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 .
The amendment filed June 22, 2026, has been received and entered.
Claims 9-15 are cancelled.
Claims 1-8 and 16-23 are pending and examined on the merits.
Vacated Action
The Office Action mailed September 10, 2026, has been vacated. The instant Office Action takes its place.
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 21 and 22 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.
Claims 21 and 22 are indefinite because the definition of “an average degree of esterification” of a sorbitol carboxylate is unclear. The specification as filed does not give a clear definition of the term with respect to a sorbitol carboxylate. Instead, the specification provides an example of steps taken to determine the average degree of esterification of the carboxylic esters of sorbitol present in the sorbitol carboxylate (page 12, lines 12-19). In particular, that passage states, “for example, by first determining the content of free sorbitol and its 1,4-anhydrosorbitol, 2,5-anhydrosorbitol, 1,5-anhydrosorbitol and isosorbide degradation products in a sample of the sorbitol carboxylate in question” (page 12, lines 12-15; emphasis added). Then, it is additionally necessary to determine the saponification value, acid value and content of free and neutralized fatty acids (page 12, lines 15-18). Also, an average molar mass of the carboxylic acid mixture that has been esterified is given which can then be used to calculate the average degree of esterification (page 12, lines 18-20). However, no explanation is given for how the average degree of esterification is calculated from the average molar mass of the carboxylic acid mixture that has been esterified. Since these teachings are provided in the specification only as an example and no explanation is given for the calculation of the average degree of esterification, then the metes and bounds of the term “average degree of esterification” are unclear.
Though “degree of esterification” is a known term in the art, the term has a definition such that the value cannot be numbers in the range of 1.1 to 4.0 or the range of 2.6 to 4.0 as recited in claims 21 and 22. For instance, Chatjigakis (Carbohydrate Polymers. 1998. 37: 395-408. Previously cited) defines “degree of esterification” as (number of esterified carboxylic groups/number of total carboxylic groups)
×
100 in the context of pectic molecules (page 395, second paragraph). The degree of esterification of Chatjigakis is in units of percentage (Figure 1 on page 397), which is contrary to the values recited claims 21 and 22.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 16-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation in step B) in claim 1 of “for at least 10 minutes” reacting the sorbitol with the at least one acyl group donor by adding a lipase (lines 5-6 of the claim), is not supported by the specification as filed. The specification does not provide support for the range of “for at least 10 minutes” as the length of time of the reaction of step B). Instead, the originally filed specification discloses that step B) is preferably characterized in that process step B) is ended no later than 180 hours, preferably 120 hours, particularly preferably 100 hours, after the lipase has been added (page 8, lines 31-33). The range of “no later than 180 hours” has a different scope from the claimed range of “for at least 10 minutes” in line 5 of claim 1. In particular, the range of “no later than 180 hours” as disclosed in the specification does not have a lower limit of 10 minutes, and the claimed range of “for at least 10 minutes” does not have an upper limit of 180 hours.
While Applicant was in possession of a portion of the claimed invention, the full scope of the claimed invention, specifically a process comprising step B) in which “for at least 10 minutes,” reacting the sorbitol with the at least one acyl group donor by adding a lipase at a temperature of 75ºC to 110ºC, to give a sorbitol carboxylate, is not fully described in the specification. As such, Applicant was not in possession of the full scope of the claimed invention at the time of filing. Because the specification as filed fails to provide clear support for the new claim language, a new matter rejection is clearly proper.
Notice Re: Prior Art Available Under Both Pre-AIA and AIA
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.
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.
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 1-8, 16, 17, 19, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ducret (Biotechnology and Bioengineering. 1995. 48: 214-221. Listed on IDS filed 6/16/22) in view of Vladimir (WO 2017/205027), as evidenced by Arcos Jimenez (US 6,200,784) and Kennedy (Journal of the European Ceramic Society. 2023. 43: 7146-7166. Previously cited).
Ducret discloses preparing biosurfactants by enzymatic esterification of sugars and sugar alcohols (abstract). In one experiment, the synthesis of the biosurfactants is without solvent, which meets the limitation of instant claim 23. See page 215, right column, ‘Synthesis Without Solvent’ section; and page 217, left column, second paragraph. In that experiment, sorbitol and oleic acid were mixed with Novozym 435, and the esterification reaction was carried out under reduced pressure at 90ºC to remove the water formed during the reaction, wherein Novozym 435 is Type B lipase from Candida antarctica immobilized on an acrylic resin (page 215, left column, second-to-last paragraph for description of Novozym 435). Oleic acid is directed to an acyl group donor, specifically meeting the limitation of a fatty acid as the at least one acyl group donor of instant claim 16.
