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 .
Priority
This application is a 371 of PCT/EP2021/085881 which claims the benefit of EP 20214841.7 with an effective filing date of 17 December 2020 as reflected in the filing receipt mailed on 31 October 2023.
Status of the Claims
Claims 27-30, 32-42, 44-49, 51, and 52 are currently pending.
Claims 33, 37, and 45 are currently amended.
Claims 31, 43, and 50 are currently cancelled.
Claims 1-26 were previously cancelled.
Response to Amendments
Applicant’s amendments filed 15 April 2026 are acknowledged.
Claim Objections
Applicant’s amendments to claim 33 is sufficient to overcome the objection of the claim. The claim has been amended to all lower case. The objection is withdrawn.
Applicant’s amendments to claim 37 is sufficient to overcome the objection of the claim. The claim has been amended for clarity between m and n. The objection is withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s cancellation of claims 31, 43, and 50 are sufficient to overcome the rejection of the claims under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The rejections are withdrawn.
Applicant’s amendment to claim 45 is sufficient to overcome the rejection of claim 45 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 45 has been amended for clarity. The rejection is withdrawn.
Claim Rejections - 35 USC § 101
Applicant’s cancellation of claims 31, 43, and 50 are sufficient to overcome the rejection of the claims under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rejections are withdrawn.
Response to Arguments
Applicant’s arguments filed 15 April 2026 have been fully considered but they are persuasive, moot, or not persuasive.
Applicant’s arguments on pages 9-11 of the remarks filed on 15 April 2026 that Van Loveren and Demole do not disclose the limitations as recited in claim 27, which includes pending dependent claims 28-30 and 32-36, have been fully considered and are persuasive.
The rejection of claims 27-36 under 35 U.S.C. 103 as being unpatentable over van Loveren et al. (US4532357, patented 30 July 1985, hereinafter Van Loveren) and Demole et al. (“201. A Chemical Study of Virginia Tobacco Flavour (Nicotiana Tabacum L.) I. Isolation and Synthesis of Two Bicyclodamascenones”, published 1976, Helvetica Chimica Acta, Vol. 59, Fasc. 6, Nr. 201, Pgs. 1938-1943, hereinafter Demole) is withdrawn.
Applicant’s arguments on pages 9-11 of the remarks filed on 15 April 2026 that Van Loveren does not disclose the limitations as recited in claims 37 and 38, which includes pending dependent claims 39-42, 44, and 45, have been fully considered and are persuasive.
The rejection of claims 37-45 under 35 U.S.C. 103 as being unpatentable over van Loveren et al. (US4532357, patented 30 July 1985, hereinafter Van Loveren) is withdrawn.
Applicant’s arguments with respect to the rejections of claims 27-30, 32-42, 44, and 45 under 35 U.S.C. 103 as being unpatentable over van Loveren et al. (US4532357, patented 30 July 1985, hereinafter Van Loveren) have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Garvey et al. (US20170137398, published 18 May 2017, hereinafter Garvey).
Applicant’s arguments throughout the remarks filed on 15 April 2026 with respect to Van Loveren have been considered but are moot because the new ground of rejection does not rely on Van Loveren applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, the new ground of rejection does not rely upon Van Loveren to teach formula (Ia).
In response to applications arguments on page 11 of the remarks filed on 15 April 2026 that “Demole: Compound 5, which structurally comes closest to the present compounds (Ib) and to which the examiner points, is not taught to have any aroma properties” and “Why should the skilled person have decided to combine it” for aroma properties? The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
In this case, Van Loveren is in the known prior art field of mixtures of heterocyclic and bicyclic carbonyl aroma compounds, see Abstract; Table II, such as
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, where “[b]icyclic ketones are known for use in perfumery in the prior art”, see Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II, and is applied to teach the same.
Demole is in the known prior art field of tobacco flavours and aromas of bicyclic ketones, see Pgs. 1938-1939, and is applied to teach the same.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of using a bicyclic ketone by applying the known technique of mixtures of bicyclic ketone aroma compositions as taught by Van Loveren and Demole with a reasonable predictability of success for the purpose of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with an a typical damascenone aroma and organoleptic properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II; Demole, Pgs. 1938-1939; and, MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Van Loveren, and Demole both teach bicyclic ketone that are known in the art to have a perfumy aroma, a person of ordinary skill in the art has good reason to use any bicyclic ketone by relying upon Van Loveren and Demole before the effective filing date of the claimed invention for knowledge generally available within the bicyclic ketone art regarding mixtures for perfumes, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with an a typical damascenone aroma and organoleptic properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II; Demole, Pgs. 1938-1939; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Van Loveren teaches bicyclic ketones are known in the art for use in perfumes, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try any bicyclic ketone in an aroma composition.
