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 responsive to Applicant’s Amendment and Remarks, filed June 10, 2026. The remarks, filed June 10, 2026, is acknowledged, wherein no claim is amended.
Claims 1 – 19 are pending in this application and are currently examined.
Priority
This application is a national stage application of PCT/EP2020/066154, filed June 11, 2020, which claims benefit of foreign priority document FR1907089, filed June 28, 2019, this foreign priority document is not in English.
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 only pertinent when interference arises.
The following are the maintained grounds of rejection necessitated by Applicant’s Amendment and Remarks, filed June 10, 2026, wherein no claim is amended. Previously cited references have been used to establish the maintained grounds of rejection.
Maintained 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 – 4, 7 – 11, and 15 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over Van den Bergh (US2017/0342511A1) in view of Cheng (Biotechnology and Bioengineering, 1992, Vol. 40, Issue 4, page 498 – 504, cited in PTO-892 on March 10, 2026), with evidence provided by Dabbawala et al. (Applied Catalysis A: General, 2020, Vol. 608, cited in PTO-892 on March 10, 2026), Francisco et al. (Chemical Engineering Journal, 2011, Vol. 172, Issue 1, page 184 – 192, cited in PTO-892 on March 10, 2026), and Berger et al. (Microporous and Mesoporous Materials, 2005, Vol. 83, Issue 1 – 3, page 333 – 344, cited in PTO-892 on March 10, 2026).
Van den Bergh teaches a process for the separation of monosaccharides from an aqueous solution comprising the monosaccharide (Abstract). The invention is for separating monosaccharides from aqueous solution because monosaccharide like glucose, xylose, and mannose have significant direct use and commercial interest and they are also a more attractive starting point for making interesting derivative molecules in higher yield and purity and with less complicated processes (para. [0016]). The process comprising (a) the solution comprises one or more salts and/or mineral acids; (b) the solution is contacted with a zeolite adsorbent for adsorbing the monosaccharide on the zeolite; (c) the zeolite with the adsorbed monosaccharide is separated from the solution; and (d) the monosaccharide is separated from the zeolite absorbent (para. [0018 – 0020]). The separation process steps (b) – (d) are conveniently carried out in a chromatography type of process, wherein the zeolite adsorbent is the stationary phase and water is used as eluent (para. [0022]). Thus, Van den Bergh teaches a process for liquid-phase separation of monosaccharides, such as glucose and xylose, by adsorption on a zeolite, wherein the method comprises contacting the solution with zeolite adsorbent via chromatography to obtain the adsorbed phase and separating the monosaccharide from the zeolite absorbent, which corresponds to the claimed process of claim 1. Van den Bergh teaches that suitable zeolite may be FAU zeolites (para. [0023]), thereby reading on the claimed FAU-type zeolite adsorbent of claim 1. These zeolites are shaped in the form of spheres with a spherical diameter between 100 – 1500 micron. The shaped zeolite comprises zeolite in the form of powder and a binder. The binder may be alumina and silica (para. [0025]). The disclosure corresponds to the limitation of claims 10 and 17. Water acts as a desorbent for glucose. The disclosure of Van den Bergh reads on the limitation “water” of claim 8. Van den Bergh further teaches that simulated moving bed (SMB) technology would be very suitable to perform this separation since people skilled in the art know that full peak separation on the column is with this technology not required to work at high glucose purity and yield (para. [0073]). The following is the schematic of SMB configuration (page 18, Figure 6):
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This SMB configuration consists of 8 columns divided in 4 zones in a 2-2-2-2 configuration. The system is operated at 20 ⁰C. The feed, extract, raffinate, eluent, and waste flows are set to 0.84, 1.92, 2.0, 7.0, and 3.92 mL/min, respectively (para. [0080]). The monosaccharide that is not adsorbed will be forming a raffinate stream and the monosaccharide desorbed from the adsorbent will form the extract stream. Thus, the disclosure of Van den Bergh reads on the dependent claim limitations directed to SMB, chromatographic operation, and multiple column or bed configuration of claims 7, 9, and 15 – 16. The disclosure also reads on the claimed liquid phase and adsorbed/desorbed phase separation of claims 1 and 7
However, Van den Bergh does not teach that the FAU-type zeolite crystals has an Si/Al atomic ratio of greater than 1.5 to 2.74 and comprising barium. Van den Bergh does not teach the zeolite crystals having a diameter of less than or equal to 2 μm.