Figure 1 shows the esters of sorbitol formed through this esterification reaction, including sorbitol monooleate, sorbitol dioleate, and sorbitol trioleate (page 217, left column, third paragraph). These esters of sorbitol are each directed to a ‘sorbitol carboxylate.’ Furthermore, Ducret teaches that the maximum concentration of monoesters was reached after 3 hours of reaction (page 217, left column, second paragraph). Figure 1 shows different reactions times up to 24 hours, e.g., 2, 3, 4, 6, and 24 hours, which result in producing the esters of sorbitol. The mixing of the sorbitol and oleic acid with Novozym 435 to synthesize esters of sorbitol at those reaction times as taught by Ducret meets limitations of the claimed method since it is directed to a process for enzymatic preparation of a sorbitol carboxylate, comprising:
B) for a time period falling in the claimed range of ‘at least 10 minutes’ (the reaction times taught in Ducret that include as low as 2 hours and as high as 24 hours), reacting sorbitol with at least one acyl donor (oleic acid) by adding a lipase (Type B lipase from Candida antarctica which is Novozym 435) at 90ºC (falling in the claimed range of 75ºC to 110ºC), to give a sorbitol carboxylate (an ester of sorbitol, e.g., sorbitol monooleate, sorbitol dioleate, sorbitol trioleate).
Ducret differs from the claimed invention in that Ducret does not expressly disclose, before the reacting, blending the sorbitol and the at least one acyl donor (oleic acid), within a temperature range of 90ºC to 120ºC, for at least 10 minutes, such that the reacting (Ducret’s esterification reaction) is by adding the lipase.
Vladimir discloses an enzymatic process for preparing esters from a mixture comprising at least one acyl group donor and at least one acyl group acceptor, comprising the steps of: (a) combining the at least one acyl group donor and the at least one acyl group acceptor in a reactor vessel to form a reaction mixture; (b) reacting the reaction mixture at a temperature of less than 100ºC in the presence of a lipase catalyst system to produce the esters, wherein the lipase catalyst system comprises a non-specific lipase catalyst immobilized on a non-reactive carrier resin (paragraph [0007]). For instance, Vladimir teaches pumping the reaction mixture through an external cartridge containing the lipase catalyst system, such as an enzyme bed (paragraph [0017]); thus, the reaction mixture is formed prior to addition of the lipase catalyst system. The at least one acyl group donor can be a fatty acid such as oleic acid (paragraphs [0017] and [0023]). The acyl group acceptor can be a polyol (paragraph [0017]). Additionally, a suitable reaction temperature of below about 100ºC includes reaction temperatures in the ranges of about 30ºC to about 95ºC, and 30ºC to about 90ºC (paragraph [0018]). It is noted that these temperature ranges include 90ºC which is the temperature used in Ducret.
Before the effective filing date of the claimed invention, it would have been prima facie obvious to the person of ordinary skill in the art to mix the sorbitol with the oleic acid at 90ºC prior to adding the lipase (Novozym 435, which is immobilized Type B lipase from Candida antarctica) for the esterification reaction at 90ºC when performing the method disclosed by Ducret. As pointed out in MPEP 2144.04(IV)(C), changes in sequence of adding ingredients, including selection of any order of mixing ingredients, is prima facie obvious in the absence of new or unexpected results. Moreover, it would have been obvious to the person of ordinary skill in the art to do this because it has been recognized in the art, such as in Vladimir, that combining at least one acyl group donor, such as oleic acid, with at least one acyl group acceptor, such as a polyol, is a suitable initial step prior to their reaction with a lipase at a temperature that includes 90ºC, the temperature used in Ducret, for the purpose of preparing esters. As evidenced by Arcos Jimenez, sorbitol is a polyol (column 3, lines 28-29), so the teaching of Vladimir is applicable to Ducret. Based on Vladimir, the person of ordinary skill in the art would have had a reasonable expectation of forming esters of sorbitol as sought by Ducret (e.g., page 217, left column, third paragraph) by including the initial mixing step of the two substrates (sorbitol, oleic acid) prior to adding the lipase to the substrates for the esterification reaction. For the method rendered obvious by Ducret in view of Vladimir, it would have been obvious to perform the initial mixing of sorbitol and oleic acid at 90ºC because the temperature is one of the conditions of the method of Ducret (thus incorporated by the selection of the order of mixing ingredients) and because the subsequent reaction catalyzed by lipase is required to be at 90ºC. Additionally, it would have been a matter of routine experimentation to vary the length of time of this initial mixing, including to a length of time that falls in the range of at least 10 minutes, for the predictable result of ensuring that the sorbitol and the oleic acid are mixed to form a reaction mixture that is subsequently reacted with the lipase, when performing the method rendered obvious by Ducret in view of Vladimir, absent a showing of new or unexpected results. The skilled artisan would have expected the length of time of the initial mixing to be a result-effective parameter affecting the degree that the sorbitol and the oleic acid are combined (affecting homogeneity of the mixture). It is noted that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
As such, Ducret in view of Vladimir (as evidenced by Arcos Jimenez) renders obvious instant claims 1, 16 (a fatty acid), and 23.