For the reasons indicated above, applicant’s above arguments are not persuasive.
Applicants have not specifically argued the rejections of pending claims 46-49, 51, and 52, see MPEP 714.02.
As a result the rejections of:
Claims 46-49 under 35 U.S.C. 103 as being unpatentable over Demole et al. (“201. A Chemical Study of Virginia Tobacco Flavour (Nicotiana Tabacum L.) I. Isolation and Synthesis of Two Bicyclodamascenones”, published 1976, Helvetica Chimica Acta, Vol. 59, Fasc. 6, Nr. 201, Pgs. 1938-1943, hereinafter Demole); and,
Claims 50-52 under 35 U.S.C. 103 as being unpatentable over Demole et al. (“201. A Chemical Study of Virginia Tobacco Flavour (Nicotiana Tabacum L.) I. Isolation and Synthesis of Two Bicyclodamascenones”, published 1976, Helvetica Chimica Acta, Vol. 59, Fasc. 6, Nr. 201, Pgs. 1938-1943, hereinafter Demole), as applied to claims 46-49 in the 35 USC 103 rejection above, in view of Granier et al. (US20080274927, published 06 November 2008, hereinafter Granier) are maintained.
The above rejections are maintained in modified form.
New, Maintained, and Modified Rejections Based on the Amendments to the Claims and the Reply filed on 15 April 2026
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
For clarity between the new, modified, and maintained rejections, the specific new and modified rejections below are in italics.
Claim Objections
Claims 38-40 stand objected to because of the following informalities:
Claims 38-40 state “m, n is 0 or 1” or “m, n are 1”, which appear to include typographical mistakes. Claims 38-40 are interpreted as “mand n are 0 or 1” and “mand n are 1”.
Appropriate correction is required.
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.
Claim 52 stands rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
If the language of the claim is such that a person of ordinary skill in the art could
not interpret the metes and bounds of the claim so as to understand how to avoid
infringement, a rejection of the claim under 35 USC 112(b) is appropriate, see MPEP
2173.02.
Claim 52 step (ii) states “compounds of formula”; while, step (i) states “at least one compound of formula”. It is unclear as to whether step (ii) must include two compounds of a formula or if only one compound of a formula is needed to meet the limitations of step (ii). Step (ii) of the claim is interpreted to state “at least one aroma chemical other than the at least one compound compounds of formula”.
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 27-30 and 32-36 are newly rejected under 35 U.S.C. 103 as being unpatentable over Garvey et al. (US20170137398, published 18 May 2017, hereinafter Garvey) in view of van Loveren et al. (US4532357, patented 30 July 1985, hereinafter Van Loveren) and Demole et al. (“201. A Chemical Study of Virginia Tobacco Flavour (Nicotiana Tabacum L.) I. Isolation and Synthesis of Two Bicyclodamascenones”, published 1976, Helvetica Chimica Acta, Vol. 59, Fasc. 6, Nr. 201, Pgs. 1938-1943, hereinafter Demole).
Garvey is in the known prior art field of bicyclic ketones, see Paras. [0185]-[0241]; Claim 81.
Regarding the limitations of instant application claim 27, Garvey teaches a compound of Formula I,
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, “wherein R1 and R2 are independently: 1) hydrogen, 2) —CH3, or 3) —CH2CH3; Ra and Rb are each independently: 1) hydrogen, 2) —CH3, or 3) —CH2CH3; A
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B
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D
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E is:” “16) C(H)—C(═O)—C(R3′)(R4′)—C(R4)(R5′)—C(R3)”, or “17) C(H)—C(H)(OR5)—C(R3′)(R4′)—C(R4)(R5′)—C(R3)”, “wherin /=preceding A and =/ following E are meant to denote a double bond between A and E”, “R3, R3′, R5 and R5′ are each independently: 1) hydrogen, or 2) lower alkyl;” “R4 and R4′ are each independently: 1) hydrogen, 2) lower alkyl, 3) cycloalkyl, or 4) phenyl”, see Paras. [0185]-[0241]. The compound has the structure of Formula I wherein A
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E is C(H)—C(═O)—C(R3′)(R4′)—C(R4)(R5′)—C(R3) and R3, R3′, R4, R4′, R5, and R5′ “more preferably are each independently hydrogen or methyl”, see Paras. [0226]-[0233];[0243]-[0244]; Claim 81, meeting formula (Ia) where B is Y that is C(═O), R1 and R2 are R and R1 each independently methyl, Ra and Rb are each independently hydrogen, m is 1, n is 0, and the dotted bond is a single or double bond in instant application claim 27.
