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.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Objections
Claims 33 and 37-40 are objected to because of the following informalities:
Claim 33 states “…violet note, tobacco note, Ionone note, Amber note, woody note,…”. For the purpose of consistency amongst the claimed notes, “Ionone note, Amber note,” should be lower case, for example, “ionone note, amber note,”.
Claims 37-40 state “m, n is 0 or 1” or “m, n are 1”, which appear to include typographical mistakes. Claims 37-40 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.
Claims 31, 43, 45, 50, and 52 are 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.
Claims 45 and 52 step (ii) state “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 claims is interpreted to state “at least one aroma chemical other than the at least one compound
Claims 31, 43, and 50 are “use” claims that do not recite method steps. The claims do not purport to claim a process, machine, manufacture, or composition of matter and fail to comply with 35 USC 112(b), see MPEP 2173.05(q).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 31, 43, and 50 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are “use” claims that do not recite method steps. The claims do not purport to claim a process, machine, manufacture, or composition of matter and fail to comply with 35 USC 101, see MPEP 2173.05(q).
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 27-36 are rejected 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).
Regarding instant application claim 27, Van Loveren relating to the known prior art of indanone aroma compounds teaches mixtures of bicyclic compounds corresponding to instant application claim 27 Formula (Ia), see Abstract; Table II, where Y is =O, m is 1, n is 0, R is H, R1 is CH3, and the dotted bonds are single bonds and double bonds
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, hereinafter the Van Loveren compound, see Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II, meeting Formula (Ia) in instant application claim 27.
Regarding instant application claim 28, the Van Loveren compound differs from the instantly claimed Formula (Ia) compound by R being H instead of CH3, as indicated with an arrow by the examiner
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, and by n being 0 instead of 1, see Table II.
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 Van Loveren 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 Van Loveren compound to add a methyl group or reposition the methyl group of the first compound in Table II and to add a -CH2- group to the ring including the carbonyl, see Van Loveren, Col. 1, Lns. 45-66, with a reasonable predictability of success for the purpose of inexpensively and efficiently producing a highly desirable fragrance compound which can provide ambery, leathery, wood, fig-like and honey aromas with tobacco and hay-like topnotes, see Van Loveren, Col. 1, Lns. 6-66, 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 instant application claim 29, the Van Loveren compound differs from the instantly claimed Formula (Ia) compound by R being H instead of CH3, as indicated with an arrow by the examiner, see above, by n being 0 instead of 1, and by the substitution -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 Van Loveren 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 Van Loveren compound to add a methyl group or reposition the methyl group of the first compound in Table II, to add a -CH2- group to the ring including the carbonyl, see Van Loveren, Col. 1, Lns. 45-66, and to substitute the =O with -OH with a reasonable predictability of success for the purpose of inexpensively and efficiently producing a highly desirable fragrance compound which can provide ambery, leathery, wood, fig-like and honey aromas with tobacco and hay-like topnotes, see Van Loveren, Col. 1, Lns. 6-66, 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, meeting the Formula (Ia) in instant application claim 29.
Regarding instant application claim 30, Van Loveren teaches the 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.
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 Van Loveren to combine the desired concentration of aroma compounds with a reasonable predictability of success for the purpose of considering cost, the nature of the end product, the effect desired on the finished product and the particular fragrance sought, see Van Loveren, Col. 11, Lns. 10-15 and MPEP 2141, meeting within the large range weight ratio in instant application claim 30.
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 instant application claims 31-33, 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 Van Loveren, Col. 10, Ln. 47-Col. 11, Ln. 68, meeting the use and method in instant application claim 31, in instant application claim 32, and in instant application claim 33.
In addition, regarding instant application claim 31, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use is not considered a claim limitation.
Regarding instant application claim 34, as stated above, Van Loveren teaches 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 range in instant application claim 34.
In addition, “[t]he normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the concentration of the compounds, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Regarding 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 in instant application claim 35 and in instant application claim 36.
Van Loveren does not teach:
The mixture includes the instant application claim 27 limitation of a compound of Formula (Ib); and,
Formula (Ib) in instant application claims 28 and 29.
Demole relates to the known prior art of tobacco flavours and aromas, see Pgs. 1938-1939.
Regarding 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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, 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 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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, 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 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 modified Van Loveren to combine the bicyclic indanone aroma compounds of Van Loveren with the damascenone tobacco aroma compounds, such as compound 5, of Demole 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 2141.
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 Van Loveren and Demole teach the desirability of bicyclic damascenone aromas, such as tobacco, woody, and amber odors, a person of ordinary skill in the art has good reason to mix bicyclic indanone and damascenone compounds 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 with an a typical damascenone aroma and organoleptic properties, see Demole, Pgs. 1938-1939 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.
