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 .
Election/Restrictions
Applicant’s election with traverse Group III (drawn to a fragrance composition), in the reply filed on 05/01/2026 is acknowledged.
Claims 1, 2-22 are pending of which, claims 1, 3-7, and 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected INVENTION, there being no allowable generic or linking claim. The restriction requirement is still deemed proper and is made Final.
Pending claims 8-16 and 19-22 have been examined on the merits.
Please note, for clarity of the record, Applicant ’s election of Formula (I) and (II), wherein R1 and R3 are tert-butyl, and R2 and R4 are ethyl.
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Note: During the course of examination, the compounds were identified in the prior art, however, the prior art discloses compound of Formula I as a precursor for preparing compound of Formula II; and does not teach or suggest using compound of Formula I as a fragrance ingredient. Therefore, the specific claimed composition is not expressly disclosed..
Response to argument
Applicant's election with traverse of Group III in the reply filed on 05/01/2026 is acknowledged. The traversal is on the ground(s) that the restriction requirement is improper because the Office has not established a proper lack of unity among the claimed invention. Applicant’s argument is not persuasive because as indicated in the restriction requirement, Koshino (page 4-5) discloses -t-butyl-2-ethyl-1,4-dioxaspiro[4.5]decane and 1-(2-t-butylcyclohexyloxy)-2-butanol, which are identical to compounds of Formula II and III, respectively, as claimed. Furthermore, Group III is further distinguished by the requirement of a specific composition containing both Formula I and II compounds with specific mass ratios, a feature not required by Group I and II. Therefore, the requirement is still deemed proper and is therefore made FINAL.
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.
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 Applicant regards as his invention.
Claims 8 and 10-16 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 8 recites “the compound represented by Formula (I) (the compound represented by Formula (II): the compound represented by Formula (I)) is 98.2 or more and 99.99:0.01 or less.” However, the claim presents a lower endpoint as a single numerical value “98.2,” while the upper endpoint is expressed as the ratio “99.99:0.01.” the claim does not explicitly indicate what the value “98.2” represents within the recited ratio. Thus, a POSITA is uncertain whether 98.2 corresponds to 98:2, as an example; which renders the claims indefinite.
Claims 10-16 are rejected for depending on a rejected claim and not resolving the aforementioned ambiguity.
Subject Matter Free of the Art of Record
The subject matter of claims 8-9 and 19-22 are free of the art of record. The closest prior art is et al., EP0616994. While, Koshino (col. 5) discloses -t-butyl-2-ethyl-1,4-dioxaspiro[4.5]decane and 1-(2-t-butylcyclohexyloxy)-2-butanol, which are identical to compound of Formula II and III, as claimed. Kohino discloses compound of Formula I as a precursor for preparing compound of Formula II. Koshino does not teach or suggest using compound of Formula I as a fragrance ingredient. Thereover, there is no motivation for a POSITA to modify the teaching of Koshino, by combining Formula II and III at specific ratios range along with other fragrance to arrive at the claimed invention. The claims 8-16 and 19-22 are not allowed because of the issues indicated above. As a result, until this issue is remedied or resolved; the claims cannot be subject of allowance.
Claims 9 and 19-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PIERRE PAUL ELENISTE whose telephone number is (571)270-0589. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm (EST).
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/P.P.E./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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