Regarding the limitations of instant application claim 28, Garvey teaches the compound has the structure of Formula I wherein A
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E is C(H)—C(═O)—C(R3′)(R4′)—C(R4)(R5′)—C(R3) and R3, R3′, R4, R4′, R5 and R5′ “more preferably are each independently hydrogen or methyl”, see Paras. [0226]-[0233];[0243]-[0244]; Claim 81, meeting formula (Ia) where B is Y that is C(═O), R1 and R2 are R and R1 each independently methyl, Ra and Rb are each independently hydrogen, m is 1, n is 0, and the dotted bond is a single or double bond in instant application claim 28.
Garvey teaches n is 0 instead of 1.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, the Garvey compound is a homolog of the instantly claimed Formula (Ia). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Garvey compound to add a -CH2- group to the ring including the carbonyl with a reasonable predictability of success for the purpose of creating compounds that bind to specific sites within organisms, see Garvey, Paras. [0012];[0018];[0354];[0411]; Claim 81, meeting formula (Ia), where Y is =O, m is 1, n is 1, R is CH3, R1 is CH3, and the dotted bonds are single and double bonds in instant application claim 28.
Regarding the limitations of instant application claim 29, Garvey teaches the compound is “17) C(H)—C(H)(OR5)—C(R3′)(R4′)—C(R4)(R5′)—C(R3)”, see Para. [0211], where R3, R3′, R4, R4′, R5, and R5′ are hydrogen or methyl, see Paras. [0226]-[0233];[0243], meeting formula (Ia) where B is Y that is C(H)(OR5), R5 is H, R1 and R2 are R and R1 each independently methyl, Ra and Rb are each independently hydrogen, m is 1, n is 0, and the dotted bond is a single or double bond in instant application claim 29.
Garvey teaches n is 0 instead of 1.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, the Garvey compound is a homolog of the instantly claimed Formula (Ia). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Garvey compound to add a -CH2- group to the ring including the carbonyl with a reasonable predictability of success for the purpose of creating compounds that bind to specific sites within organisms, see Garvey, Paras. [0012];[0018];[0354];[0411]; Claim 81, meeting formula (Ia), where Y is -OH, m is 1, n is 1, R is CH3, R1 is CH3, and the dotted bonds are single and double bonds in instant application claim 29.
Garvey does not teach:
The limitations of instant application claims 30 and 33-36.
Van Loveren is in the known prior art field of mixtures of heterocyclic and bicyclic carbonyl aroma compounds, see Abstract; Table II, such as
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, where “[b]icyclic ketones are known for use in perfumery in the prior art”, see Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II, and is applied to teach the same.
Regarding the limitations of instant application claims 30 and 34, Van Loveren teaches a mixture of bicyclic compounds in Example 2, see Table II; Col. 12, Ln. 65-Col. 14, Ln. 37, and the amount of the compounds employed in compositions can range from as little as 0.01% up to 70% of the fragrance components and will depend on considerations of cost, nature of the end product, the effect desired on the finished product and the particular fragrance sought, see Col. 10, Ln. 47-Col. 11, Ln. 68, meeting within the large range weight ratio of a combination of compounds in instant application claim 30 and in instant application claim 34.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the ratio of the compounds in the mixture, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Regarding the limitations of instant application claims 32 and 33, Van Loveren teaches use of the compounds by adding the compounds to carriers to create soaps, cosmetics, colognes, perfumes, etc. in order to impart, augment or enhance leathery, amber, honey, orange flower, saffron-like, dried fruit, tobacco, woody, fruity and ozoney aromas with leathery, amber, orange flower absolute-like topnotes, see Col. 10, Ln. 47-Col. 11, Ln. 68, meeting the use and method in instant application claim 32 and in instant application claim 33.
