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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 15, 2025 has been entered.
DETAILED ACTION
3. Claims 1 – 14, 16 – 20, 22 – 23, and 26 – 31 are pending in this application. Applicant’s Amendment and Remarks, filed December 15, 2025, is entered, wherein no claim is amended and claims 15, 21, and 24 – 25 are canceled.
Claims 1 – 14, 16 – 20, 22 – 23, and 26 – 31 are currently examined.
Priority
This application is a national stage application of PCT/EP2019/074102, filed September 10, 2019, which claims benefit of foreign priority document EP18193756.6, filed September 11, 2018.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
“Failure to provide a certified translation may result in no benefit being accorded for the non-English application” is pertinent only when interference arises.
Claim Objections
Claim 23 is objected to because of the following informalities:
Claim 23, lines 1, recites the status identifier as “Currently amended”, which should be replaced with “Previously presented”.
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 1 – 14, 16 – 20, 22 – 23, and 26 – 31 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.
a. Claim 1 recites “(in each case DM (dry matter), based on the total DM of the carbohydrate mixture)” in lines 5 – 6. The phrase is written within a parenthesis. It is unclear whether the parenthetical phrase is limiting and is intended to define the weight percentage calculation or is merely providing non-limiting descriptive information. Thus, the metes and bounds of the claim are not clear and the phrase renders the claim indefinite. Claims 2 – 14, 16 – 20, 22 – 23, and 26 – 31 depends from claim 1 and are, therefore, indefinite.
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:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. 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.
Claims 1 – 12, 14, 17 – 20, 22 – 23, and 26 – 31 are rejected under 35 U.S.C. 103 as being unpatentable over Zehnacker et al. (US20120315366A1, cited in the previous Office Action) in view of Darsow (US5641872A, cited in the previous Office Action).
a. Regarding claims 1 – 12, 14, 17 – 20, 22 – 23, and 26 – 31, Zehnacker et al. teaches an invention relates to a sweetener and to a method of production thereof (Abstract). The invention used carbohydrate mixture (para. [0044]) contains at least 70% by weight, preferably at least 80% and very preferably at least 90% by weight of isomaltulose (para. [0047]) and 0.01 to 15%, preferably 0.1 to 5% and particularly 0.2 to 2% by weight of sucrose, which both based on the dry weight of the total carbohydrate mixture (para. [0046]). No steps in the present invention indicate any alteration in the concentration of sucrose, providing clarity that sucrose concentration remains unchanged throughout the process. The carbohydrate mixture may further contains 0.02 to 30% by weight of trehalulose (para. [0048]). Therefore, these teachings met the limitations of claims 1, 3, 8 – 10, 18, and 28. Zehnacker et al. discloses the carbohydrate mixture in aqueous state with 40 to 60% by weight of water based on the total carbohydrate mixture (para. [0042]). Furthermore, said carbohydrate mixture used in Zehnacker et al. is obtained by an enzymatic reaction with isomaltulose synthases (para. [0044]), which is a synonym of sucrose glucosylmutase with an EC number 5.4.99.11 (para. [0004]). The pH of the aqueous solution is preferably in the neutral or acidic range corresponding to a pH of less than 8 (para. [0043]). Hydrogenation reaction takes place continuously between 80 to 120 ⁰C (para. [0061]), for example 90 ⁰C (para. [0072]) for the conversion from carbohydrate mixture to isomalt, which with the pressure of hydrogen is preferably be at least 40 bar (para. [0065]) and the liquid hourly space velocity is 0.47h-1 (para. [0072]). In an alternative embodiment, it is preferable for the two different temperature ranges to be spatially separate from one another, in the temperature from 80 ⁰C to 120 ⁰C , using the ruthenium and/or ruthenium-containing compound as the catalyst, and in the temperature range from 100 ⁰C to 150 ⁰C, using the ruthenium and/or ruthenium-containing compound as the catalyst (para. [0063]). Therefore, these teachings met the limitations of claims 1 – 4, 11, 17, and 22. Zehnacker et al. also teaches that the ruthenium-containing compound will be immobilized on a support, in particular an acidic or carbon-containing carrier (para. [0041]), and the carrier may be carbon in the form of activated carbon, and the acidic supports may be Al2O3, SiO2, H2SO4-treated ZrO2 or TiO2, or zeolite (para. [0051]), preferably using