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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 05/20/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
The application is examined in view of compound B1 (2-isopropenyl-3,3-dimethyl-pent-4-en-1-ol) as specific compound of formula (I). Claims 25-27 read on the elected species and are under examination; claims 17-23 do not read on the elected species and are withdrawn from consideration.
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Claims 17-23, 25-30 are pending; claims 25-27 are under examination.
Terminal Disclaimer
The terminal disclaimer filed on 05/20/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent application 18284659 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Gebauer et al. (US4385185).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Gebauer et al. teaches compound of formula I and formula II as well as their reduction derivative (from ketone to hydroxy) as fragrant and flavoring substance (abstract; column 6, line 5-21; column 9, example 8-9; claim 9). On example is 3-allyl-3-methyl-hex-4-en-2-ol (column 6, line 34-36).
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3-allyl-3-methyl-hex-4-en-2-ol
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3-allyl-3-methyl-hex-4-en-2-ol (shown Methyl group)
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Gebauer et al. is that Gebauer et al. do not expressly teach compound B1.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Gebauer et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to prepare and use compound B1 as fragrance because compound B1 is position isomer of a known fragrance compound 3-allyl-3-methyl-hex-4-en-2-ol. MPEP2144.09, A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (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. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Under guidance from Gebauer et al. teaching fragrance compound 3-allyl-3-methyl-hex-4-en-2-ol, which as same core structure as compound B1, but with three methyl groups at different position of core structure, it is obvious for one of ordinary skill in the art to prepare use compound B1 as fragrance and produce instant claimed invention with reasonable expectation of success.
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2-isopropenyl-3,3-dimethyl-pent-4-en-1-ol
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Core structure
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3-allyl-3-methyl-hex-4-en-2-ol
Regarding claims 25-26, prior art teaches compound B1 as fragrance, the properties of aroma is inherency of prior art compound. Since prior art teaches the same fragrance compound, this same fragrance must have the same aroma properties.
Regarding claim 27, it is within skill of one artisan in the art to adjust amount of fragrance in the composition and have 0.01% to 70%, especially in the absence of showing criticality of claimed range.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argue that olfactory properties are sensitive to structure change and all related arguments are incorporated herein by reference.
In response to this argument: this is not persuasive. The two examples from Scent and Chemistry have very unique bi and tricycle structure, and they don’t represent general structure of fragrance and flavor compounds with numerous different structures. Without reading the whole book, even the section of 3.4 (The concept of Profile and Bulky Groups), there is no such conclusion that position isomers of fragrance would have completely different properties, and the one artisan in the art can only conclude that these two bi or tricycle compound with unique rigid ring structure may have different olfactory properties when the substituent at the different ring position because of different dipole moment and osmophoric groups. Thus, these two examples can not be applied to the fragrance and flavor compounds with numerous different structures in general. As discussed in the above 103 rejection, the elected species compound B1 and prior art compound (3-allyl-3-methyl-hex-4-en-2-ol ) share a core structure and are completely structurally different from those examples in Scent and Chemistry, and there is no evidence to show the difference of methyl group location would change dipole moment and or osmophoric groups. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (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. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Therefore, it is till obvious for one of ordinary skill in the art to prepare applicant’s claimed compound with reasonable expectation of success.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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