Regarding the limitations of instant application claims 35 and 36, Van Loveren teaches a fragrance composition comprising mixtures of Van Loveren compounds, at least one aroma chemical, such as lemon, lavender, and sandalwood essential oils, and carriers, such as alcohols, glycols, gums, gelatins, talcum powder, etc., to create chypre formulations aka perfumes, see Col. 20, Lns. 1-66, Example 20 and Col. 7, Lns. 54-65; Col. 11, Lns. 16-60; Col. 21, Ln. 50-Col. 22, Ln. 45, Table II, Example VI, meeting the composition and carrier in instant application claim 35 and in instant application claim 36.
Garvey does not teach:
The mixture including the instant application claim 27 limitation of a compound of Formula (Ib);
Formula (Ib) in instant application claims 28 and 29.
Demole is in the known prior art field of tobacco flavours and aromas of bicyclic ketones, see Pgs. 1938-1939, including “ketone 5”, see Pg. 1942, and is applied to teach the same.
Regarding the limitations of instant application claim 27, Demole teaches the instant application claim 27 limitation of a compound of Formula (Ib) as compound 5, where Y is =O, p is 1, R is H, R1 is CH3, and the dotted bond is a single bond
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a bicyclic ketone, and mixtures of such compounds, see Pg. 1939; Pg. 1942, 2. Tetrahydro-bicyclodamascenones 3 and 5 - 3. Diester 6, meeting Formula (Ib) in instant application claim 27.
Regarding the limitations of instant application claim 28, Demole teaches the instant application claim 28 limitations of a compound of Formula (Ib) as compound 5, where Y is =O, p is 1, R is H, R1 is CH3, and the dotted bonds are single bonds
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a bicyclic ketone, and mixtures of such compounds, see Pg. 1939; Pg. 1942, 2. Tetrahydro-bicyclodamascenones 3 and 5 - 3. Diester 6.
The Demole compound 5 differs from the instantly claimed Formula (Ib) compound by R being H instead of CH3, as indicated with an arrow by the examiner, see above.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, the Demole compound 5 is a homolog of the instantly claimed Formula (Ib). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Demole compound 5 to add a methyl group with a reasonable predictability of success for the purpose of efficiently producing a composition with an a typical damascenone aroma and organoleptic properties, see Demole, Pgs. 1938-1939, where Y is =O, p is 1, R is CH3, R1 is CH3, and the dotted bond is a single bond, meeting the Formula (Ib) in instant application claim 28.
Regarding the limitations of instant application claim 29, the Demole compound 5 differs from the instantly claimed Formula (Ib) compound by R being H instead of CH3, as indicated with an arrow by the examiner, see above, and by the substitution of -OH for =O.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, and -OH and =O have “very close structural similarities and similar utilities”, see MPEP 2144.09, the Demole compound 5 is a homolog of the instantly claimed Formula (Ib). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Demole compound 5 to add a methyl group with a reasonable predictability of success and to substitute the =O with -OH with a reasonable predictability of success for the purpose of efficiently producing a composition with an a typical damascenone aroma and organoleptic properties, see Demole, Pgs. 1938-1939, meeting Formula (Ib), where Y is -OH, p is 1, R is CH3, R1 is CH3, and the dotted bond is a single bond, meeting the Formula (Ib) in instant application claim 29.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used the bicyclic ketone of Garvey in the mixtures of bicyclic ketone aroma compositions as taught by Van Loveren and Demole with a reasonable predictability of success for the purpose of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with an a typical damascenone aroma and organoleptic properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II; Demole, Pgs. 1938-1939.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of using the bicyclic ketone of Garvey by applying the known technique of mixtures of bicyclic ketone aroma compositions as taught by Van Loveren and Demole with a reasonable predictability of success for the purpose of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with an a typical damascenone aroma and organoleptic properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II; Demole, Pgs. 1938-1939; and, MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Garvey, Van Loveren, and Demole all teach bicyclic ketone that are known in the art to have a perfumy aroma, a person of ordinary skill in the art has good reason to modify Garvey by relying upon Van Loveren and Demole before the effective filing date of the claimed invention for knowledge generally available within the bicyclic ketone art regarding mixtures for perfumes, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with an a typical damascenone aroma and organoleptic properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II; Demole, Pgs. 1938-1939; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as a mixture of bicyclic ketone compounds, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as the selection of bicyclic ketone compounds, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Claims 37-42 are newly rejected under 35 U.S.C. 103 as being unpatentable over Garvey et al. (US20170137398, published 18 May 2017, hereinafter Garvey).
