DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 07/21/2026.
3. Claims 37-51 are pending. Claims 37-51 are under examination on the merits. Claims 37, 43-44 are amended. Claims 23-36 are cancelled. Claims 45-51 are newly added. Claims 1-22 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 37-51 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 112
6. The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
7. Claim 51 is rejected under 35 USC 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 51, as written, depends from claim 37, which recites “the 1,4-butanediol mono-and/or diester of the formula (I)”. However, based on the content of the claim 37, the recited composition comprising a 1,4-butanediol diester of the formula (I) or a mixture of the 1,4-butanediol diester of formula (I), and 1,4-butanediol monoester of formula (I)”, which does not include 1,4-butanediol monoester of formula (I) alone, Thus claim 51 as being of improper dependent form for failing to further limit the subject matter of a previous claim 37.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 37-40, 43-45, 47 are rejected under 35 U.S.C. 103(a) as being unpatentable over Robertson et al. (US Pub. No. 2015/0014405 A1, hereinafter “’405”) in view of Caixia Wang (CN 104824121, machine translation, hereinafter “’121”).
Regarding claims 37-40,45: ‘405 teaches a packaging comprising the tagged cellulose ester film is thermoformed into a desired shape (Page 4, [0042]), wherein the tagged cellulose ester film comprising cellulose ester, a plasticizer, and a taggant, and wherein the taggant comprises one or more taggant components selected from the group consisting of elemental markers, molecular fluorophores, particulate fluorophores, and any combination thereof (Page 1, [0005]; Page 5, Claim 1). ‘405 teaches the plasticizer (i.e., non-aroma chemical carrier) comprising at least one selected from the group consisting of glycerol triacetate (triacetin), triethyl citrate (TEC), 1,4-butanediol diester (i.e., read on diester of the formula (I)), and at least one additive selected from the group consisting of a colorant, an opacity additive, a deterioration inhibitors (e.g., antioxidant), a degradation agent, a conductivity modifying agent, a flame retardant, a thermal stabilizer, an aroma, a flavorant, a biocide, an antifungal, an antimicrobial, an antistatic agent, and any combination thereof (Page 2, [0029]; Page 4, [0048]) with benefit of providing product authentication and counterfeit identification (Page 1, [0001]). ‘405 does not expressly teach 1,4-butanediol diester is 1,4-butanediol diacetate.
However, ‘121 teaches the use of 1,4-butanediol diacetate as preservative in spraying composition for food product (Page 5/15, [0018]). Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination, and is within the level ordinary skill in the art. In Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claims 43-44: The disclosure of ‘405 in view of ‘121 is adequately set forth in paragraph above and is incorporated herein by reference. ‘405 teaches a method for preparing an aroma chemical composition or the method for conferring an aroma to a composition for a packaging (Page 3, [0030]; Page 3, [0034]) comprising the tagged cellulose ester film is thermoformed into a desired shape (Page 4, [0042]), wherein the tagged cellulose ester film comprising incorporating a cellulose ester, a plasticizer, and a taggant, and wherein the taggant comprises one or more taggant components selected from the group consisting of elemental markers, molecular fluorophores, particulate fluorophores, and any combination thereof (Page 1, [0005]; Page 5, Claim 1). ‘405 teaches the plasticizer (i.e., non-aroma chemical carrier) comprising at least one selected from the group consisting of glycerol triacetate (triacetin), triethyl citrate (TEC), 1,4-butanediol diester, and at least one additive selected from the group consisting of a colorant, an opacity additive, a deterioration inhibitors (e.g., antioxidant), a degradation agent, a conductivity modifying agent, a flame retardant, a thermal stabilizer, an aroma, a flavorant, a biocide, an antifungal, an antimicrobial, an antistatic agent, and any combination thereof (Page 2, [0029]; Page 4, [0048]) with benefit of providing product authentication and counterfeit identification (Page 1, [0001]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination, and is within the level ordinary skill in the art. In Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 47: The disclosure of ‘405 in view of ‘121 is adequately set forth in paragraph above and is incorporated herein by reference. ‘405 teaches1,4-butanediol diester as plasticizer (Page 4, [0048]). 121 teaches the use of 1,4-butanediol diacetate as preservative in spraying composition for food product (Page 5/15, [0018]). 405 in view of ‘121 does not expressly teach 1,4-butanediol diester of the formula (I) is 1,4-butanediol dipropionate.
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held
structurally similar compounds are generally expected to have similar properties. In re Gvurik, 596 F. 2d 1012,201 USPQ 552. Closely related homologues, analogs and isomers in chemistry may create a prima facie case of obviousness. In re Dillon USPQ 2d 1 897,1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 5 13 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944).
10. Claims 37-44 are rejected under 35 U.S.C. 103 as being unpatentable over Vlad et al. (US Pub No. 2020/0038537 A1, hereinafter “’537”) in view of Robertson et al. (US Pub. No. 2015/0014405 A1, hereinafter “’405”).
