DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-11 are pending.
Claims 1, 4 and 5 are examined herein.
Claims 2, 3 and 6-11 are withdrawn (see restriction/election below).
Priority
This application is filed 4/26/2024, and claims the benefit of domestic priority as below:
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Information Disclosure Statements
One IDS(s) received on 4/26/2024 has been considered unless marked with a strikethrough.
Election/Restrictions
Applicant elects Group I, claims 1-5 and 8-9, directed to a compound of Formula (I) and/or Formula (la) and a fragranced article comprising the compound and a consumer product base in the reply filed on 6/24/2026 is acknowledged. Claims 6-7 and 10-11 (Group II) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected methods of utilizing, improving, enhancing, or modifying a consumer product base, there being no allowable generic or linking claim.
Applicant further elects 3,5-dimethylhex-3-en-2-yl 3-oxohexanoate of the Formula (I) and R1 and R6 =H; R = CH2 of Formula (Ia); body care products for a consumer product base as the elected species in the reply filed on 6/24/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
If the elected specie is not identified in the prior arts, the elected specie would be allowable if
an independent claim were drafted with that specie alone. (see MPEP 802.03)
The elected specie was not identified in the art. If Applicant drafted an independent claim drawn to only the elected specie that claim would be allowable. Examiner expanded his search to a new specie pursuant to MPEP 803.02.
Examiner expanded the search to alternative species within the genus of Formula (I) and subsequent examination is based on alternative species expansion. (see 35 USC 102 below) The expanded species include a provisionally elected compound having aliphatic 1,3-dicarbonyl functional group. The expanded specie reads on claims 1, 4 and 5, and will be examined on the merits. Claims 2, 3, 8 and 9 from Group I are withdrawn as not reading on the expanded specie. It should be noted that the full scope of claims 2, 3, 8 and 9 have not yet been fully searched.
With respect to the expanded species, the art is rejected under 35 USC 102 and 35 USC 103 below.
Abstract
The abstract of the disclosure is objected to because the abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. Currently, the abstract has 16 words.
The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The current submitted abstract is the front pages of PCT application. Examiner requests to bring in narrative form to satisfy the abstract requirement.
Correction is required. See MPEP § 608.01(b).
Claim interpretation
Claims are interpreted in accordance with the broadest reasonable interpretation (BRI) standard consistent with the specification (See MPEP 2111).
The product claims are interpreted to cover the compound per se. Any statement of use dose not distinguish the claimed product from an otherwise identical prior are product. In addition, under MPEP 2144, the prior art does not need to suggest the combination for the same advantage or result discovered by applicant.
Claim Rejections - 35 USC § 102
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 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seitz et al., (Metabolites of lesser grain borer in grains, J. Agric. Food Chem., 52, 898−908, pub’d 01/30/2004).
With respect to claim 1, Seitz teaches compounds encompassed by the instant Formula (I), including compound 67, 1-methylbutyl 2-methyl-3-oxopentanoate (e.g., namely, 2-pentyl3-oxo-2-methylpentanoate), compound 76, 1-methylbutyl 2,4-dimethyl-3-oxopentanoate (e.g., namely, 2-pentyl3-oxo-2,4-dimethylpentanoate), and compound 85, 1-methylpentyl 2,4-dimethyl-3-oxopentanoate (e.g., namely, 2-hexyl3-oxo-2,4-dimethylpentanoate) in Table 1. Seitz further discloses these compounds in odor related context. For example, Seitz’s compound 67 has X is CH2, R1/R2/R3/R4/R5 is H, and R6 is CH3 of the instant Formula (I).
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Instant Formula (I) Seitz’s compound 67
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Seitz’s compound 76 Seitz’s compound 85
As the claim interpretation, the product claims is interpreted to cover the compound per se. Moreover, although the prior art reference does not explicitly disclose the functional property for the instant application, the prior art compound is structurally identical to the claimed compound. A prior art compound that is structurally identical to the claimed compound is presumed to possess the same inherent properties as the claimed compound. The discovery of a previously unrecognized property of a prior art compound does not render the old compound patentable. (See MPEP 2112)
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.