Garvey is in the known prior art field of bicyclic ketones, see Paras. [0185]-[0241].
Regarding the limitations of instant application claim 37, Garvey teaches a compound of Formula I,
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E is:” “16) C(H)—C(═O)—C(R3′)(R4′)—C(R4)(R5′)—C(R3)”, or “17) C(H)—C(H)(OR5)—C(R3′)(R4′)—C(R4)(R5′)—C(R3)”, “wherin /=preceding A and =/ following E are meant to denote a double bond between A and E”, “R3, R3′, R5 and R5′ are each independently: 1) hydrogen, or 2) lower alkyl;” “R4 and R4′ are each independently: 1) hydrogen, 2) lower alkyl, 3) cycloalkyl, or 4) phenyl”, see Paras. [0185]-[0229]. The compound has the structure of Formula I wherein A
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B
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E is C(H)—C(═O)—C(R3′)(R4′)—C(R4)(R5′)—C(R3) and R3, R3′, R4, R4′, R5, and R5′ “more preferably are each independently hydrogen or methyl”, see Paras. [0226]-[0233];[0243]-[0244]; Claim 81, meeting formula (Ia) where B is Y that is C(═O), R1 and R2 are R and R1 each independently methyl, Ra and Rb are each independently hydrogen, m is 1, n is 0, and the dotted bond is a single or double bond in instant application claim 37.
Regarding the limitations of instant application claims 38, 39, and 42, Garvey teaches compound has the structure of Formula I wherein A
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E is C(H)—C(═O)—C(R3′)(R4′)—C(R4)(R5′)—C(R3) and R3, R3′, R4, R4′, R5, and R5′ “more preferably are each independently hydrogen or methyl”, see Paras. [0226]-[0233];[0243]-[0244]; Claim 81, meeting formula (Ia) where B is Y that is C(═O), R1 and R2 are R and R1 each independently methyl, Ra and Rb are each independently hydrogen, m is 1, n is 0, and the dotted bond is a single or double bond in instant application claim 38, in instant application claim 39, and in instant application claim 42.
Regarding the limitations in instant application claim 39, Garvey teaches n is 0 instead of 1.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, the Garvey compound is a homolog of the instantly claimed Formula (Ia). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Garvey compound to add a -CH2- group to the ring including the carbonyl with a reasonable predictability of success for the purpose of creating compounds that bind to specific sites within organisms, see Garvey, Paras. [0012];[0018];[0354];[0411]; Claim 81, meeting formula (Ia), where Y is =O, m is 1, n is 1, R is CH3, R1 is CH3, and the dotted bonds are single and double bonds in instant application claim 39.
Regarding the limitations of instant application claims 40 and 41, Garvey teaches the compound is “17) C(H)—C(H)(OR5)—C(R3′)(R4′)—C(R4)(R5′)—C(R3)”, see Para. [0211], where R3, R3′, R4, R4′, R5, and R5′ are hydrogen or methyl, see Paras. [0226]-[0233];[0243], meeting formula (Ia) where B is Y that is C(H)(OR5), R5 is H, R1 and R2 are R and R1 each independently methyl, Ra and Rb are each independently hydrogen, m is 1, n is 0, and the dotted bond is a single or double bond in instant application claim 40 and in instant application claim 41.
Regarding the limitations in instant application claim 40, Garvey teaches n is 0 instead of 1.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, the Garvey compound is a homolog of the instantly claimed Formula (Ia). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Garvey compound to add a -CH2- group to the ring including the carbonyl with a reasonable predictability of success for the purpose of creating compounds that bind to specific sites within organisms, see Garvey, Paras. [0012];[0018];[0354];[0411]; Claim 81, meeting formula (Ia), where Y is =O, m is 1, n is 1, R is CH3, R1 is CH3, and the dotted bonds are single and double bonds in instant application claim 40.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the bicyclic ketone of Garvey to select the desired variables and 6 or 5 membered heterocyclic rings with a reasonable predictability of success for the purpose of efficiently creating bicyclic ketone compounds that bind to specific sites within organisms, see Garvey, Paras. [0012];[0018];[0354];[0411]; Claim 81.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the bicyclic ketone of Garvey by applying the known technique of differing variables as taught in the differing embodiments of Garvey with a reasonable predictability of success for the purpose of efficiently creating bicyclic ketone compounds that bind to specific sites within organisms, see Garvey, Paras. [0012];[0018];[0354];[0411]; Claim 81; and, MPEP 2143 I. B-D.
