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 .
Response to Amendment
The 2026 August 6 amendment containing newly amended claims 1, 2, 66-68, 110, 111, and newly added claims 118-130 is pending. Due to no prior art against compounds in which examined variable W is silicon, a search has been extended to compounds of following scope: W is C; Y is O; examined variables j and k are each one; RK1 is H; and RK2 is -CH=CH-Me, furyl, pyran, cyclopentyl, or 2,6,6-trimethylbicyclo[3.1.1]hept-3-yl. The 35 U.SC. 112 (b) rejection is overcome because antecedent basis is present to each instance or RK1 and RK2 to be O-ethyl. The 35 U.S.C. 102 rejections are overcome due to variable RK2 of claim 1 is not permitted to be halogen in the 2026 August 6 amendment.
Claims 68, 120, 121, and 124-126 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2026 January 20.
Claim Objections
Claim 111 is objected to because of the following informalities: the instructions for using a compound or salt do not affect patentability of a claim. With regards to the ‘label’ and ‘instructions’, The MPEP states, “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed.). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)("Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T ]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.").” (MPEP § 2112.01).
Appropriate correction is required.
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.
Claim(s) 1, 2, 122, and 123 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BRANNOCK (Journal of Organic Chemistry, 1956, 21, 1366-1368). Brannock describes a compound below (page 1367, column 1. paragraph 7), in which the following examined variables apply: [CRYRY] and [CRYRY] are each CH2; j and k are each one; W is C; RK1 is H; and RK2 is -CH=CH-Me.
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Claim(s) 1, 2, 122, and 123 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STERLING (US 3122562, published 1964 February 25). Sterling describe example 2 (column 2, lines 15-39), in which the following examined variables apply: [CRYRY] and [CRYRY] are each CH2; j and k are each one; W is C; RK1 is H; and RK2 is pyran.
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Claim(s) 1, 2, 110, and 122 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GRAMLICH (US 4784985, published 1988 November 15). Gramlich describes examples 12-14 (table 1, columns 3-4), in which the following examined variables apply: [CRYRY] and [CRYRY] are each CHMe; j and k are each one; W is C; RK1 is H; and RK2 is pyran, cyclopentyl, or 2,6,6-trimethylbicyclo[3.1.1]hept-3-yl. Scent compositions are described (table 1, columns 3 and 4; claim 1, column 6, lines 19-39).
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Conclusion
Claims 1, 2 , 110, 111, 122, and 123 are not allowed. Claims 127, and 128 are free of the prior art with respect to an instance of formula (B) in which examined variable B is silicon.
Claims 66, 67, 118, 119, 129, and 130 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.
The following is a statement of reasons for the indication of allowable subject matter: HUSTED (WO 2022/164503, published 2022 August 4) several compounds (page 79, claim 86) which do not anticipate or render obvious a compound of the examined application because the reference was published 2022 August 4, which is after the effective filing date of 2020 November 9.
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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 NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 8:00 AM to 4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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