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 .
Claim Objections
Claims 21 and 22 are objected to because of the following informalities: Both claims recite the structure of Formula (I) and state “compound of formula(I)” wherein it is believed applicant meant to have a space between “formula” and “(I)”. 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.
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 21 and 25 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. Claims 22-24 and 26-37 depend on the above claims and, therefore, are also rejected.
With regards to claim 21, the claim provides for a method for imparting an aroma but does not include any steps for the method, but, since the claims do 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 method without any active, positive steps delimiting how this use is actually practiced.
With regards to claim 25, the preamble of the claim states “The u method se according to claim 22”, it is unclear what is meant to be the preamble. For purposes of compact prosecution, it will be interpreted to be the method of claim 22.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21, 23-24, and 30-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scognamiglio et al (3/16/2012, Food and Chemical Toxicology, 50, S641-S645).
With regards to claims 21 and 23-24, Scognamiglio teaches a fragrance material including the following compound:
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(page 5642).
With regards to claim 30, Scognamiglio teaches the fragrance ingredient to be used in a fragrance mixture (reading on composition) (page S641).
With regards to claims 31 and 37, Scognamiglio teaches the fragrance mixture to be used in decorative cosmetics, fine fragrances, shampoos, toilet soaps, and other toiletries (page S641).
With regards to claim 32, Scognamiglio teaches the compound to have a jasmin-like odor (page S641).
With regards to claims 33 and 35, Scognamiglio teaches the amount of compound in the mixture to be 10% or 20% (page S643)
With regards to claims 34 and 36, Scognamiglio teaches the compound to be put in corn oil (page S643)
Claims 22, 24, and 38-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minai (US 4,970,345).
With regards to claims 21, 22, and 24, Minai teaches a cyclopentene having the following structure:
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(abstract) wherein
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(abstract).
Manai is silent on the compound being used in a fragrance composition.
However, However, when the structure recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed structure is used, the claimed physical properties relating to the scent of the compound are inherently present in the prior art. 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.
With regards to claims 38-39, Manai teaches the following compound:
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(abstract) wherein
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(abstract).
Claims 21, 23, 28, and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hennion et al (4/19/1951, Chemical Laboratories of the University of Notre Dame, 1289-1296).
With regards to claims 21, 23, 28, and 38, Hennion teaches the following compound:
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(page 1289) or
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(page 1289).
Hennion is silent on the compound being used in a fragrance composition.
However, However, when the structure recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed structure is used, the claimed physical properties relating to the scent of the compound are inherently present in the prior art. 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.
Allowable Subject Matter
Claims 25-27, 29, and 40 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.
The art does not teach the claimed compounds of the above claims with the specific limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
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