Regarding instant claims 2 and 19, as evidenced by Kennedy, the chemical formula of oleic acid is C18H34O2 (page 7147, right column, Section 2.1). Therefore, the at least one acyl group donor of Ducret provides acyl groups that derive from a carboxylic acid containing 18 carbon atoms, falling in the claimed range of ‘2 to 34 carbon atoms.’ Thus, instant claim 2 is rendered obvious. Also, as evidenced by Kennedy, oleic acid is a natural fatty acid (abstract). Thus, instant claim 19 is rendered obvious.
Regarding instant claim 3, Ducret teaches mixing 1.290 g sorbitol with 2.000 g oleic acid and 0.5 g Novozym 435 (page 215, right column, ‘Synthesis Without Solvent’ section). Therefore, according to the calculation below, the sorbitol and the at least one acyl group donor (oleic acid) make up about 86.8% by weight, based on the overall reaction mixture at the start of B) (the reaction by adding a lipase), which falls within the claimed range of ‘at least 80% by weight.’ Thus, instant claim 3 is rendered obvious.
Calculation:
1.290
g
s
o
r
b
i
t
o
l
+
2.000
g
o
l
e
i
c
a
c
i
d
1.290
g
s
o
r
b
i
t
o
l
+
2.000
g
o
l
e
i
c
a
c
i
d
+
0.5
g
l
i
p
a
s
e
×
100
=
86.8
w
t
%
Regarding instant claim 4, as discussed above, the synthesis of Ducret is performed without solvent. Since there is no solvent, then there is no water (which is known as a solvent). Furthermore, Ducret teaches that the esterification reaction is performed under reduced pressure at 90ºC to remove the water formed during the reaction (page 315, right column, ‘Synthesis Without Solvent’ paragraph). Therefore, the water content of the overall reaction mixture is 0% by weight which falls within the claimed range of ‘less than 15% by weight.’ As such, instant claim 4 is rendered obvious.
Regarding instant claim 5, as pointed out above, the lipase is Type B lipase from Candida antarctica (page 215, left column, second-to-last paragraph of Ducret). Therefore, instant claim 5 (lipase B from Candida antarctica) is rendered obvious.
Regarding instant claim 6, the esterification reaction of Ducret is carried out under reduced pressure of < 0.7 kPa (page 215, right column, ‘Synthesis Without Solvent’ section). That pressure falls within the claimed range of ‘less than 1 bar’ (1 bar is well known in the art as converting to 100 kPa; Note: this well-known in the art statement is taken to be admitted prior art because applicant has not traversed the examiner’s assertion of the last Office Action, see MPEP 2144.03(C)). Thus, instant claim 6 is rendered obvious.
Regarding instant claim 7, the esterification reaction times of Ducret included reaction times up to 24 hours (e.g. 2 hours, 24 hours) that resulted in the esters of sorbitol (Figure 1). Each of these reaction times fall within the claimed range of ‘no later than 180 hours after the lipase has been added.’ Thus, instant claim 7 is rendered obvious.
