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
Receipt is acknowledged of the Information Disclosure Statement filed 15 December 2023. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
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 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nagasawa (JP 2010215529 A).
With regard to claims 1 and 9, Nagasawa teaches a perfume composition (overview) containing carbonyl alkanol represent by chemical formula (III) (para 0011).
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Wherein R1 is isopropyl, R4 is methyl, and R5 is hydrogen; producing 4-isopropyl-1-methylcyclohexylmethanol (para 0051). Nagasawa further teaches the compound produces a floral fragrance with creamy sweetness inherent in natural flowers (para 0015). However, Nagasawa fails to teach the claimed compound of (4-isopropyl-2-methylcyclohexyl) methanol (Formula 1) and (2-isopropyl-4- methylcyclohexyl) methanol (Formula 2).
With regard to the 4-isopropyl-1-methylcyclohexylmethanol and the claimed alicyclic compounds are structural isomers – compounds with the same formula but a different arrangement of atoms in the molecule. Isomers “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), MPEP 2144.09. II.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), MPEP 2144.09. II. Absent of evidence to the contrary, the instantly claimed compounds are obvious isomers of the prior art.
With regard to claims 2 and 10, it is noted that the preamble recites “a fragrance composition”. The claim preamble must be read in the context of the entire claim. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP 2111.02
With regard to claim 3, Nagasawa teaches the fragrance composition comprising the cyclohexyl alkanol represented by the general formula (III) singly or in combination of two or more kinds thereof with other fragrance components usually used or a blended fragrance having a desired composition (para 0037). Nagasawa further teaches a cis and trans isomer of 4-isopropyl-1-methylcyclohexylmethanol products (para 0052; translation error on compound name).
With regard to the mixture, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to expect the production of a cis and trans isomer of 4-isopropyl-1-methylcyclohexylmethanol would conclude to it being two alicyclic alcohol components.
With regard to claim 5, Nagasawa teaches a cis and trans isomer of isopropyl-1-methylcyclohexylmethanol at a 97% yield (para 0052; translation error on compound name).
As stated above, Nagasawa teaches multiple alicyclic alcohols.
With regard to claim 6, Nagasawa teaches a cis isomer of isopropyl-1-methylcyclohexylmethanol with a 90 mass% from the cis and trans isomer of 4-isopropyl-1-methylcyclohexylmethanol 91:1 (para 0052).
With regard to claim 7, Nagasawa teaches a cis and trans isomer of 4-isopropyl-1-methylcyclohexylmethanol with the mass ratio of 91:1 (para 0052).
With regard to claim 8, as stated above, Nagasawa teaches a fragrance composition comprising 4-isopropyl-1-methylcyclohexylmethanol (abstract).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nagasawa (JP 2010215529 A) in view of Kitamura (US 20130338403 A1).
With regard to claim 4, as stated above, Nagasawa teaches the fragrance composition comprising the cyclohexyl alkanol represented by the general formula (III) singly or in combination of two or more kinds thereof with other fragrance components usually used or a blended fragrance having a desired composition (para 0037). However, Nagasawa fails to explicitly teach an additional alicyclic alcohol compound.
In the same field of endeavor, Kitamura teaches a fragrance composition containing alicyclic alcohol compound (abstract) represented by chemical formula (1) (1-isopropyl-4-methylcyclohexyl) methanol, (para 005). Kitamura teaches the alicyclic alcohol compound has a floral-green-like fragrance, and can be used, independently or in combination with other components (para 0016).
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Kitamura further teaches a product mixture containing 73.5% of (1-isopropyl-4-methylcyclohexyl) methanol and 26.5% of other isomers (para 0087).
With regard to the mixture, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to expect the production of other isomers would conclude to it being more than one other isomer produced. The person having ordinary skill in the art would also expect to try the addition of multiple isomers to obtain a desired fragrance composition as taught by Nagasawa.
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761