Cheng teaches a separation of fructose and glucose in an adsorption column (Abstract). Adsorptive separation is the current commercial practice using zeolite Y, wherein the cations for zeolite Y are most likely calcium, barium, and potassium (page 498, Left Col., para. 1). Thus, Cheng teaches zeolite Y comprising barium, which corresponds to the limitation “comprising barium” of claim 1. Cheng conducts the separation study of glucose-fructose using an isothermal column packed with zeolites for the effectiveness of adsorbents as well as the equilibrium and kinetic parameters for the adsorption (page 498, Right Col., para. 2). The zeolite is Y type with 5.78% Na, 14.63% Al, and 18.31% Si. The degree of exchange is about 68% (page 499, Left Col., para. 2). Cheng determines that the flow rate of desorbent, temperature, amount of mixture injected, and exchangeable cations in the zeolite are important factors that affect the separation of glucose and fructose. The criterion for quantifying the effectiveness of separation is the efficiency of separation (ES), which takes into account the mean distances of the elution peaks of the species as well as the spread of each peak. Hence the larger the ES factor, the less overlapping of the two peaks and the better separation in general (page 500, Left Col., para. 1). Based on the summary results of separation (page 500, Table I):
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Ba-Y zeolite as an adsorbent provides the best separation results (page 502, Left Col., para. 1).
Francisco et al. teach the recovery of glucose on different types of zeolite-based adsorbents from an aqueous solution (Abstract). Francisco et al. conclude that X- and Y-type zeolites exhibiting Faujasite structure show higher glucose uptake than LTL structures. In terms of Si/Al ratio, X-type zeolites show higher adsorption capacity for glucose than Y-type. From the differences found for X and Y zeolites (same FAU network but different Si/Al ratio), Francisco et al. conclude that the higher the Si/Al ratio, the higher the equilibrium adsorption for D-glucose. The extent of zeolite adsorption of glucose from aqueous solutions depends on the strength of the complex formed between sugar and the zeolite cations and on the geometric constrains imposed by number, type, and position of the cations within the zeolitic cavities (page 186, Left Col., para. 6; Right Col., para. 1).
Berger et al. teach that zeolite Y is obtained with a particle size of ca. 1 μm or below in the conventional industrial scale synthesis.
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 select a Ba-Y zeolite adsorbent having an Si/Al atomic ratio greater than 1.5 and a crystal size of about 1 μm or less for use in the monosaccharide separation process taught by Van den Bergh in view of Cheng, Francisco et al., and Berger et al. because Van den Bergh teaches a liquid-phase chromatographic adsorption process for separating monosaccharides, including glucose and xylose, from an aqueous solution by contacting the solution with a zeolite adsorbent, wherein the monosaccharide is adsorbed on the zeolite and thereafter separated from the zeolite adsorbent. Van den Bergh also teaches that suitable zeolites including FAU zeolites and that water may be used as an eluent/desorption solvent. Although Van den Bergh does not explicitly teach that the FAU-type zeolite comprises barium or has the presently claimed Si/Al ratio and crystal size, Cheng teaches that zeolite Y is commercially used for glucose/fructose adsorption separation and that the exchangeable cation in zeolite Y affects the separation, with Ba-Y providing the best separation results among the tested Y-type zeolites. Francisco et al. further teach that faujasite-type zeolites are suitable for glucose uptake and that glucose adsorption is affected by the Si/Al ratio and by the type and position of cations within the zeolitic cavities. Dabbawala et al. provide the support that zeolite Y is a member of the faujasite family and has a Si/Al atomic ratio greater than 1.5. Berger et al. teach that zeolite Y is conventionally obtained with a particle size of about 1 μm or less. Therefore, one of ordinary skill in the art would have been motivated to select a Ba-Y faujasite zeolite having an Si/Al atomic ratio greater than 1.5 and a conventional zeolite Y crystal size of about 1 μm or less for the known chromatographic monosaccharide separation process of Van den Bergh in order to improve or optimize glucose adsorption using a known FAU-type zeolite adsorbent and known cation-exchanged zeolite Y materials. One of ordinary skill in the art would have had a reasonable expectation of success to select a Ba-Y zeolite adsorbent having an Si/Al atomic ratio greater than 1.5 and a crystal size of about 1 μm or less for use in the monosaccharide separation process taught by Van den Bergh in view of Cheng, Francisco et al., and Berger et al. because Van den Bergh already teaches that monosaccharides may be separated by adsorption on zeolite adsorbents, including FAU zeolites, and that the process may be carried out by chromatography or SMB, Cheng teaches that Ba-Y is effective in sugar adsorption separation and identifies barium as a suitable exchangeable cation for zeolite Y, Francisco et al. further confirm that FAU-type zeolites are suitable for glucose uptake and that glucose adsorption depends on zeolite structure, Si/Al ratio, and cation characteristics. Thus, selecting a known Ba-Y FAU zeolite having the claimed Si/Al range would have involved the use of a known zeolite adsorbent for its known adsorption function in a known chromatographic sugar-separation process, with only routine optimization of zeolite composition and operating conditions required to obtain the desired glucose-enriched adsorbed phase and xylose-enriched liquid phase.