Regarding instant claim 8, Ducret teaches mixing 7.09 mmol sorbitol with 7.09 mmol oleic acid in their experiment (page 215, right column, ‘Synthesis Without Solvent’ section), which is a 1:1 molar ratio of sorbitol to oleic acid. Oleic acid has a single acyl group so the molar ratio of the sorbitol provided to all acyl groups present in the at least one acyl group donor (oleic acid) provided is 1.00:1.00 which falls within the claimed range of ‘1.00:0.50 to 1.00:5.00.’ Thus, instant claim 8 is rendered obvious.
Regarding instant claim 17, as pointed out above, the esterification reaction was carried out at 90ºC (page 215, right column, ‘Synthesis Without Solvent’ section). The esterification reaction as catalyzed by the lipase (Novozym 435) of the method rendered obvious by Ducret in view of Vladimir is directed to step B) of the claimed invention, and 90ºC falls within the claimed range of ‘80ºC to 95ºC.’ Thus, instant claim 17 is rendered obvious.
Regarding instant claims 21 and 22, the references differ from instant claim 21 in that the references do not expressly disclose that an average degree of esterification of any of their esters of sorbitol (directed to the claimed ‘sorbitol carboxylate’) is 1.1 to 4.0. The references differ from instant claim 22 in that the references do not expressly disclose that an average degree of esterification of any of their esters of sorbitol (directed to the claimed ‘sorbitol carboxylate’) is 2.6 to 4.0. For the purpose of applying prior art, the Examiner is interpreting ‘degree of esterification’ as being the number of ester groups in the sorbitol carboxylate. However, Figure 1 of Ducret presents the results of the esterification between sorbitol and oleic acid in the solvent-free process (page 217, left column, third paragraph). Ducret states that this type of synthesis favors the formation of high esters of sorbitol, specifically mostly diesters but also triesters, tetraesters, etc. (page 217, left column, third paragraph). The formation of high esters of sorbitol renders obvious an average degree of esterification of sorbitol ester (i.e. sorbitol carboxylate) falling in the claimed ranges of 1.1 to 4.0 (instant claim 21) and 2.6 to 4.0 (instant claim 22) because most of the sorbitol esters have a degree of esterification of 2 (the diesters) and the other produced sorbitol esters have degrees of esterification greater than 2 (e.g. 3 for triesters, 4 for tetraesters, etc.) that at most can be 6 (number of hydroxyl groups in sorbitol). Therefore, instant claims 21 and 22 are rendered obvious.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ducret and Vladimir (as evidenced by Arcos Jimenez and Kennedy) as applied to claims 1-8, 16, 17, 19, and 21-23 above, and further in view of Gruning (US 6,320,065. Previously cited).
As discussed above, Ducret in view of Vladimir (as evidenced by Arcos Jimenez and Kennedy) renders obvious claims 1-8, 16, 17, 19, and 21-23. The references differ from claim 18 in that the references do not expressly disclose that the initial mixing of sorbitol and oleic acid (rendering obvious step A) of instant claim 1) is at a temperature range of 100º to 120ºC, for at least 60 minutes.
Gruning discloses a process for the preparation of fatty acid partial esters of polyols having at least 4 C atoms, at least one primary and at least one secondary alcohol group of the starting polyols, where in a first process step the polyols are reacted with a fatty acid or a fatty acid derivative to give a fatty acid partial ester, and in a second process step the fatty acid partial esters obtained are subjected to a selective enzymatic cleavage of primary ester groups (column 2, line 66 through column 3, line 8). Gruning points out that it is possible to carry out the process according to their invention entirely without solvent (column 3, lines 14-16). Sorbitol is a preferred polyol (column 3, lines 36-50, in particular lines 44 and 50), and the fatty acid can be oleic acid (column 3, line 66 through column 4, line 7, in particular column 4, lines 6-7). Also, a lipase can be used for performing the enzymatic cleaving, with the immobilized thermostable lipase Novozyme® 435 being particularly preferred (column 4, lines 54-65). The first stage (step) of the process is carried out at 110 to 300ºC for 2 to 12 hours (column 4, lines 21-29; claim 20 of Gruning). In the case of the reaction of sorbitol in the first stage of the process, the preferred temperature range is from 110 to 150ºC (column 4, lines 38-40).