Regarding claims 37-40,42: ‘537 teaches a freshening composition (Page 1, [0002]), comprising 50 wt % Floral Fresh Fragrance (Page 49, [0477]; Table 10), 42.5 wt % solvent IPD-AC® (3-methyl-1,3-butanediol-acetate) and 7.5 wt % of the following fragrance release modulators (FRMs): EtOH (ethanol), TEC (triethyl citrate), MMB (3-methyl 3-methoxyl butanol), BB (benzyl benzoate), and DPG (dipropylene glycol) (Page 50, [0483]). ‘537 does not expressly teach 1,4-butanediol diester as set forth.
However, ‘405 teaches a packaging composition comprising the tagged cellulose ester film is thermoformed into a desired shape (Page 4, [0042]), wherein the tagged cellulose ester film comprising cellulose ester, a plasticizer, and a taggant, and wherein the taggant comprises one or more taggant components selected from the group consisting of elemental markers, molecular fluorophores, particulate fluorophores, and any combination thereof (Page 1, [0005]; Page 5, Claim 1). ‘405 teaches the plasticizer (i.e., non-aroma chemical carrier) comprising at least one selected from the group consisting of glycerol triacetate (triacetin), triethyl citrate (TEC), 1,4-butanediol diester (i.e., read on diester of the formula (I)), and at least one additive selected from the group consisting of a colorant, an opacity additive, a deterioration inhibitors (e.g., antioxidant), a degradation agent, a conductivity modifying agent, a flame retardant, a thermal stabilizer, an aroma, a flavorant, a biocide, an antifungal, an antimicrobial, an antistatic agent, and any combination thereof (Page 2, [0029]; Page 4, [0048]) with benefit of providing product authentication and counterfeit identification (Page 1, [0001]).
In an analogous art of the composition comprising 1,4-butanediol, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the freshening composition by ‘537, so as to include 1,4-butanediol diester as taught by ‘405, and would have been motivated to do so with reasonable expectation that this would result in providing 1,4-butanediol diester as a plasticizer (Page 4, [0048]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held
structurally similar compounds are generally expected to have similar properties. In re Gvurik, 596 F. 2d 1012,201 USPQ 552. Closely related homologues, analogs and isomers in chemistry may create a prima facie case of obviousness. In re Dillon USPQ 2d 1 897,1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 5 13 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944).
Regarding claim 41: The disclosure of ‘537 in view of ‘405 is adequately set forth in paragraph above and is incorporated herein by reference. ‘537 teaches the freshening composition (Page 1, [0002]), where the aroma chemicals is 3a,4,5,6,7,7a-hexahydro-1H-4,7- methanoinden-6-yl acetate (Page 49, [0477]).
Regarding claims 43-44: The disclosure of ‘537 in view of ‘405 is adequately set forth in paragraph above and is incorporated herein by reference. ‘537 teaches a method for preparing an aroma chemical composition or the method for conferring an aroma to a composition such as a freshening composition (Page 1, [0002]), comprising 50 wt % Floral Fresh Fragrance (Page 49, [0477]; Table 10), 42.5 wt % solvent IPD-AC® (3-methyl-1,3-butanediol-acetate) and 7.5 wt % of the following fragrance release modulators (FRMs): EtOH (ethanol), TEC (triethyl citrate), MMB (3-methyl 3-methoxyl butanol), BB (benzyl benzoate), and DPG (dipropylene glycol) (Page 50, [0483]). ‘537 does not expressly teach 1,4-butanediol mono or diester as set forth.
However, ‘405 teaches a packaging composition comprising the tagged cellulose ester film is thermoformed into a desired shape (Page 4, [0042]), wherein the tagged cellulose ester film comprising cellulose ester, a plasticizer, and a taggant, and wherein the taggant comprises one or more taggant components selected from the group consisting of elemental markers, molecular fluorophores, particulate fluorophores, and any combination thereof (Page 1, [0005]; Page 5, Claim 1). ‘405 teaches the plasticizer (i.e., non-aroma chemical carrier) comprising at least one selected from the group consisting of glycerol triacetate (triacetin), triethyl citrate (TEC), 1,4-butanediol diester (i.e., read on diester of the formula (I)), and at least one additive selected from the group consisting of a colorant, an opacity additive, a deterioration inhibitors (e.g., antioxidant), a degradation agent, a conductivity modifying agent, a flame retardant, a thermal stabilizer, an aroma, a flavorant, a biocide, an antifungal, an antimicrobial, an antistatic agent, and any combination thereof (Page 2, [0029]; Page 4, [0048]) with benefit of providing product authentication and counterfeit identification (Page 1, [0001]).
In an analogous art of the composition comprising 1,4-butanediol, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the freshening composition by ‘537, so as to include 1,4-butanediol diester as taught by ‘405, and would have been motivated to do so with reasonable expectation that this would result in providing 1,4-butanediol diester as a plasticizer (Page 4, [0048]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held structurally similar compounds are generally expected to have similar properties. In re Gvurik, 596 F. 2d 1012,201 USPQ 552. Closely related homologues, analogs and isomers in chemistry may create a prima facie case of obviousness. In re Dillon USPQ 2d 1 897,1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 5 13 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944).