Claims 5 – 6 and 12 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Van den Bergh (US2017/0342511A1) in view of Cheng (Biotechnology and Bioengineering, 1992, Vol. 40, Issue 4, page 498 – 504, cited in PTO-892 on March 10, 2026), with evidence provided by Dabbawala et al. (Applied Catalysis A: General, 2020, Vol. 608, cited in PTO-892 on March 10, 2026), Francisco et al. (Chemical Engineering Journal, 2011, Vol. 172, Issue 1, page 184 – 192, cited in PTO-892 on March 10, 2026), and Berger et al. (Microporous and Mesoporous Materials, 2005, Vol. 83, Issue 1 – 3, page 333 – 344, cited in PTO-892 on March 10, 2026) as applied to claims 1 – 4, 7 – 11, and 15 – 19 above, and further in view of Chao et al. (US4516566, cited in PTO-892 on December 9, 2024).
Van den Bergh, Cheng, Francisco et al., and Berger et al. teach the limitations discussed above.
However, Van den Bergh, Cheng, Francisco et al., and Berger et al. do not teach the zeolite comprising barium, wherein the barium is in the form of barium oxide with the exchange rate of greater than 50%. These references do not teach that the zeolite has a total content of oxides of alkali metal or alkaline-earth metal ions other than barium and sodium, wherein an exchange rate of all said ions to the alkali metal or alkaline-earth metal ions is less than 30%.
Chao et al. teach a process for a liquid phase separation of sugar mixture (Col. 1, lines 8 – 11). Chao et al. use three different zeolites including NaX, BaX, and BaY (Col. 10, lines 5 – 10):
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wherein BaY contains Na2O and BaO, wherein each Na+ and Ba2+ has an exchange level of 30% and 70%, respectively.
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 select the BaY zeolite composition disclosed by Chao et al. for the use in the monosaccharide separation process as taught by Van den Bergh, Cheng, Francisco et al., and Berger et al. because Chao et al. teach that BaY is a known zeolite composition used in liquid-phase sugar separation and disclose a BaY zeolite containing Na2O and BaO, wherein Na+ and Ba2+ have exchange levels of 30% and 70%, respectively. Thus, Chao et al. teach barium in BaO form with a Ba2+ exchange rate greater than 50%, greater than 60%, and greater than or equal to 65%, as required by claim 5 and 12 – 13. Chao et al. also disclose a BaY zeolite in which the exchanged cations are sodium and barium. Therefore, the total content of oxides of alkali metal or alkaline-earth metal ions other than barium and sodium would be absent or 0%, which is less than 30% and within the claimed range of between 0% and 5%, as required by claims 6 and 14. One of ordinary skill in the art would have been motivated to select the BaY zeolite composition disclosed by Chao et al. because BaY is known for liquid phase sugar separation and because the prior art collectively teaches that zeolite cation identity affects sugar adsorption and separation performance. One of ordinary skill in the art would have had a reasonable expectation of success in selecting the BaY zeolite composition disclosed by Chao et al. because Chao et al. teach that the selected BaY exchanged-cation composition is already used in liquid phase sugar separation, and Cheng further teaches that Ba-Y provides effective separation results among Y-type zeolites. Therefore, selecting the known Ba-dominant BaY exchanged-cation composition for use in the known monosaccharide adsorption process would have involved the use of a known zeolite adsorbent composition for its known adsorption/separation function.
Responses to Applicant’s Remarks:
Applicant’s Remarks, filed June 10, 2026, have been fully considered and are found to be not persuasive.