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to perform the initial mixing of the sorbitol with the oleic acid at a temperature of 110 to 150ºC for 2 to 12 hours before the addition of the Novozym 435 under reduced pressure at 90ºC when performing the method rendered obvious by Ducret in view of Vladimir (as evidenced by Arcos Jimenez and Kennedy). One of ordinary skill in the art would have been motivated to do this because it results in preparing fatty acid partial esters of polyols as indicated in Gruning, which are products sought in Ducret since Ducret discloses generating esters of sorbitol, and because Gruning teaches that this temperature and reaction time is preferred for the reaction of sorbitol with a fatty acid (e.g. oleic acid, which is the fatty acid reacted with sorbitol in Ducret) prior to reaction with a lipase that can be the lipase of Ducret (Novozym 435) for the purpose of preparing fatty acid partial esters of polyols. Moreover, it would have been an obvious matter of applying the known technique of Gruning (reaction of sorbitol with a fatty acid, e.g. oleic acid, at 110 to 150ºC for 2 to 12 hours prior to reaction with lipase, e.g. Novozym 435) to the base method rendered obvious by Ducret and Vladimir (as evidenced by Arcos Jimenez and Kennedy) for the predictable result of preparing esters of sorbitol. There would have been a reasonable expectation of preparing esters of sorbitol by applying the technique of Gruning to the method rendered obvious by Ducret in view of Vladimir (as evidenced by Arcos Jimenez and Kennedy) because both Gruning and Ducret involve the same materials (sorbitol, fatty acid, lipase), and the invention of Gruning can be carried out entirely without solvent (column 3, lines 14-16), thereby conforming with the synthesis without solvent taught by Ducret. Since 110 to 150ºC overlaps with the claimed range of ‘100ºC to 120ºC’ and 2 to 12 hours falls within the claimed range of ‘at least 60 minutes,’ then instant claim 18 is rendered obvious.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ducret and Vladimir (as evidenced by Arcos Jimenez and Kennedy) as applied to claims 1-8, 16, 17, 19, and 21-23 above, and further in view of Teixeira Tage Biaggio (US 2011/0091946. Previously cited).
As discussed above, Ducret in view of Vladimir (as evidenced by Arcos Jimenez and Kennedy) renders obvious claims 1-8, 16, 17, 19, and 21-23. The references differ from claim 20 in that Ducret does not expressly disclose that the sorbitol and the at least one acyl group donor (oleic acid) make up at least 95% by weight, based on the overall reaction mixture at the start of B). Instead, Ducret teaches that they make up about 86.8% by weight, based on the overall reaction mixture at the start of B) (see rejection of claim 3).
Teixeira Tage Biaggio discloses an enzymatic process for obtaining a fatty ester comprising reacting a fatty acid with a fatty alcohol which can be sorbitol, in the presence of an enzyme, in at least one reactor, at a temperature of from 40 to 80ºC (claim 1 of Teixeira Tage Biaggio). Preferably the enzyme is selected from lipases, and the lipase is preferably Novozymes® 435 (paragraph [0040]). In Example 3, the invention of Teixeira Tage Biaggio is performed using cupuacu fatty acid, sorbitol, and Novozymes® 435 enzyme (paragraph [0071]). In that example, the fatty acid was previously melted, the bath was activated at 70ºC, the fatty acid and the sorbitol were added when the bath temperature reached a particular temperature, and the enzyme was added to the reactor (paragraphs [0072]-[0075]). Additionally, Example 3 lists the weights of the cupuacu fatty acid, sorbitol, and Novozyme® 435 for the reaction (paragraph [0071]). According to the calculation below, the sorbitol and the fatty acid make up about 96% by weight, based on the overall reaction mixture that includes the lipase, which falls within the range of ‘at least 95% by weight’ of instant claim 20.
