Prosecution Insights
Last updated: April 19, 2026
Application No. 18/284,659

ARYL/ALKENYL-PENTENAL DERIVATIVES AS AROMA CHEMICALS

Non-Final OA §101§102§112
Filed
Sep 28, 2023
Examiner
GODENSCHWAGER, PETER F
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
BASF Corporation
OA Round
1 (Non-Final)
68%
Grant Probability
Favorable
1-2
OA Rounds
3y 0m
To Grant
86%
With Interview

Examiner Intelligence

Grants 68% — above average
68%
Career Allow Rate
687 granted / 1012 resolved
+2.9% vs TC avg
Strong +18% interview lift
Without
With
+18.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
30 currently pending
Career history
1042
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
44.5%
+4.5% vs TC avg
§102
21.9%
-18.1% vs TC avg
§112
21.4%
-18.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1012 resolved cases

Office Action

§101 §102 §112
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. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis ( i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections - 35 USC § 112/101 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 appl icant regards as his invention. 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 16-20 are 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. Claim s 16-20 provides for the use of a compound , but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim s 16-20 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki , 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner , 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale , or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 16 , 20-23, 25, and 27-28 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Hoffmann La Roche (GB 1407943 A) . Regarding Claims 16 and 20: Hoffmann La Roche teaches a compound of the following formula: wherein R 1-3 may each be a alkyl group of 1-7 carbon atoms, preferably methyl (Pg. 1, Lns . 20-40). Such a compound reads on a compound of claimed formula (I) wherein R 1 is C 3 branched alkenyl, R 2 is H, and R 3-4 are C 1 alkyl. As such compounds are provided in an organic solvent ( Pg. 1, Lns . 70-80) they are deemed to have been used to impart an aroma impression to a composition. Regarding Claims 21 and 23: Hoffmann La Roche teaches the compound present in solvent (step of adding to a composition) ( Pg. 1, Lns . 70-80 ). The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. the claimed aroma impression would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada , 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients. Regarding Claim 22: Hoffmann La Roche teaches the solvent as cyclohexane which is capable of cleaning (cleaning composition) (Pg. 1, Lns . 70-80) . Regarding Claims 25 and 27: Hoffmann La Roche teaches the compound present in solvent such as cyclohexane (non-aroma chemical carrier) (Pg. 1, Lns . 70-80). Regarding Claim 2 8 : Hoffmann La Roche teaches the solvent as cyclohexane which is capable of cleaning (cleaning composition) (Pg. 1, Lns . 70-80). Claim(s) 16-19 and 21-28 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Stoltz et al. (Non-Carbonyl-Stabilized Metallocarbenoids in Synthesis: The Development of a Tand e m Rhodium-Catalyzed Bamford-Stevens/Thermal Aliphatic Claisen Rearrangement Sequence” J. Am. Chem. Soc. 2002, 124, 12426-12427 and Supporting Information ). Regarding Claims 16-18: Stoltz et al. teaches the compound (Table 1): . Such a compound reads on the claimed compound of formula (I) wherein R 1 is phenyl, R 2 is H, and R 3-4 are methyl. A s the compound is provided in an organic solvent ( Table 1 ) they are deemed to have been used to impart an aroma impression to a composition. Regarding Claim 19: Stoltz et al. teaches an alternative compound (Table 1) : Such a compound reads on the claimed compound of formula (I) wherein R 1 is phenyl, R 2 is H, and R 3 is H, and R 4 is methyl. As the compound is provided in an organic solvent (Table 1) they are deemed to have been used to impart an aroma impression to a composition. Regarding Claims 21 and 23: Stoltz et al. teaches the compound present in solvent (step of adding to a composition) ( Table 1 ). The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. the claimed aroma impression would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada , 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients. Regarding Claim 22: Stoltz et al. teaches the solvent as dichloroethane which is capable of cleaning (cleaning composition) ( Table 1 ). Regarding Claim 24: Stolz et al. teaches the compound present in 1.12 wt % (41.9 mg in 3.75 g of dichloroethane) (Pg. 26 of Supporting Information). Regarding Claims 25 and 27: Stoltz et al. teaches the compound present in solvent (non-aroma chemical carrier) (Table 1). Regarding Claim 2 6 : Stolz et al. teaches the compound present in 1.12 wt % (41.9 mg in 3.75 g of dichloroethane) (Pg. 26 of Supporting Information). Regarding Claim 2 8 : Stoltz et al. teaches the solvent as dichloroethane which is capable of cleaning (cleaning composition) (Table 1). Allowable Subject Matter Claim s 29-30 are allowed. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT PETER F GODENSCHWAGER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3302 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 8:30-5:00, M-F EST . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Mark Eashoo can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1197 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /PETER F GODENSCHWAGER/ Primary Examiner, Art Unit 1767 March 26, 2026
Read full office action

Prosecution Timeline

Sep 28, 2023
Application Filed
Mar 26, 2026
Non-Final Rejection — §101, §102, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
68%
Grant Probability
86%
With Interview (+18.1%)
3y 0m
Median Time to Grant
Low
PTA Risk
Based on 1012 resolved cases by this examiner. Grant probability derived from career allow rate.

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