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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 2, 3, and 5-9, in the reply filed on 7/18/2025 is acknowledged. The traversal is on the ground(s) that all groups share a common technical feature which is a selenide derivative bearing an alpha,beta-unsaturated carbonyl moiety which does not, allegedly, make a contribution over the prior art. Applicant argues that under the product-and-process rule the patentability of the claimed method can’t be assessed without first determining whether the product recited in that method is novel or non-obvious such that no additional search burden arises per MPEP 806.05(f) and that compounds and methods of making are “likewise normally examined together” and that use and making should no be separated, allegedly. Applicant additionally argues that there has been a failure to demonstrate a serious search and evaluation burden and that search overlap is inevitable. This is not found persuasive because, first of all, the prior art teaches sulfide, sulfoxide, or sulfone derivatives of alpha,beta-unsaturated ketones and aldehydes for their function as perfuming compounds, thereby rendering obvious the claimed special technical feature, as shown below at least a posteriori. This is not found persuasive, secondly, because search burden is not a requisite consideration in applications filed under 371 of PCT applications.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4, and 10-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected compounds, methods of making, and methods of using, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/18/2025.
Status of the Claims
Claim 1 has been canceled. Claims 2-16 are pending. Claims 4 and 10-16 are withdrawn. Claims 2, 3, and 5-9 are pending and under current examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/27/22 has been considered by the examiner.
Claim Objections
Claim 6 is objected to because of the following informalities: the claim is not in the form of a sentence due to the placement of the conjunction “or” separate from instead of between the two formula illustrations. Appropriate correction is required.
Claims 6-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 112(a), Scope of Enablement
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2, 3, and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the particular elected combination of dodecylselenide and delta-damascone and similar selenide formulas illustrated in the specification as filed, does not reasonably provide enablement for the full scope of aldehyde, ketone, ester, lactone, and carboxylic acid moieties recited in claim 2. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims because it has not been shown what core structure or requisite components encompassed in the multiple genus components of claim 2 would produce a product capable of releasing the particular moiety upon ambient oxidation or for suitability in fragrance release. The claims do appear enabled as specified in claims 6 and those depending therefrom, it is noted.
The factors to be considered in determining whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first paragraph, have been described in In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988). Among these factors are: (1) the nature of the invention; (2) the state of the prior art; (3) the relative skill of those in the art; (4) the predictability or unpredictability of the art; (5) the breadth of the claims; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary. When the above factors are weighed, it is the examiner's position that one skilled in the art could not practice the invention without undue experimentation.
(1) The nature of the invention:
The invention is directed to a product comprising a selenide derivative of a fragrance compound comprising one of the various moieties recited in claim 2.
(2) The state of the prior art
The prior art teaches fragrance compounds very generally overlapping with those claimed, however the moieties encompassed do not all function as fragrance compounds particularly when coupled with a selenium anion in a compound.
(3) The relative skill of those in the art
The relative skill in the art is high, generally a Master’s level or Ph.D. in chemistry or related perfume science.
(4) The predictability or unpredictability of the art
The ability of an alpha-beta unsaturated aldehyde, ketone, ester, lactone, or carboxylic acid moiety to function desirably with a selenium ion in a compound for a consumer product is not predictable because there has been no common core established as to what feature facilitates desirable fragrance release alongside minimized or absent formation of undesired additional or alternative (i.e., thiol) odiferous compounds.
(5) The breadth of the claims
The claims are very broad pertaining to almost any length or functionalized aldehyde, ketone, ester, lactone or carboxylic moiety in a compound which is a “fragrance” compound otherwise only defined by its function and not its structure. Undue experimentation would be required to ascertain which components within those encompassed actually function as a fragrance for use in a consumer product such as those specified further in claim 3.
(6) The amount of direction or guidance presented and (7)the presence or absence of working examples
The specification as filed does not identify sufficient guidance or working examples for ascertaining what features provide and/or inhibit fragrance function as claimed in the various alpha,beta-unsaturated moieties recited.
(8) The quantity of experimentation necessary
Very much experimentation would be necessary to ascertain products meeting the claimed structure and capable of functioning as described with fragrance.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 3, and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the term “derivative” in the context of “a selenide derivative of a fragrance compound”. Claim 2 further requires that said fragrance compound comprises one of the listed moiety units. The specification as filed does not define what is encompassed and/or excluded in this “derivative”. At page 2, lines 19 and 20, the specification as filed describes the function of selenide derivatives of having a fragrance note substantially similar to that of the fragrance compounds but does not specify what requisite structure corresponds to this subjective feature of fragrance function. For the purpose of applying prior art, the selenide derivative is interpreted the same as the word “selenide” less selenium’s electropositive radical counterpoint, in other words a selenium with oxidation number of -2. It is unclear what the word “derivative” means in the context of the claim and if it implies a structural relationship between said selenium anion and the group of moieties or not. Appropriate clarification is required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation with regard to various R group identities, and the claim also recites subsequent “preferably”, “more preferably” and “most preferably” named linear alkyl groups further subsequently specified, which constitute the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Conclusion
No claim is in condition for allowance at this time.
WO2015032885 (cited in IDS filed 7/27/2022) constitutes near art and teaches sulfide, sulfoxide, and sulfone derivatives of alpha,beta-unsaturated ketons and aldehydes for use as perfuming compounds, however there is no motivation in the prior art to select and substitute for the sulfide or equivalent a selenide.
WO2013139766 teaches delta-damascone among perfuming compounds but specifies neither a dodecyl moiety nor a selenide component for coupling in a compound with delta-damascone.
US20190093046 teaches sulfur-containing pro perfume products but does not teach a rationale for substituting for the sulfur a less problematic component which would not produce the thiol having undesired odor.
In the interest of compact prosecution, Applicant is encouraged to evaluate currently withdrawn claims for eligibility for rejoinder and subsequently for compliance with written description, enablement, clarity, and scope requirements prior to additional examination.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617
Prosecution Insights