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 of Group I, claims 1-14 in the reply filed on 05/05/2026 is acknowledged. Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. 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)).
Claim status
The examiner acknowledges the amendment made to the claims on 05/05/2026.
Claims 1-6, 9-10 and 12-15 are pending in the application. Claims 1 is currently amended. Claims 2-6, 9-10 and 12-14 are previously presented. Claims 7-8 and 11 are currently cancelled. Claim 15 is withdrawn without traverse in response to the restriction requirement. Claims 1-6, 9-10 and 12-14 are hereby examined on the merits.
Claim Objections
Claim 13 is objected to because of the following informalities: “2,3 diketones” should read “2,3-diketones”. Appropriate correction is required.
Claim 15 is objected to because of the following informality: the status of the claim should be “withdrawn and currently amended”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 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.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 depends from claim 1 and recites “3-ethenyl-3-methy-2,4-pentanedione”. However, an ethenyl group is unsaturated thus is not an alkyl group for R1/R2 as in formula (I) of claim 1. As such, claim 3 fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1, 6, 9-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Suganuma US Patent Application Publication No. 2003/0092599 A1 (hereinafter referred to as Suganuma).
Regarding claims 1, 6 and 9-10, Suganuma teaches a flavor composition (e.g., a fragrance composition, 0009) comprising a ketone compound represented by the general formula (1) (see the formula below). More specifically, Suganuma teaches that the ketone compound is 3-methyl-2,4-nonanedione or 3,5-decanedione (0011).
Further, Suganuma teaches that the ketone compound has buttery sensation and flavor (0005;0040, e.g., a fragrance which reminded aroma of fat/oil and feeling of animal fats such as lard, milk fat such as butter). Suganuma teaches added the flavor composition that comprises the ketone compound to a cosmetic and food to deliver a buttery sensation, to improve or strengthen fragrance (0013-0015).
PNG
media_image1.png
351
491
media_image1.png
Greyscale
It is noted that each of 3-methyl-2,4-nonanedione and 3,5-decanedione meets the instant formula (I), and 3-methyl-2,4-nonanedione meets instant claim 1. Further, each of 3-methyl-2,4-nonanedione and 3,5-decanedione has a MW of 170 g/mol thus meeting claim 6.
Further, Suganuma teaches that the ketone compound is present in the flavor composition at an amount of 0.0001-1% (0045), which encompasses the ranges as recited in claims 1 and 9-10. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claim 12, Suganuma teaches that acetoin is a conventional fragrance/flavor that could impart butter-flavor (0004). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have included acetoin in the flavor composition that comprises 3-methyl-2,4-nonanedione or 3,5-decanedione with reasonable expectation of success, for the reason that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06. In the instant case, prior art has established that both acetoin and 3-methyl-2,4-nonanedione (or 3,5-decanedione) are fragrances that could impart buttery sensation thus one of ordinary skill in the art would have been motivated to combine the two for the same purpose.
Regarding claims 13-14, since the formula of Suganuma does not encompass an alpha-diketone, and Suganuma does not mention a 2,3-diketones either, Suganuma reads on claims 13-14.
Allowable Subject Matter
Claims 2-4 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.
Claim 5 is would be allowable if 3-ethenyl-3-methy-2,4-pentanedione is removed and is rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
-Art of record fails to teach a composition comprising the compounds of claims 2-5 in a concentration of 0.00001-0.1%. To this end, Suganuma teaches a flavor composition comprising 0.0001-1%3-methyl-2,4-nonanedione and 3,5-decanedione, however, there is no motivation to modify either compound to arrive at the compounds of claims 2-4. Further, while a compound as recited in claims 2-5 is known in the record (for example, Lachowicz WO 03/082929 A1 and Kalaitzakis, “A Two-Step, One-Pot Enzymatic Synthesis of 2-Substituted 1,3-Diols”, Journal of Organic Chemistry, 2010, 75, pages 8658-8661), the record fails to teach the amount.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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, NIKKI H DEES can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHANGQING LI/Primary Examiner, Art Unit 1791
Prosecution Insights