Applicant argues that Van den Bergh teaches away from the claimed process because Van den Bergh discloses that the adsorption of xylose on FAU appears higher compared to glucose, and therefore one would expect xylose to be adsorbed on the FAU zeolite rather than being present in a xylose-enriched liquid phase. Applicant further argues that Van den Bergh does not teach the claimed adsorption of glucose on a FAU-type zeolite to obtain a glucose-enriched adsorbed phase and a xylose-enriched liquid phase. However, the argument is not persuasive because the rejection does not rely on Van den Bergh alone as teaching the final selected Ba-Y adsorbent composition or the final glucose-over-xylose selectivity of the modified adsorbent. Van den Bergh is relied upon for teaching the general liquid-phase chromatographic adsorption process for separating monosaccharides, including glucose and xylose, using a zeolite adsorbent, wherein the non-adsorbed monosaccharide forms a raffinate stream and the adsorbed/desorbed monosaccharide forms an extract stream. The selection of the particular FAU-type Ba-Y zeolite adsorbent is provided by the combined teachings of Cheng and Francisco et al. Cheng teaches that exchangeable cations in zeolite Y are important factors affecting sugar separation and that Ba-Y provides the best separation results among the tested Y-type zeolites. Francisco et al. further teach that FAU-type zeolites adsorb glucose and that glucose adsorption depends on the Si/Al ratio and the number, type, and position of cations within the zeolitic cavities. Therefore, one of ordinary skill in the art would not have been limited to the particular FAU materials tested in Van den Bergh, but would have been motivated to select a known Ba-Y FAU-type adsorbent for use in the known monosaccharide chromatograph process of Van den Bergh to optimize glucose adsorption.
Applicant argues that Van den Bergh discloses FAU zeolites having Si/Al ratios outside the claimed range and therefore does not teach or suggest a FAU-type zeolite having an Si/Al atomic ratio strictly greater than 1.5 to 2.74, as required by claim 1. However, the argument is not persuasive because Van den Bergh is not relied upon as the sole teaching of the claimed Si/Al atomic ratio. Instead, Van den Bergh is relied upon for the general monosaccharide chromatograph/SMB separation process and for teaching that FAU zeolites are suitable zeolite adsorbents for the process. The claimed Si/Al atomic ratio is addressed by the combined teachings of secondary references, wherein Dabbawala et al. support that zeolite Y is a member of the faujasite family and has an Si/Al atomic ratio greater than 1.5. Francisco et al. teach that Si/Al ratio affects equilibrium adsorption of D-glucose and that glucose adsorption depends on zeolite structure and cation characteristics. Accordingly, selecting a FAU-type zeolite Y having an Si/Al atomic ratio within the claimed range would have been a matter of routine selection and optimization of a known result-effective zeolite parameter for glucose adsorption.
Applicant argues that Van den Bergh uses zeolites in protonic or ammonium form and does not disclose a barium-containing FAU zeolite as required by the claims. The argument is not persuasive because the rejection does not rely on Van den Bergh for the barium-containing zeolite limitation. Van den Bergh is relied upon for the general process of separating monosaccharides by adsorption on a zeolite in a liquid chromatography/SMB process. Cheng teaches that adsorptive separation using zeolite Y is known and that the cations for zeolite Y are most likely calcium, barium, and potassium. Cheng further teaches that exchangeable cations affect sugar separation and that Ba-Y provides the best separation results among the tested Y-type zeolites. Thus, the claimed barium-containing FAU/Y-type zeolite is supplied by Cheng, not Van den Bergh alone.
Applicant argues that Van den Bergh is directed to separation involving glucose and cellobiose, including a monosaccharide/polysaccharide or disaccharide-type separation, and therefore does not correspond to the claimed separation of glucose from a mixture of C5 and C6 sugars comprising at least xylose and glucose. The argument is not persuasive because Van den Bergh is not limited to the specific cellobiose embodiment relied upon by Applicant. Van den Bergh teaches separating monosaccharides from aqueous solution and explicitly identifies monosaccharides, such as glucose and xylose as compounds of interest. The fact that Van den Bergh also discusses other sugar-containing systems does not negate the teaching that the disclosed chromatography/SMB zeolite adsorption process may be applied to monosaccharide separations including glucose and xylose. Furthermore, the claims use open transitional language and do not exclude the presence of other sugars or additional components in the starting mixture.
