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 .
DETAILED ACTION
This Office action is based on the 18/698849 application originally filed April 05, 2026.
Amended claims 1, 2, 4-6, 8, 10-14, 16-28, filed April 05, 2026, are pending and have been fully considered. Claims 3, 7 and 9 have been canceled. Claims 16-28 are new.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4, 5, 12, 15, 16, 18, 19, 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann-La Roche (GB 1027970 A) hereinafter “Hoffmann”.
Regarding Claims 1, 2, 4, 5, 12, 15, 16, 18, 19, 24 and 25
Hoffmann discloses on page 1 lines 9-11, acetylene carbinols and a process for the manufacture thereof. Hoffmann discloses on page 1 lines 22-24, acetylene carbinols are accordingly useful and used as odorants in the production of perfumes and other scented compositions. Hoffmann discloses on page 2 lines 13-21, the acetylene carbinols provided possess an exceedingly pleasant, flower - fruitlike fragrance. Moreover, the fragrance is long-lasting. By virtue of such properties the present carbinols are useful and used as odorants in the preparation of perfumes and other perfume products. Furthermore, they are especially well suited for use as fixatives and base-odorants.
Hoffmann discloses on page 1 lines 25-29, the novel acetylene carbinols aforesaid are manufactured by ethynylating an aldehyde of the formula II:
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wherein R and R1 each represent a hydrogen atom or an alkyl group containing from one to six carbon atoms (e.g. the methyl, ethyl, propyl, isopropyl, butyl, pentyl or hexyl group) and the broken line denotes an optional bond.
It is to be noted, Hoffmann discloses the claimed Formula (Ia) but fails to further disclose the isomers and/or stereoisomer of claims 2 and 5 of the present invention.
However, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that 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). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c). Other structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers); In re Hoch, 428 F.2d 1341, 1344, 166 USPQ 406, 409 (CCPA 1970) (acid and ethyl ester); In re Druey, 319 F.2d 237, 240, 138 USPQ 39, 41 (CCPA 1963).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that Formula (II) of would have the same structural similarities of the claimed isomers and/or stereoisomers of Formula (Ia), (Ib), (Ic) and (II) due to the properties and utilities of Formula (Ia), (Ib), (Ic) and (II) are the same or similar.
Claim(s) 6, 8, 10, 11, 13-15, 17, 20-23 and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann-La Roche (GB 1027970 A) hereinafter “Hoffmann” in view of Harrison et al. (US 2018/0169603) hereinafter “Harrison” and Lamparsky (US 3,920,752).
Regarding Claims 6, 8, 10, 11, 13-15, 17, 20-23 and 26-28
Hoffmann discloses on page 1 lines 9-11, acetylene carbinols and a process for the manufacture thereof. Hoffmann discloses on page 1 lines 22-24, acetylene carbinols are accordingly useful and used as odorants in the production of perfumes and other scented compositions. Hoffmann discloses on page 2 lines 13-21, the acetylene carbinols provided possess an exceedingly pleasant, flower - fruitlike fragrance. Moreover, the fragrance is long-lasting. By virtue of such properties the present carbinols are useful and used as odorants in the preparation of perfumes and other perfume products. Furthermore, they are especially well suited for use as fixatives and base-odorants.
Hoffmann discloses on page 1 lines 25-29, the novel acetylene carbinols aforesaid are manufactured by ethynylating an aldehyde of the formula II:
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wherein R and R1 each represent a hydrogen atom or an alkyl group containing from one to six carbon atoms (e.g. the methyl, ethyl, propyl, isopropyl, butyl, pentyl or hexyl group) and the broken line denotes an optional bond.
Hoffmann fails to further disclose Formula (III) and Formula (X) of the presently claimed invention.
However, it is known in the art for Formula (III) and Formula (X) to be present in fragrance compositions, as taught by Harrison and Lamparsky.
Harrison discloses a fragrance composition comprising 6,8-dimethylnonan-2-ol (see paragraphs 0001 and 0142 (Table 001).
Lamparsky discloses a fragrance composition comprising the γ, δ-unsaturated aldehydes of the present invention have the following general formula (I):
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wherein R.sub.1 is alkyl of 1-9 carbon atoms or alkenyl of 2-9 carbon atoms, R.sub.2 and R.sub.3 are hydrogen or alkyl of 1-6 carbon atoms, R.sub.4 is hydrogen, alkyl of 1-6 carbon atoms or alkenyl of 2-6 carbon atoms and R.sub.5 and R.sub.6 are hydrogen or methyl. These compounds possess utility as odorants having a floral or fruity odor, or flavorants having a fruity taste. While the aroma of these compounds is not limited thereto, a citrus character predominates.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the chemical structures of Harrison and Lamparsky to the fragrance composition of Hoffmann. The motivation to do so is to use known chemical structures that aid in aroma performance in a fragrance/perfume composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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