Calculation:
2400
g
s
o
r
b
i
t
o
l
+
2580
g
c
u
p
u
a
c
u
f
a
t
t
y
a
c
i
d
2400
g
s
o
r
b
i
t
o
l
+
2580
g
c
u
p
u
a
c
u
f
a
t
t
y
a
c
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d
+
200
g
l
i
p
a
s
e
×
100
=
a
b
o
u
t
96
w
t
%
Before the effective filing date of the claimed invention, it would have been an obvious matter of routine optimization to have varied the total amount of the sorbitol and the oleic acid relative to the amount of the Novozym 435 including to amounts such that the sorbitol and the oleic acid make up about at least 95% by weight, based on the overall reaction mixture at the beginning of the esterification reaction (directed to step B) of instant claim 1), when performing the method rendered obvious by Ducret in view of Vladimir (as evidenced by Arcos Jimenez and Kennedy), because the skilled artisan would have recognized that the amounts of the reactants (the sorbitol and oleic acid) relative to the biocatalyst (Novozyme 435) would have affected the extent of the esterification reaction and the esters of sorbitol obtained from the reaction. It is noted that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, it would have been obvious to adjust the amount of the sorbitol and oleic acid to make up about 96% by weight, based on the overall reaction mixture at the beginning of the esterification reaction when performing the method rendered obvious by Ducret in view of Vladimir (as evidenced by Arcos Jimenez and Kennedy), because fatty esters were successfully obtained when sorbitol and fatty acids were reacted with Novozyme 435 at that weight percentage in the method of Teixeira Tage Biaggio. Therefore, instant claim 20 is rendered obvious.
Response to Arguments
Applicant’s arguments, filed June 22, 2026, with respect to the objection to the specification, the rejection under 35 U.S.C. 102(a)(1) of claims 1-8, 16, 17, 19, and 23 as being anticipated by Ducret as evidenced by Kennedy, the rejection under 35 U.S.C. 103 of claim 18 as being unpatentable over Ducret (as evidenced by Kennedy) in view of Gruning, the rejection under 35 U.S.C. 103 of claim 20 as being unpatentable over Ducret (as evidenced by Kennedy) in view of Teixeira Tage Biaggio, the rejection under 35 U.S.C. 103 of claims 21 and 22 as being unpatentable over Ducret (as evidenced by Kennedy), and the nonstatutory double patenting rejection of claims 1-8 and 16-23 as being unpatentable over claims 8-13 and 17-19 of copending 18/570,018 in view of Johnson and Gruning, have been fully considered and are persuasive.
In particular, the objection to the specification has been overcome by the amendment to the specification filed June 22, 2026.
The rejection under 35 U.S.C. 102(a)(1) and the rejections under 35 U.S.C. 103 have been overcome by the amendment to claim 1 because Ducret does not expressly disclose first blending sorbitol and at least one acyl group donor within a temperature range of 90ºC to 120ºC for at least 10 minutes; then, for at least 10 minutes, reacting the sorbitol with the at least one acyl donor by adding a lipase at a temperature of 75ºC to 110ºC, to give a sorbitol carboxylate. In particular, Ducret discloses mixing sorbitol, oleic acid (directed to ‘at least one acyl donor’), and Novozym 435 (directed to a lipase) at 90ºC (falling within the temperature range of step B) of instant claim 1), but Ducret does not disclose a preceding step of blending the sorbitol and the oleic acid for at least 10 minutes at a temperature of step A) of instant claim 1 such that the subsequent esterification reaction as disclosed by Ducret (directed to reacting the sorbitol with the at least one acyl group donor, meeting step B) of instant claim 1) is by adding the lipase.
Regarding the nonstatutory double patenting rejection, the terminal disclaimer filed on June 22, 2026, disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/570,018 has been reviewed and is accepted. The terminal disclaimer has been recorded. The nonstatutory double patenting rejection has been withdrawn in view of the terminal disclaimer.
Therefore, the objection to the specification and these rejections have been withdrawn. However, upon further consideration, new grounds of rejection under 35 U.S.C. 103 are made in view of the previously cited reference Ducret in combination with the newly cited reference Vladimir (with new reference Arcos Jimenz and previously cited reference Kennedy as evidence), as necessitated by the amendment to claim 1.
Additionally, Applicant's arguments are not persuasive with respect to the rejection under 35 U.S.C. 112(b) are unpersuasive. Applicant argues that the metes and bound of the “average degree of esterification” recited in claims 21 and 22, is clear to one of ordinary skill in the art based on Applicant’s detailed description starting on page 12 of Applicant’s specification. However, the specification only explains to a point an example of how the average degree of esterification was determined. As stated in the rejection, referring to page 12 of the specification, no explanation is given for how the average degree of esterification is calculated from the average molar mass of the carboxylic acid mixture that has been esterified.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSAN EMILY FERNANDEZ whose telephone number is (571)272-3444. The examiner can normally be reached 10:30am - 7pm.
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, Melenie Gordon can be reached at 571-272-8037. 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.
Sef
/SUSAN E. FERNANDEZ/Examiner, Art Unit 1651
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