Applicant argues that Cheng does not remedy the deficiencies of Van den Bergh because Cheng relates to separation of glucose and fructose, both C6 sugars, rather than separation of glucose from xylose. Applicant further argues that Cheng teaches fructose has greater affinity with zeolite, and therefore Cheng would not lead one of ordinary skill in the art to adsorb glucose from a glucose/xylose mixture. However, the arguments are not persuasive because Cheng is not relied upon for teaching the identical glucose/xylose separation mixture of claim 1. Van den Bergh already teaches the general separation of monosaccharides including glucose and xylose. Cheng is relied upon for teaching that zeolite Y is useful in sugar adsorption separation, that the exchangeable cation in zeolite Y affects sugar separation, and that Ba-Y provides the best separation results among the tested Y-type zeolites. Thus, Cheng provides the motivation to select Ba-Y as the FAU/Y-type zeolite adsorbent in the known monosaccharide separation process of Van den Bergh. The fact that Cheng studies glucose/fructose does not remove its relevance to the selection of Ba-Y as a known effective zeolite Y adsorbent for sugar adsorption/separation.
Applicant argues that Francisco et al. do not support the rejection because Francisco et al. disclose that X-type FAU zeolites show higher glucose adsorption than Y-type FAU zeolites, and because Francisco et al. study glucose adsorption in the presence or absence of ionic liquid, but not in the presence of xylose. The arguments are not persuasive because Francisco et al. is not relied upon to teach the Y-type FAU is the best possible zeolite for glucose adsorption or to teach the entire claimed glucose/xylose separation process. Francisco et al. is relied upon for teaching that FAU-type zeolites adsorb glucose and that glucose adsorption depends on zeolite framework, Si/Al ratio, and cation characteristics. A teaching that one FAU-type zeolite may higher glucose uptake than another FAU-type zeolite does not teach away from the use of Y-type FAU zeolite, especially where Cheng teaches that Ba-Y provides superior separation results among the tested Y-type zeolites. Further, the fact that Francisco et al. study glucose adsorption in a different solution environment does not negate the teaching that FAU structure, Si/Al ratio, and cation identity are result-effective variables for glucose adsorption.
Applicant argues that Dabbawala et al. and Berger et al. do not overcome the deficiencies of the primary reference because these references do not teach the specific adsorption of glucose over xylose using the claimed Ba-Y zeolite. The argument is not persuasive because Dabbawala et al. and Berger et al. are not relied upon for teaching the entire glucose/xylose separation process or the final selectivity of glucose over xylose. Dabbawala et al. is used to support that zeolite Y is a member of the faujasite family and has an Si/Al atomic ratio greater than 1.5. Berger et al. is relied upon for teaching that zeolite Y is conventionally obtained with a particle size of about 1 μm or below, thereby addressing the crystal size limitation of claims 2 and 11. Therefore, these references are properly relied upon for the structural limitations of the claimed FAU-type zeolite adsorbent, while Van den Bergh, Cheng, and Francisco et al. provide the teachings concerning monosaccharide separation, Ba-Y selection, and glucose adsorption behavior. Moreover, the cited references must be considered for what they fairly teach as a whole and in combination. Van den Bergh teaches the general liquid phase chromatographic/SMB process for separating monosaccharides, including glucose and xylose, using a zeolite adsorbent. Cheng teaches that Ba-Y is an effective zeolite Y adsorbent for sugar separation and that exchangeable cations affect separation. Francisco et al. teach that FAU-type zeolites adsorb glucose and that Si/Al ratio and cation characteristics affect glucose adsorption. Dabbawala et al. and Berger provide evidence that the claimed FAU/Y-type zeolite structure, Si/Al range, and crystal size are known in the art. Accordingly, one of ordinary skill in the art would have been motivated to select a Ba-Y FAU-type zeolite having the claimed structural features for use in the known chromatographic monosaccharide separation process, with a reasonable expectation of success.
Maintained Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 2, 4, 7 – 14, and 17 – 18 of copending Application No. 17/622,895 in view of Cheng (Biotechnology and Bioengineering, 1992, Vol. 40, Issue 4, page 498 – 504, cited in PTO-892 on March 10, 2026), with evidence provided by Dabbawala et al. (Applied Catalysis A: General, 2020, Vol. 608, cited in PTO-892 on March 10, 2026), and Francisco et al. (Chemical Engineering Journal, 2011, Vol. 172, Issue 1, page 184 – 192, cited in PTO-892 on March 10, 2026).
