DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 7-9, 12-14, 17-19, and 20-22 are withdrawn.
Claims 1-2, 4-6, and 15-16 are pending and represent all claims currently under consideration.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claims 1-2, 4-6, and 15-16 are considered to have an effective filing date of 12/18/2020.
Election/Restrictions
Applicant’s election without traverse in the reply filed on 02/09/2026 of Group I, claims 1-6, and 15-16, and the species “a”-“o” as listed below, with claims 1-2, 4-6, and 15-16 reading on the elected species, is acknowledged.
2-methyl-3-[4-(2-methyl-2-propanyl)phenyl]propanal;
tricyclo[5.2.1.0(2,6)]dec-3-en-8-yl acetate and tricyclo[5.2.1.0(2,6)]dec-4-en-8-yl acetate;
1-[(1RS,2RS)-1,2,8,8-tetramethyl-1,2,3,4,5,6,7,8-octahydro-2-naphthalenyl]ethanone, ((2RS,3RS)-2,3,8,8-tetramethyl-1,2,3,4,5,6,7,8-octahydronaphthalen-2-yl)ethanone, ((2RS,3RS,8aRS)-2,3,8,8-tetramethyl-1,2,3,5,6,7,8,8a-octahydro-2- naphthalenyl)ethanone, 1-((1RS,2RS,8aSR)-1,2,8,8-tetramethyl-1,2,3,5,6,7,8,8a- octahydro-2-naphthalenyl)ethanone, and 1-((2RS,3RS,8aRS)-2,3,8,8-tetramethyl-1,2,3,4,6,7,8,8a-octahydro-2-naphthalenyl)ethenone;
2-methylbutyl salicylate, pentyl salicylate, benzyl salicylate, and (3Z)-3-hexen-1-yl salicylate;
cyclohexylidene(phenyl)acetonitrile;
(+-)-2-methylundecanal;
patchouli oil;
(+-)-3-(4-methyl-3-penten-1-yl)-3-cyclohexene-1-carbaldehyde and (+-)-4-(4-methyl-3-penten-1-yl)-3-cyclohexene-1-carbaldehyde;
(2E)-1-[(1RS,2SR)-2,6,6-trimethyl-3-cyclohexen-1-y1]-2-buten-1-one;
limonene and orange oil;
2-methoxynaphthalene;
1-oxa-12-cyclohexadecen-2-one and 1-oxa-13-cyclohexadecen-2-one;
{(3aRS,5aSR,9aSR,9bRS)-3a,6,6,9a-tetramethyldodecahydronaphtho[2,1-b]furan and (3aRS,5aSR,9aSR,9bSR)-3a,6,6,9a-tetramethyldodecahydronaphthol[2,1-b]furan;
tetrahydro-4-methyl-2-(2-methyl-1-propenyl)-2H-pyran; and
9-undecenal and 10-undecenal.
Claim 3, 7-9, 12-14, 17-19, and 20-22 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/09/2026.
Information Disclosure Statement
The information disclosure statement filed 07/03/2023 has been considered.
Claim Objections
Claims 1-2 are objected to because of the following informalities: in section “c” of each claim, it is the Examiner’s interpretation that “ethenone” should read “ethenone”. This appears to be a misspelling. Appropriate correction is required.
Specification
The use of the terms Isopar, Dowanol, Cremophor, BASF, Hostapur, Clariant, Edenor, Genapol, Aculyn, Stepan, Arch, Noveon, Lonza, Evonik, Croda, Roche, Shin Etsu, Alfa Aesar, Carbopol, Tego, and Lubrizol, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
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.
Claim 2 is 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.
Regarding claim 2, the phrase “at least two or three” is unclear, because it is not clear if the claim is intended to read “at least two” or “at least three” or if “three” is intended to further limit “at least two”.
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.
Claims 1-2, 4-6, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Elabbadi (WO 2020127749 A1), further in view of Saudan (US 20190276769 A1), Cawkill (WO 2008104352 A2), Birkbeck (WO 2018167200 A1; IDS reference, 07/03/2023), and as evidenced by ChemSpider (Lilial), Industrial Chemicals (OTNE), BenchChem (Isomeric forms of damascone) and PubChem (Amyl Salicylate). Birkbeck was cited previously by the Examiner.
Regarding claims 1 and 2, Elabbadi teaches perfuming compositions (i.e., perfuming compositions of matter; Elabbadi, abstract), which can comprise:
Lilial (i.e., “a” 2-methyl-3-[4-(2-methyl-2-propanyl)phenyl]propanal as evidenced by ChemSpider; Elabbadi, page 46, table 2a);
tricyclo[5.2.1.0(2,6)]dec-3-en-8-yl acetate and tricyclo[5.2.1.0(2,6)]dec-4-en-8-yl acetate (i.e., “b”; Elabbadi, page 13, lines 20-21);
1-(octahydro-2,3,8,8-tetramethyl-2-naphtalenyl)-1-ethanone and 1-(2,3,8,8-tetramethyl-1,2,3,4,6,7,8,8a-octahydronaphthalen-2-yl)ethan-1-one (i.e., “c”; Elabbadi, page 10, lines 7-12), which as evidenced by Industrial Chemicals is commonly used to identify a mixture of all four ethanone structural isomers as claimed (Industrial Chemicals, page 3, “chemicals in this evaluation”; page 6, “chemical identity”) and which is a mixture of stereo isomers (Industrial Chemicals, page 7, 2nd paragraph), thereby reading on the claimed combination of compounds;
2-methylundecanal (“f”; Elabbadi, page 47, table 2b);
patchouli oil (i.e., “g”; Elabbadi, page 10, line 7);
(2E)-1-[2,6,6-trimethyl-3-cyclohexen-1-y1]-2-buten-1-one (i.e., “i”; Elabbadi, pages 8-9), which as evidenced by BenchChem is δ-damascone which is a mixture of eight potential stereoisomers (BenchChem, page 2), thereby reading on the claimed stereoisomer;
limonene and orange oil (i.e., “j”; Elabbadi, page 8, lines 23-24);
2-methoxynaphthalene (i.e., “k”; Elabbadi, page 17, table A);
1-oxa-12-cyclohexadecen-2-one and 1-oxa-13-cyclohexadecen-2-one (i.e., “l”; Elabbadi, page 22, table B);
dodecahydro-3a,6,6,9a-tetramethyl-naphtho[2,1-b]furan and any of its stereoisomers (i.e., “m”; Elabbadi, page 10, lines 13-14), which one of ordinary skill in the art would recognize to read on the claimed compounds;
tetrahydro-4-methyl-2-(2-methyl-1-propenyl)-2H-pyran (i.e., “n”; Elabbadi, page 11, line 30); and
9-undecenal and 10-undecenal (i.e., “o”; Elabbadi, page 18, table A).
