ethyl 4-oxooctanoate, compound 4 in the instant specification.
Correspondence
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.
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, 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