‘895 claims a process for the liquid-phase separation of xylose from a mixture of C5 and C6 sugars comprising at least xylose and glucose, by adsorption of xylose on a zeolitic adsorbent based on FAU-type zeolite crystals comprising barium, wherein the mixture is brought into contact with said adsorbent, by liquid chromatography, to obtain a glucose-enriched liquid phase and a xylose-enriched adsorbed phase and the glucose-enriched liquid phase is recovered and the phase adsorbed on said adsorbent is desorbed by means of a desorption solvent in order to recover the xylose (claim 1). The adsorbent comprises zeolite crystals having a diameter of less than or equal to 2 µm or less than or equal to 1.7 µm (claims 2 and 12) and the adsorbent has the content of BaO that the exchange rate is greater than 70% or greater than 90% (claims 4 and 14). Furthermore, the adsorbent has a total content of oxides of alkali metal or alkaline-earth metal ions other than barium, potassium, and sodium that the exchange rate of all the ions relative to all of the alkali metal or alkaline-earth metal ions is less than 30% or between 0% to 5% (claims 7 and 17). The adsorbent is in the form of an agglomerate comprising a binder and the number-average diameter of the agglomerates is from 0.4 to 2 mm or between 0.4 and 0.8 mm (claims 11 and 18). ‘895 also claims that the separation by adsorption is carried out in a simulated moving bed, wherein the glucose-enriched liquid phase is removed from contact with the adsorbent to form a raffinate stream, and the xylose-enriched phase adsorbed on the adsorbent is desorbed under the action of a desorption solvent, and is removed from contact with adsorbent to form an extract stream, wherein the desorption solvent is water (claims 8 – 9). The process is further limited to be a separation by adsorption that is carried out in an industrial adsorption unit of simulated countercurrent type with the following conditions: (i) 6 to 30 beds; (ii) at least 4 operating zones between a feed point and a withdrawal point; (iii) a temperature from 20 ⁰C to 100 ⁰C; and (iii) a pressure between atmospheric pressure and 0.5 MPa (claim 10).
However, ‘895 does not claims the process for liquid-phase separation of glucose to obtain the glucose from the adsorbent and does not teach the Si/Al atomic ratio of the adsorbent to be greater than 1.5 (claim 1).
Cheng teaches a separation of fructose and glucose in an adsorption column (Abstract). Adsorptive separation is the current commercial practice using zeolite Y, wherein the cations for zeolite Y are most likely calcium, barium, and potassium (page 498, Left Col., para. 1). Cheng conducts the separation study of glucose-fructose using an isothermal column packed with zeolites for the effectiveness of adsorbents as well as the equilibrium and kinetic parameters for the adsorption (page 498, Right Col., para. 2). The zeolite is Y type with 5.78% Na, 14.63% Al, and 18.31% Si. The degree of exchange is about 68% (page 499, Left Col., para. 2). Cheng determines that the flow rate of desorbent, temperature, amount of mixture injected, and exchangeable cations in the zeolite are important factors that affect the separation of glucose and fructose. The criterion for quantifying the effectiveness of separation is the efficiency of separation (ES), which takes into account the mean distances of the elution peaks of the species as well as the spread of each peak. Hence the larger the ES factor, the less overlapping of the two peaks and the better separation in general (page 500, Left Col., para. 1). Based on the summary results of separation (page 500, Table I):
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Ba-Y zeolite as an adsorbent provides the best separation results (page 502, Left Col., para. 1).