Al2O3 (para. [0056]). Therefore, these teachings met the limitations of claims 12, 14, and 29. Zehnacker et al. further teaches the conversion of isomaltulose after hydrogenation will be 100% (para. [0061]). In one embodiment, the reacted isomaltulose is hydrogenated to isomalt with a selectivity of almost 100%. The isomer ratio of 1,6-GPS to 1,1-GPM will be 56:44 (para. [0074]). Zehnacker et al. also suggests to perform a crystallization to further purify the final product (para. [0069]). In terms of the product, Zehnacker et al. teaches the expected sum of the weight percent of 1,6-GPS and 1,1-GPM is greater than 75, preferably greater than 80, more preferably greater than 86 based on the total weight of the dry substance (para. [0035]). The final product will also expect to have less than 2.5% by weight, in particular less than 0.3% by weight, most preferably no detectable amount of sucrose (para. [0036]). Zehnacker et al. teaches one of the reducing sugars, mannitol, may be 0.02 to 15 weight %, preferably 0.1 to 10 weight %, in particular 0.2 to 2.9 weight % in the final product (para. [0069]). Therefore, these teachings met the limitations of claims 1, 6 – 7, 19 – 20, and 26 – 27.
However, Zehnacker et al. does not exemplify the method where the pressure of hydrogen is16 to 22 MPa as recited in claim 1 and does not teach the step that the carbohydrate mixture may be preheated to a temperature of 30 to 80 ⁰C before hydrogenation, which is recited in claims 5, and 22 – 25.
Darsow teaches the process of preparing sugar alcohols by catalytic hydrogenation in aqueous solution with hydrogen (Abstract). In one example, Darsow discloses the method of preparing sugar alcohol, wherein the aqueous solution and hydrogen were jointly conducted in advance through a heat exchanger and heated to the extent that they entered the high-pressure tube at the temperature of 70 ⁰C. The mixture of aqueous solution and excess hydrogen was pumped back into the preheater together with fresh aqueous solution (Col. 8, Example 1, lines 43-50). Moreover, Darsow discloses the hydrogenation process would be carried out continuously at a hydrogen pressure of 100 to 400 bar and a reaction temperature of 40 to 80 ⁰C (Abstract). Higher temperatures lead to uncontrolled side reactions, which can lead to discolorations and the formation of further undesirable by-products (Col. 6, lines 1 – 4).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to combine a method of producing a sweetener from a carbohydrate mixtures of isomaltulose and sucrose with the conditions used in the production of sugar alcohols in view of Darsow because both references teach the method of making sugar alcohols, thereby, yielding predictable results. Zehnacker et al. teaches most of the limitations recited in the claimed invention, including the starting materials, the reactions from starting materials to final product, and other parameters that are used in the reactions. The pressure unit used by Zehnacker et al. is bar. After conversion, the pressure of hydrogen employed in hydrogenation is at least 4 MPa. Darsow also discloses the possible hydrogen pressure for the hydrogenation is 100 to 400 bar, which is 10 to 40 MPa after conversion. The range of hydrogen pressure would be optimized by routine experimentation to discover the best pressure for optimal reaction characteristics.
In addition, Darsow lays out the steps and the associated components used in the instrument for the production of isomalt. One would use a similar instrumentation disclosed by Darsow, including the preheater, with the knowledge provided by Zehnacker et al. in the production of isomalt. With the aqueous solution and hydrogen recycling back to the preheater, a continuous production may be achieved. For the reaction temperature, Darsow discloses the range of temperature is between 40 to 80 ⁰C and the disadvantage of using high temperature. The pressure of 100-400 bar of Darsow would reduce the requirement of high temperatures in the two -temperature steps of Zehnacker to obtain the benefit of minimizing uncontrolled side reaction. One would have performed routine experimentation to discover the best temperature for optimal reaction characteristics. Moreover, the reactants are being preserved for further reaction and the preheater will be able to keep the temperature of the reaction. With the addition of preheater, the production of isomalt will be more cost-effective and energy-efficient. Therefore, one of the skills in the art would have seen these two references and would have used the similar instrumentation, including the preheater, for a more cost-effective and energy-efficient method when producing isomalt.
