DETAILED ACTION
Claims 1-6 and 8-27 are pending and under consideration on the merits.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/19/2026 was filed prior to the mailing date of a first Action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, it was considered by the Examiner. Some references were not considered, however, because they are not in English and no translation or concise statement of relevance was provided.
Status of the Rejections
The 102 and 103 rejections are withdrawn in light of Applicant’s arguments and invocation of the exception of 35 USC 102(b)(2)(C).
The double patenting rejection is withdrawn in view of Applicant’s arguments.
Notice of Allowed Subject Matter
Claims 1-6 and 8-20 as limited to the elected species of formula (I) were found free of the prior art. Therefore, search and examination was expanded to include additional species within the scope of the claims, and claims 1-6, 8, and 10-16 were found free of the prior art over their full scope, which does not teach or suggest a compound of formula (I) as required by base claim 1. Regarding claim 9 and its dependent claims 17-20, prior art was identified against these claims (i.e., Bourgeois et al. as discussed in the 102 and 103 rejections below). Examiner has selected the compound of Bourgeois as the next species under examination. Newly added claims 21-27 do not read on the new species under examination, and therefore are withdrawn as directed to species not under consideration on the merits.
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.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Bourgeois et al. ((Helvetica Chimica Acta Vol. 84 (2001) 2230-2438; of record in IDS) as evidenced by the English translation thereof (of record in IDS of 3/19/26).
Bourgeois discloses on page 2433 Compound 10, which the skilled artisan would recognize is capable of releasing a compound of formula (I) of claim 9, when R1 is H, R2 and R3 are methyl, and R4 is hydrogen, and therefore is a properfume compound within the scope of claim 9. Bourgeois further discloses that the compounds taught therein have a strong coconut fragrance (Abstract and second paragraph of page 2435).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9 and 17-20 are rejected under 35 U.S.C. 103 as unpatentable over Bourgeois et al. ((Helvetica Chimica Acta Vol. 84 (2001) 2230-2438) as evidenced by the English translation thereof, and in view of Muratore et al. (US Pat. Pub. 2014/0221503; of record in IDS).
The teachings of Bourgeois are relied upon as discussed above, but they do not further expressly disclose that the compound taught therein is part of a perfumed consumer product (claim 18) such as a perfume/fine perfume (claims 19-20) and which comprises a perfumery base as recited by claim 17.
Muratore discloses certain cyclopentane derivatives as useful as fragrances in perfumes (Abstract and paragraphs 1 and 46), and teaches perfume consumer products comprising the fragrance in combination with a perfumery base (see, e.g., Example 14).
As to claims 17-20, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the teachings of Bourgeois by incorporating the cyclopentane derivative fragrance taught therein into a consumer fine perfume product comprising a perfumery base, because Bourgeois teaches that the compounds taught therein have a strong coconut scent such that the skilled artisan would recognize that it could be used to impart this scent to a perfume product, and Muratore teaches that cyclopentane derivatives that are useful as fragrances can be formulated into a consumer perfumed product by addition of a perfumery base, such that the skilled artisan reasonably would have expected that the Bourgeois cyclopentane derivative fragrance also could be formulated as a consumer fine perfumed product by addition of a perfumery base. Such a modification is merely the combining of known elements according to known methods to achieve predictable results, which is prima facie obvious. MPEP 2143.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAREN GOTFREDSON whose telephone number is (571)270-3468. The examiner can normally be reached on M-F 9AM-6PM.
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, David Blanchard can be reached on 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
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