Francisco et al. teach the recovery of glucose on different types of zeolite-based adsorbents from an aqueous solution (Abstract). Francisco et al. conclude that X- and Y-type zeolites exhibiting Faujasite structure show higher glucose uptake than LTL structures. In terms of Si/Al ratio, X-type zeolites show higher adsorption capacity for glucose than Y-type. From the differences found for X and Y zeolites (same FAU network but different Si/Al ratio), Francisco et al. conclude that the higher the Si/Al ratio, the higher the equilibrium adsorption for D-glucose. The extent of zeolite adsorption of glucose from aqueous solutions depends on the strength of the complex formed between sugar and the zeolite cations and on the geometric constrains imposed by number, type, and position of the cations within the zeolitic cavities (page 186, Left Col., para. 6; Right Col., para. 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 modify the process for the liquid-phase separation of xylose from a mixture of C5 and C6 sugars comprising at least xylose and glucose, by adsorption of xylose on a zeolitic adsorbent based on FAU-type zeolite crystals as taught by ‘895 to a process of liquid-phase separation of glucose by adsorption of glucose by substituting the zeolite to a FAU-type BaY zeolite with Si/Al atomic ratio greater than 1.5 in view of Cheng and Francisco et al. because ‘895 already discloses the same general sugar mixture comprising glucose and xylose, liquid chromatography, FAU-type zeolite crystals comprising barium, recovery of a non-adsorbed sugar-enriched liquid phase, desorption of an adsorbed sugar-enriched phase, SMB operation, water as desorption solvent, agglomerate/binder features, crystal size, BaO exchange rate, and limitations regarding other alkali metal or alkaline-earth metal ions, Cheng discloses that zeolite Y is used in sugar adsorption separation, that the exchangeable cations in zeolite Y affect sugar separation, and that Ba-Y provides the best separation results among the tested Y-type zeolites, and Francisco et al. teach that FAU-type zeolites adsorb glucose and that glucose adsorption depends on the Si/Al ratio and the number, type, and position of cations within the zeolitic cavities. Dabbawala et al. support that zeolite Y is a member of the faujasite family and has an Si/Al atomic ratio greater than 1.5. Therefore, one would have been motivated to select glucose as the adsorbed monosaccharide in the closely related FAU-type barium zeolite chromatographic process claimed in ‘895, and to use a Ba-Y/FAU-type zeolite having an Si/Al atomic ratio greater than 1.5, in order to optimize glucose adsorption using known result-effective zeolite variables, including exchanged cation identity and Si/Al ratio. One of ordinary skill in the art would have had a reasonable expectation of success because ‘895 already recites a liquid phase chromatographic adsorption process for separating glucose and xylose using a barium-containing FAU-type zeolite adsorbent, and Cheng and Francisco et al. teach that glucose adsorption on zeolite adsorbents is affected by cation identify and Si/Al ratio. Thus, modifying the closely related claimed process of ‘895 to adsorb glucose instead of xylose using a Ba-Y FAU-type zeolite having an Si/Al atomic ratio greater than 1.5 would have involved routine selection and optimization of known zeolite adsorption variables for a known sugar separation process.
Responses to Applicant’s Remarks:
Applicant’s Remarks, filed June 10, 2026, have been fully considered and are found to be not persuasive.
Applicant argues that the same arguments made against the prior art rejection also apply to the nonstatutory double patenting rejection over ‘895 in view of Cheng, as evidenced by Dabbawala et al., and Francisco et al. Applicant further argues that the comments made regarding the secondary references are incorporated by reference, and that there is no double patenting in the present case. However, the arguments are not persuasive. ‘895 is directed to a closely related liquid phase chromatographic adsorption process for separating sugars from a mixture comprising glucose and xylose using a barium-containing FAU-type zeolite adsorbent. ‘895 already recites many of the same process and adsorbent features presently claimed, including liquid chromatograph, FAU-type zeolite crystals comprising barium, SMB operation, raffinate and extract streams, water desorption solvent, agglomerate/binder features, zeolite crystal size, BaO exchange rate, and limitations regarding other alkali metal or alkaline-earth metal ions. The secondary references are relied upon to show that the remaining differences, including selecting glucose as the adsorbed monosaccharide and selecting a FAU/Y-type zeolite having an Si/Al atomic ratio greater than 1.5, would have been obvious. Applicant’s reliance on the arguments made against the statutory prior art rejection does not overcome the rejection because the rejection is based on the patentable indistinctness between the presently claimed process and the closely related claims of ‘895. Cheng teaches that Ba-Y is effective for sugar adsorption separation and that exchangeable cations affect sugar separation. Francisco et al. teach that FAU-type zeolites adsorb glucose and that glucose adsorption depends on zeolite structure, Si/Al ratio, and cation characteristics. Dabbawala et al. support that zeolite Y is a member of the faujasite family and has an Si/Al atomic ratio greater than 1.5. Therefore, the presently claimed process is an obvious variation of the process claimed in ‘895 in view of the secondary references. Accordingly, Applicant’s arguments do not overcome the rejection.
Conclusion
No claim is found to be allowable.
Applicant's Remarks necessitated the maintained ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/H.Y.L./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner
Art Unit 1693
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