11. Claims 46, 48, 51 are rejected under 35 U.S.C. 103(a) as being unpatentable over Robertson et al. (US Pub. No. 2015/0014405 A1, hereinafter “’405”) in view of Caixia Wang (CN 104824121, machine translation, hereinafter “’121”) as applied to claim 37 above, and further in view of EuropaBio (The world’s first plant for the production of 1,4 bio-butanediol from renewable resources, 2016, hereinafter “EuropaBio”).
Regarding claims 46,51 : The disclosure of ‘405 in view of ‘121 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘405 in view of ‘121 does not expressly teach the mixture is 1,4-butanediol diacetate and 1,4-butanediol monoacetate, and
the 1,4-butanediol mono-and diester of the formula (I) is derived from 1,4-butanediol which is obtained from a renewable source, where in the 1,4-butanediol mono- and/or diester of the formula (I) the molar ratio of the ¹²C isotope to the ¹⁴C isotope is less than 10¹² : 1; where the 1,4- butanediol mono- and/or diester of the formula (I) is derived from 1,4-butanediol which is obtained from a renewable source and from a carboxylic acid R²-C(=0)OH and R³- C(=O)OH, if R¹ is -C(=0)-R³, which is/are obtained from a renewable source.
However, EuropaBio teaches the 1,4-butanediol mono- and/or diester of the formula (I) is derived from 1,4-butanediol which is obtained from a renewable source (Page 1, 1st para, lines 1-5).
Pertaining specifically to claim 51, since EuropaBio discloses the identical or substantially identical 1,4-butanediol mono- and/or diester of the formula (I) as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. the isotope molar ratio, would be expected to be the same as claimed (i.e., the molar ratio of the ¹²C isotope to the ¹⁴C isotope is less than 3x10¹²). If there is any difference between the product of ‘405 and ‘121 in view of EuropaBio and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” 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(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCPA 1975).
Regarding claim 48 : The disclosure of ‘405 in view of ‘121 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘405 in view of ‘121 does not expressly teach the mixture is 1,4-butanediol dipropionate and 1,4-butanediol monopropionate.
However, EuropaBio teaches the 1,4-butanediol mono- and/or diester of the formula (I) is derived from 1,4-butanediol which is obtained from a renewable source (Page 1, 1st para, lines 1-5).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held structurally similar compounds are generally expected to have similar properties. In re Gvurik, 596 F. 2d 1012,201 USPQ 552. Closely related homologues, analogs and isomers in chemistry may create a prima facie case of obviousness. In re Dillon USPQ 2d 1 897,1904 (Fed. Cir. 1990); In re Payne 203 USPQ 245 (CCPA 1979); In re Mills 126 USPQ 5 13 (CCPA 1960); In re Henze 85 USPQ 261 (CCPA 1950); In re Hass 60 USPQ 544 (CCPA 1944).
12. Claims 49-50 are rejected under 35 U.S.C. 103(a) as being unpatentable over Robertson et al. (US Pub. No. 2015/0014405 A1, hereinafter “’405”) in view of Caixia Wang (CN 104824121, machine translation, hereinafter “’121”), and EuropaBio (The world’s first plant for the production of 1,4 bio-butanediol from renewable resources, 2016, hereinafter “EuropaBio”).
as applied to claim 37 above, and further in view of Daniel C. Geary (US Pat. No. 4,675,177, hereinafter “’177”).
Regarding claims 49-50 : The disclosure of ‘405 in view of ‘121, and EuropaBio is adequately set forth in paragraph 11 above and is incorporated herein by reference. ‘405 in view of ‘121, and EuropaBio does not expressly teach the mixture contains the 1,4-butanediol monoester in an amount of from 0.01 to 99%, preferably 0.1 to 10% by weight relative to the overall weight of the 1,4-butanediol diester and the 1,4-butanediol monoester.
However, ‘177 teaches the compositions contain from about 0.5 to 70 weight percent of a lactate, citrate, tartrate or adipate ester of an alkylene diol or triol, or pentaerythrytol (Col. 2, lines 36-41) with benefit of providing a velvety feel and are less discernible than conventional emollients which have an oily, tacky feel (Col. 2, lines 32-35).
In an analogous art of the composition comprising 1,4-butanediol mono- or diester, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the amount of mono- or diester by’405, so as to include the mixture contains the 1,4-butanediol monoester in an amount of from 0.01 to 99%, preferably 0.1 to 10% by weight relative to the overall weight of the 1,4-butanediol diester and the 1,4-butanediol monoester as taught by ‘177, and would have been motivated to do so with reasonable expectation that this would result in providing a velvety feel and are less discernible than conventional emollients which have an oily, tacky feel as suggested by ‘177 (Col. 2, lines 32-35).
Response to Arguments
13. Applicant’s arguments with respect to claims 37-51 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
14. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Examiner Information
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
08/19/2026
bijan.ahvazi@uspto.gov
Prosecution Insights