In addition, “[s]tructural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties”, see MPEP 2144.08 II.A.4.(c).
Claims 44 and 45 are newly rejected under 35 U.S.C. 103 as being unpatentable over Garvey et al. (US20170137398, published 18 May 2017, hereinafter Garvey) in view of van Loveren et al. (US4532357, patented 30 July 1985, hereinafter Van Loveren).
Garvey is in the known prior art field of bicyclic ketones, see Paras. [0185]-[0241].
Garvey does not teach:
The limitations of instant application claims 44 and 45.
Van Loveren is in the known prior art field of mixtures of heterocyclic and bicyclic carbonyl aroma compounds, see Abstract; Table II, such as
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, where “[b]icyclic ketones are known for use in perfumery in the prior art”, see Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II, and is applied to teach the same.
Regarding the limitations of instant application claim 44, Van Loveren teaches use of the compounds by adding the compounds to carriers to create soaps, cosmetics, colognes, perfumes, etc. in order to impart, augment or enhance leathery, amber, honey, orange flower, saffron-like, dried fruit, tobacco, woody, fruity and ozoney aromas with leathery, amber, orange flower absolute-like topnotes, see Van Loveren, Col. 10, Ln. 47-Col. 11, Ln. 68, meeting the use and method in instant application claim 44.
Regarding the limitations of instant application claim 45, Van Loveren teaches a fragrance composition comprising mixtures of Van Loveren compounds, at least one aroma chemical, such as lemon, lavender, and sandalwood essential oils, and carriers, such as alcohols, glycols, gums, gelatins, talcum powder, etc., to create chypre formulations aka perfumes, see Col. 20, Lns. 1-66, Example 20 and Col. 7, Lns. 54-65; Col. 11, Lns. 16-60; Col. 21, Ln. 50-Col. 22, Ln. 45, Table II, Example VI, meeting the composition in instant application claim 45.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used the bicyclic ketone of Garvey in the mixtures of bicyclic ketone aroma compositions as taught by Van Loveren with a reasonable predictability of success for the purpose of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with the desired properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of using the bicyclic ketone of Garvey by applying the known technique of mixtures of bicyclic ketone aroma compositions as taught by Van Loveren with a reasonable predictability of success for the purpose of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with the desired properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Garvey and Van Loveren both teach bicyclic ketones that are known in the art to have a perfumy aroma, a person of ordinary skill in the art has good reason to modify Garvey by relying upon Van Loveren before the effective filing date of the claimed invention for knowledge generally available within the bicyclic ketone art regarding mixtures for perfumes, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing a composition by applying mixtures of perfumery aroma bicyclic ketones with the desired properties, see Van Loveren, Col. 1, Ln. 1-Col. 2, Ln. 46; Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as a mixture of bicyclic ketone compounds, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as the selection of bicyclic ketone compounds, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Claims 46-49 stand rejected in modified form under 35 U.S.C. 103 as being unpatentable over Demole et al. (“201. A Chemical Study of Virginia Tobacco Flavour (Nicotiana Tabacum L.) I. Isolation and Synthesis of Two Bicyclodamascenones”, published 1976, Helvetica Chimica Acta, Vol. 59, Fasc. 6, Nr. 201, Pgs. 1938-1943, hereinafter Demole).
Demole relating to the known prior art of tobacco flavours and aromas, see Pgs. 1938-1939.
Regarding the limitations of instant application claims 46-48, Demole teaches the instant application claims 46-48 limitations of a compound of Formula (Ib) as compound 5, where Y is =O, p is 1, R is H, R1 is CH3, and the dotted bond is a single bond
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, and mixtures of such compounds, see Pg. 1939; Pg. 1942, 2. Tetrahydro-bicyclodamascenones 3 and 5 - 3. Diester 6, meeting Formula (Ib).
The Demole compound 5 differs from the instantly claimed Formula (Ib) compound by R being H instead of CH3, as indicated with an arrow by the examiner,
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.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, see MPEP 2144.09, the Demole compound 5 is a homolog of the instantly claimed Formula (Ib). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Demole compound 5 to add a methyl group with a reasonable predictability of success for the purpose of efficiently producing a composition with an a typical damascenone aroma and organoleptic properties, see Demole, Pgs. 1938-1939, where Y is =O, p is 1, R is CH3, R1 is CH3, and the dotted bond is a single bond, meeting the Formula (Ib) in instant application claim 46, in instant application claim 47, and in instant application claim 48.
