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 .
Claims 1-26 are pending in the instant application. Claims 14-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference which anticipates one group would not render obvious the other. Claims 1, 2, 6-9, 12, and 13 are rejected. Claims 3-5, 10 and 11 are objected.
Response to Amendment and Arguments/Remarks
The amendment and arguments/remarks filed on November 14, 2025 have been fully considered and entered into the application. With regards to the 35 U.S.C. 112(b), 35 U.S.C. 112(d), 35 U.S.C. 102(a)(1) rejection as being anticipated by Nakano et al., and the claim objections, the grounds for rejection and objection are moot in view of Applicant’s amendment and the rejections and objections have been withdrawn.
However, this amendment has necessitated new grounds of rejection under 35 U.S.C. 102(a)(1), which are described below.
It is noted that the election of species requirement has been withdrawn (i.e., the full scope of the subject matter of claims 1-13 has been searched and examined in its entirety).
New Claim Rejections - 35 USC § 102
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 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 1, 2, 6-9, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al. (New Phytologist (2019) 223: 323-335).
Johnson et al. discloses the compounds (Z,Z)-FPP, FPP, NPP, and GPP (see Figure 4 on page 329) which anticipate compounds of formula (I) of the claims wherein m is 0 (NPP and GPP) or 1 ((Z,Z)-FPP and FPP); the dashed lines represent a double bond; R3’-R6’ are absent; X1 is alkyl; R1 and R2 form a double bond; R1’ and R’ are methyl; R2’ is hydrogen; R3 and R5 are methyl; R4 and R6 are hydrogen; X4 is absent; and X2 is a bond.
With respect to the art rejection above over claims 12 and 13, it is noted that the reference does not teach that the compounds can be used in the manner instantly claimed (i.e., enzymatically transformed into a terpenoid). However, the intended use of the claimed compounds does not patentably distinguish the compounds, per se, since such disclosed use is inherent in the reference compounds. In order to be limiting, the intended use must create a structural difference between the claimed compounds and the prior art compounds. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Claim Objections
Claims 3-5, 10 and 11 are objected to for depending on a previous rejected claim.
Conclusion
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.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622