This 35 USC 103 rejection is made in the alternative to the 35 USC 102 rejection, and addresses any limitation not found to be expressly disclosed by the anticipated references.
Claim(s) 1, 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seitz et al., (Metabolites of lesser grain borer in grains, J. Agric. Food Chem., 52, 898−908, pub’d 01/30/2004), in view of Wood et al., (US 3197500 A, pub’d 07/27/1965), and in further view of Kraft et. al. (WO 2004/050595 A1, pub’d 06/17/2004).
With respect to independent claim 1, the claim recites that a compound of formula (I).
As discussed, Seitz discloses the specific compounds corresponding to Formula (I).
Seitz fails to teach that using the Seitz’s compounds as an odorant in a fragranced article, or in a consumer product base.
Wood teaches structurally related ketopentanoate ester compounds (i.e., a 1,3-dicarbonyl when the ketone is at the beta position), and such compounds are useful in perfumery (column 1 lines 21-34). In particular, Wood teaches that certain ketopentanoate esters possess properties that make them in perfumery, including desirable odors and odor persistence, and that such properties provide practical utility in perfumes (column 1 lines 21-34). Wood further provides that specific odor descriptions for ketopentanoate esters, including peony-type, patchouli like smoky wood, and jasmine type lavender odors (examples III, IV and VI).
It would have been obvious to a PHOSITA at the time of the invention to use Seitz’s compounds as a fragrance ingredient and to incorporate it into a fragranced article taught by Wood. Wood provides to evaluate structurally related ketopentanoate esters as fragrance materials because Wood teaches that such ester provide desirable odors and odor persistence, thereby making them useful in perfumery. Thus, the combination of Seitz and Wood would have proposed the predictable advantage of using Seitz’s known compounds as a fragrance material expected to impart desirable odor properties and odor persistence, while also allowing that fragrance material.
The references is directed to the same field of endeavor and address related to the application. The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Consistently, applying KSR example rationale (C) and (D) in the independent claim 1, it would have been prima facie obvious to use of known technique to apply same or similar compounds for discovering or improving to yield predictable results. In accordance with the teachings of Wood, structurally related keto pentanoate ester compounds are highly useful in perfumery. Utilizing known Seitz compounds, specifically keto pentanoate esters that fall within instant Formula (I), yields the distinct advantage of employing a known Formula (I) compound as a fragrance material characterized by desired odor profiles, odor persistence, and predictable results.
With respect to claims 4 and 5, the claims recite that A fragranced article comprising as odorant a compound of formula (I) as defined in claim 1, and a consumer product base, wherein the article is a consumer product base selected from fine fragrance, household products, laundry products, body care products, cosmetic products and air care products.
The combination of Seitz and Wood fail to teach incorporating Seitz’s compounds into specific fine of functional consumer product applications, such as household products.
Kraft discloses aliphatic carbonyl compounds as fragrance materials (abstract). Kraft teaches that 1) aliphatic carbonyl compounds have musk characteristic and are useful in fragrance compositions, and that such compounds may be used in fine and functional perfumery, including perfumes, household products, laundry products, body care products, and cosmetics (page 1 lines 12-15, and page 4 line 33 – page 5 line 4), and 2) incorporating of the fragrance compound directly into a fragrance application or by admixing a fragrance composition containing the compound with the application (page 5 lines 26-30).
As the same rationale with respect to claim 1, it would have been obvious to a PHOSITA at the time of the invention to use Seitz’s compounds as a fragrance ingredient and to incorporate it into a fragranced article and/or functional consumer products because Kraft teaches aliphatic carbonyl compounds have musk characteristics and their use in perfumes, household products, laundry products, body care products, and cosmetics.
Conclusion
Claims 1, 4 and 5 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to SEONG JONG KIM whose telephone number is (571)272-6918. The examiner can normally be reached 7:00am-3:30pm.
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, Clinton A. Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEONG JONG KIM/ Examiner, Art Unit 1621
/CLINTON A BROOKS/ Supervisory Patent Examiner, Art Unit 1621
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