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Zehnacker et al. (US20120315366A1, cited in the previous Office Action) and Darsow (US5641872A, cited in the previous Office Action) as applied to claims 1 – 12, 14, 17 – 20, and 22 – 29, above, and further in view of Kluson (Applied Catalysis A-General, 1995, Vol. 128, Issue 1, cited in the previous Office Action).
b. Regarding claims 13 and 16, Zehnacker et al. and Darsow teach the limitations discussed above. As mentioned, Zehnacker et al. only discusses the use of ruthenium metal as the catalyst (page 8).
However, Zehnacker et al. does not teach the ruthenium-based catalyst may be a bimetallic catalyst and the ruthenium content of the catalyst is 0.05 to 5.00% by weight.
Kluson teaches the use of bimetallic catalysts and some of the reported ruthenium-containing bimetallic catalysts are Ru-Sn, Ru-Fe, Ru-Pt, etc (3.5 Effects of bimetallic catalysts, para. 1). Bimetallic catalyst contains two types of active sites on the surface of the catalyst (3.5 Effects of bimetallic catalysts, para. 2). Kluson suggests that using bimetallic catalysts may increase the selectivity for unsaturated alcohols (3.5 Effects of bimetallic catalysts, para. 3). Furthermore, Kluson teaches the examples of the content of ruthenium in the catalysts, such as 5% Ru/SiO2 and 1% Ru/TiO2 used in the hydrogenation of D-fructose (Table 1).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Zehnacker et al. and Darsow with the use of ruthenium-containing bimetallic catalysts in view of Kluson because Kluson teaches the examples of using ruthenium-containing catalysts in the hydrogenation of D-fructose. It would have been obvious for one skilled in the art to use ruthenium-containing catalysts in the production of isomalt as the production also involves hydrogenation of the sugar mixtures. As Zehnacker et al. teaches all the limitations for the claimed invention and Kluson further teaches the details of using ruthenium-based catalyst, one of the skills in the art would have seen these references and combined the knowledge provided by Kluson about ruthenium-containing catalyst for the catalyst used in the hydrogenation during the production of isomalt. The content of ruthenium in the catalyst would be optimized by routine experimentation to discover the proper percentage by weight for optimal catalytic characteristics. One of the skills in the art would have a reasonable expectation of success to combine the teachings of Zehnacker et al. and Darsow with the use of ruthenium-containing bimetallic catalysts in view of Kluson as these references teach the limitations of the claimed invention explicitly and they would predictably catalyze the same reaction.
Responses to Applicant’s Remarks:
Applicant’s Remarks, filed December 15, 2025, have been fully considered and are found to be not persuasive.
Regarding the unexpected results, Applicant provides supplementary data in the Supplementary Table A and Supplementary Table B (page 8 – 9 of Applicant’s Remarks). Applicant conducts further study to demonstrate unexpected results in regard to the claimed hydrogen pressure. Applicant indicates that the reduction of sucrose is 0% when pressure is at 18 MPa in both temperature setting, whereas the reduction of sucrose is 25% when pressure is at 5 MPa in both temperature setting. The argument is moot because any evidence submitted to traverse the rejection on a basis not otherwise provided for must be by way of an oath or declaration. The examiner appreciates the additional data provided, which aids further understanding of the invention. However, the additional data has not demonstrated the criticality of the upper end of the claimed hydrogen pressure. The submitted data does not include conditions above 22 MPa. Therefore, the data is not commensurate in scope with the claimed range.
Conclusion
No claim is found to be allowable.
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/H.Y.L./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693