Elabbadi teaches floral ingredients which can be benzyl salicylate (i.e., “d”; Elabbadi, page 8, lines 26-28) and amyl salicylate (i.e., “d”, pentyl salicylate as evidenced by PubChem; Elabbadi, page 9, lines 7-8), but does not teach 2-methylbutyl salicylate or (3Z)-3-hexen-1-yl salicylate (i.e., “d”), cyclohexylidene(phenyl)acetonitrile (i.e., “e”), or (+-)-3/4-(4-methyl-3-penten-1-yl)-3-cyclohexene-1-carbaldehyde (i.e., “h”).
Saudan, however, teaches a perfuming composition comprising 2-methylbutyl salicylate, pentyl salicylate, and (3Z)-3-hexen-1-yl salicylate (i.e., “d”; Saudan, page 13, example 4).
Cawkill teaches a perfume composition comprising compounds from a group comprising 9-undecanal and cyclohexylidene(phenyl)acetonitrile (i.e., “e”; Cawkill, pages 4-5, “group c”).
Birkbeck teaches a perfuming composition comprising floral ingredients selected from a group comprising benzyl salicylate and 3/4-(4-methyl-3-pentenyl)-3-cyclohexene-1-carbaldehyde (i.e., "h"; Birkbeck, page 10, lines 6-16).
Elabbadi, Saudan, Cawkill, and Birkbeck are all considered to be analogous to the claimed invention, because each reference, as well as the instant invention are in the field of perfuming compositions with floral scents. It would have been prima facie obvious to one of ordinary skill in the art to modify the composition of Elabbadi to include the salicylates taught by Saudan, the acetonitrile taught by Cawkill, and the carbaldehyde taught by Birkbeck, because Elabbadi teaches a skilled person would be able to select perfuming ingredients according to intended use and the desired organoleptic effect (Elabbadi, page 8, lines 3-4). It would be prima facie obvious to combine equivalents taught by the prior art to be useful for the same purpose in order to form a composition to be used for the very same purpose. See MPEP § 2144.06(I). In the case of the salicylates, Elabbadi teaches salicylates as floral ingredients (Elabbadi, page 10, lines 5-12), and Saudan teaches salicylate notes harmonize well with a floral note (Saudan, page 13, paragraph 0187). Therefore, it would have been obvious to use a combination of salicylates as taught by Saudan to create a desirable scent. In the case of the acetonitrile, Cawkill teaches compounds such as 9-undecanal and cyclohexylidene(phenyl)acetonitrile for the same purpose, and therefore it would be obvious to use a combination of the two. In the case of the carbaldehyde, Birkbeck teaches floral ingredients such as benzyl salicylate and the claimed carbaldehyde (i.e., “h”; Birkbeck, page 10, lines 6-16), and therefore it would be obvious to use a combination of the two.
Regarding claim 4, Elabbadi, Saudan, Cawkill, and Birkbeck together teach all of the elements of invention of claim 1. Elabbadi teaches the perfuming composition comprises a perfumery carrier, which can be isopropyl myristate (Elabbadi, page 7, lines 1-13).
Regarding claim 5, Elabbadi, Saudan, Cawkill, and Birkbeck together teach all of the elements of invention of claim 1. Elabbadi teaches the perfuming composition further comprises a perfumery carrier, a perfumery base, and optionally at least one perfumery adjuvant (Elabbadi, claim 14).
Regarding claim 6, Elabbadi, Saudan, Cawkill, and Birkbeck together teach all of the elements of invention of claim 5. Elabbadi teaches the perfuming composition further comprises a properfume, which can be 4-(dodecylthio)-4-(2,6,6-trimethyl-2-cyclohexen-1-yl)-2-butanone (Elabbadi, page 10, lines 21-22).
Regarding claim 15, Elabbadi, Saudan, Cawkill, and Birkbeck together teach all of the elements of invention of claim 2. Elabbadi teaches the perfuming composition further comprises a perfumery carrier, a perfumery base, and optionally at least one perfumery adjuvant (Elabbadi, claim 14).
Regarding claim 16, Elabbadi, Saudan, Cawkill, and Birkbeck together teach all of the elements of invention of claim 15. Elabbadi teaches the perfuming composition further comprises a properfume, which can be 4-(dodecylthio)-4-(2,6,6-trimethyl-2-cyclohexen-1-yl)-2-butanone (Elabbadi, page 10, lines 21-22).
Conclusion
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613