Selection of a known material, such as a mixture of bicyclic indanone and damascenone 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 indanone and damascenone 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 37-45 are rejected under 35 U.S.C. 103 as being unpatentable over van Loveren et al. (US4532357, patented 30 July 1985, hereinafter Van Loveren).
Regarding instant application claims 37 and 38, Van Loveren relating to the known prior art of indanone aroma compounds teaches mixtures of bicyclic compounds corresponding to instant application claims 37 and 38 Formula (Ia), see Abstract; Table II, where Y is =O, m is 1, n is 0, R is H, R1 is CH3, and the dotted bonds are single bonds and double bonds
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, hereinafter the Van Loveren compound, see Col. 20, Ln. 1-Col. 22, Ln. 63, Tables I-II.
The Van Loveren compound differs from the instantly claimed Formula (Ia) compound by R being H instead of CH3, as indicated with an arrow by the examiner
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, see Table II.
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 Van Loveren 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 Van Loveren compound to add a methyl group or reposition the methyl group of the first compound in Table II with a reasonable predictability of success for the purpose of inexpensively and efficiently producing a highly desirable fragrance compound which can provide ambery, leathery, wood, fig-like and honey aromas with tobacco and hay-like topnotes, see Van Loveren, Col. 1, Lns. 6-66, meeting Formula (Ia), where Y is =O, m is 1, n is 0, R is CH3, R1 is CH3, and the dotted bonds are single and double bonds in instant application claim 37 and instant application claim 38.
Regarding instant application claim 39, the Van Loveren compound differs from the instantly claimed Formula (Ia) compound by R being H instead of CH3, as indicated with an arrow by the examiner
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, and by n being 0 instead of 1, see Table II.
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 Van Loveren 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 Van Loveren compound to add a methyl group or reposition the methyl group of the first compound in Table II and to add a -CH2- group to the ring including the carbonyl, see Van Loveren, Col. 1, Lns. 45-66, with a reasonable predictability of success for the purpose of inexpensively and efficiently producing a highly desirable fragrance compound which can provide ambery, leathery, wood, fig-like and honey aromas with tobacco and hay-like topnotes, see Van Loveren, Col. 1, Lns. 6-66, 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 instant application claim 40, the Van Loveren compound differs from the instantly claimed Formula (Ia) compound by R being H instead of CH3, as indicated with an arrow by the examiner, see above, by n being 0 instead of 1, and by the substitution -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 Van Loveren 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 Van Loveren compound to add a methyl group or reposition the methyl group of the first compound in Table II, to add a -CH2- group to the ring including the carbonyl, see Van Loveren, Col. 1, Lns. 45-66, and to substitute the =O with -OH with a reasonable predictability of success for the purpose of inexpensively and efficiently producing a highly desirable fragrance compound which can provide ambery, leathery, wood, fig-like and honey aromas with tobacco and hay-like topnotes, see Van Loveren, Col. 1, Lns. 6-66, 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, meeting the Formula (Ia) in instant application claim 40.
Regarding instant application claim 41, the Van Loveren compound differs from the instantly claimed Formula (Ia) compound by R being H instead of CH3, as indicated with an arrow by the examiner, see above, and by the substitution -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 Van Loveren 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 Van Loveren compound to add a methyl group or reposition the methyl group of the first compound in Table II, and to substitute the =O with -OH with a reasonable predictability of success for the purpose of inexpensively and efficiently producing a highly desirable fragrance compound which can provide ambery, leathery, wood, fig-like and honey aromas with tobacco and hay-like topnotes, see Van Loveren, Col. 1, Lns. 6-66, where Y is -OH, m is 1, n is 0, R is CH3, R1 is CH3, and the dotted bonds are single and double bonds, meeting the Formula (Ia) in instant application claim 41.
Regarding instant application claim 42, the Van Loveren compound differs from the instantly claimed Formula (Ia) compound by R being H instead of CH3, as indicated with an arrow by the examiner, see above and Table II.
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 Van Loveren 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 Van Loveren compound to add a methyl group or reposition the methyl group of the first compound in Table II with a reasonable predictability of success for the purpose of inexpensively and efficiently producing a highly desirable fragrance compound which can provide ambery, leathery, wood, fig-like and honey aromas with tobacco and hay-like topnotes, see Van Loveren, Col. 1, Lns. 6-66, meeting Formula (Ia), where Y is =O, m is 1, n is 0, R is CH3, R1 is CH3, and the dotted bonds are single and double bonds in instant application claim 42.
Regarding instant application claims 43 and 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 43 and in instant application claim 44.
In addition, regarding instant application claim 43, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use is not considered a claim limitation.
Regarding 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.
Claims 46-49 are rejected 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 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 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.
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.
Claims 50-52 are rejected 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 does not teach the limitations of instant application claims 50-52.
Regarding instant application claims 50-52:
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 50, in instant application claim 51, and in instant application claim 52.
In addition, regarding instant application claim 50, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use is not considered a claim limitation.
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