Regarding the limitations of instant application claim 49, the Demole compound 5 differs from the instantly claimed Formula (Ib) compound by R being H instead of CH3, as indicated with an arrow by the examiner, see above, and by the substitution of -OH for =O, see Pg. 1939; Pg. 1942, 2. Tetrahydro-bicyclodamascenones 3 and 5 - 3. Diester 6.
Since “compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups” “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”, and -OH and =O have “very close structural similarities and similar utilities”, see MPEP 2144.09, the Demole compound 5 is a homolog of the instantly claimed Formula (Ib). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the Demole compound 5 to add a methyl group with a reasonable predictability of success and to substitute the =O with -OH with a reasonable predictability of success for the purpose of efficiently producing a composition with an a typical damascenone aroma and organoleptic properties, see Demole, Pgs. 1938-1939, meeting Formula (Ib), where Y is -OH, p is 1, R is CH3, R1 is CH3, and the dotted bond is a single bond, meeting the Formula (Ib) in instant application claim 49.
In reference to the above claims, a rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the bicyclic ketone of Demole by adding a methyl group with a reasonable predictability of success for the purpose of efficiently producing a composition with an a typical damascenone aroma and organoleptic properties, see Demole, Pgs. 1938-1939; and, MPEP 2143 I. B-D.
In addition, “[s]tructural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties”, see MPEP 2144.08 II.A.4.(c).
Claims 51 and 52 stand rejected in modified form under 35 U.S.C. 103 as being unpatentable over Demole et al. (“201. A Chemical Study of Virginia Tobacco Flavour (Nicotiana Tabacum L.) I. Isolation and Synthesis of Two Bicyclodamascenones”, published 1976, Helvetica Chimica Acta, Vol. 59, Fasc. 6, Nr. 201, Pgs. 1938-1943, hereinafter Demole), as applied to claims 46-49 in the 35 USC 103 rejection above, in view of Granier et al. (US20080274927, published 06 November 2008, hereinafter Granier).
Demole is in the known prior art field of tobacco flavours and aromas of bicyclic ketones, see Pgs. 1938-1939, including “ketone 5”, see Pg. 1942.
Demole does not teach the limitations of instant application claims 51 and 52.
Regarding the limitations of instant application claims 51 and 52:
Demole teaches producing a composition with an a typical damascenone aroma and organoleptic properties, see Pgs. 1938-1939;
Granier relating to the known prior art of substituted bicyclo[3.3.1]nonanes as flavor and aroma ingredients, see Paras. [0001]-[0004], teaches a compound of Formula (I) similar to instant application Formula (Ib),
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, hereinafter Granier compound, where generally R4 is H, R5 is OH or taken together R4 and R5 form a carbonyl group aka =O, R2 and R3 are hydrogen, R1 is a methyl group, where in the Granier compound instantly claimed R1 is methyl and R is hydrogen, see Paras. [0004];[0020], and use of the Granier compound by adding the compound to carriers and additional odorant molecules, such as rose, lavender, and sandalwood oils to create perfume compositions, cosmetic, etc., in order to impart fruity, woody, piny, and ambery aromas, see Paras. [0006]-[0019];[0031];[0144]-[0146], Example 13, meeting the use, method, and composition in instant application claim 51 and in instant application claim 52.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Demole to use the compound in a composition to impart flavor and aroma as taught by Granier with a reasonable predictability of success for the purpose of efficiently producing a composition having much sought-after ambery woody odour notes and which may be produced from readily-available cheap and naturally available starting materials, see Granier, Paras. [0003]-[0004];[0019]-[0020];[0146].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and both Demole and Grainer teach substituted bicyclo[3.3.1]nonanes
having flavor and aroma, a person of ordinary skill in the art has good reason to mix substituted bicyclo[3.3.1]nonanes in a composition to produce the desired aroma by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently producing a composition having much sought-after ambery woody odour notes and which may be produced from readily-available cheap and naturally available starting materials, see Granier, Paras. [0003]-[0004];[0019]-[0020];[0146] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form,” such as applying the flavor and organoleptic properties of the compound of Demole in a composition, “proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.04 and 2144.05.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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