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
Claim Status
Claims 1-18, 20, 22-23 and 43 are pending. Claims 1-18, 20, 22-23 and 43 are under examination. Claims 1-18, 20, 22-23 and 43 are rejected. No claims are allowed.
Filing Receipt
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Specification
The disclosure is objected to because of the following informalities: The specification fails to have support for the claim 10 limitation of “an aqueous solution bulk temperature” nor the definition thereof.
The specification does contemplate “an aqueous bulk temperature” but does not define the phrase or explain the significance of the “aqueous solution bulk temperature” as opposed to the “aqueous bulk temperature”. See paragraph 26 of the specification.
Appropriate correction is required.
Claim Objections
Claim 43 is objected to because of the following informalities: The phrase “of any” in line 1 is not needed. 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 1-18, 20, 22-23 and 43 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.
Claim 1, textual line 7 recites the phrase “fermentation broth comprising malonate”. The malonate may be referring to the “a malonate” comprising the compound of formula I in line 1 of claim 1 or another unknown malonate, for example diethyl malonate or disodium malonate or calcium malonate.
Note: step b) of claim 1 properly refers to the “a malonate” in line 1 of claim 1 by utilizing the definite article “the”. See claim 1, step b), wherein, “b) recovering the malonate from the first aqueous….”.
Claim 2 is indefinite due to the temperature not being assigned to an entity of claim 1 and or 2. For example, the temperature can be referring to the temperature of “the first aqueous concentrate” or some other entity yet disclosed.
Note: claim 3 refers to a pH of the first aqueous concentrate. Herein the entity having the claimed pH is known.
Claim 7 is indefinite due to the conflicting concentrations of the malonate. Claim
7 allows for the concentration to be less than the required 400 g/kg in step a) of claim 1. Additionally, the limitation of 40 g/kg to about 400 g/kg lacks antecedent basis. For example, upon performing step c) and proceeding directly to step b), the concentration of the broth will be 40 g/kg to about 400 g/kg. This range directly contradicts the range in claim 1.
Note: The g/kg range in claim 8 has antecedent basis to the g/kg range of claim 1.
Claim 10 is directed to the phrase “an aqueous solution bulk temperature” The specification does contemplate “an aqueous bulk temperature” but does not define the phrase nor explain the significance of the “aqueous solution bulk temperature” as opposed to the “aqueous bulk temperature”.
Claim 10 can just as easily be written “removing water from the fermentation broth at a temperature of less than 100C” without changing the scope of the claim. The phrase “an aqueous solution bulk temperature” adds ambiguity and possibly adds limitations to the claim that are not understood and not positively recited.
Claim 12 does not clearly specify which entity of the claims has the temperature of “at least 30C”. See the 112(b) rejection of claim 2.
Claim 13 does not clearly specify which entity of the claims has the temperature of 0 to 30C. Note: claim 14 specifies the fermentation broth has the claimed pH. Herein the reader immediately understands to what entity has the claimed pH.
Claim 16 is referring to a malonate. Without the definite article preceding the word malonate, the malonate can be any malonate. For example, diethyl malonate. See 112(b) rejection of claim 1. Note: claim 15 refers to malonate with the definite article “the”.
Claim 17 has the same indefiniteness as claim 16. The definite article is needed to ensure the malonate is understood to be referring to the malonate that comprises the compound of formula I in claim 1. Without doing so the malonate can be a disodium malonate or a mono or diethyl malonate. Claim 43 does not utilize the definite article “the” prior to the malonate in line 1.
In general, when referring back to the “malonate” on line 1 of claim 1, the
malonate in the dependent claims may be referred to as “the malonate comprising the compound of formula I”. The optional compound of formula II would necessarily be included due to the comprising language.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The limitation of 40 g/kg to about 400 g/kg broadens the range of “at least about 400 g/kg” in claim 1 or at least does not further the range of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Upon overcoming the rejections of record, the current claims would be allowable.
The closest prior art to the invention is Fruchey et al. (USPGPub 2013/0140169, Published 06-2013. Cited as D1 in the international search for PCT/US2021/034881).
Fruchey et al. strongly suggests the preparation of the single potassium salt of malonate in a fermentation broth containing n-propyl malonate. See immediately below.
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However, Fruchey et al. does not disclose or fairly suggest recovering the malonate salt from the fermentation broth nor removing water to the claimed concentration of the malonate. To the contrary, Fruchey et al. teach treating the salt to prepare the appropriate fermentation broth. Preparing a fermentation broth does not suggest removing a substance from a fermentation broth nor the water from the fermentation broth.
It would not have been obvious to have modified the prior art to arrive at the invention. There being no motivation to do so.
In a separate location of Fruchey et al. there is a strong suggestion to make monopotassium salts of dicarboxylic acids in a liquid. See immediately below.
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As argued above, Fruchey et al. strongly suggests the single potassium salt of malonate.
However, Fruchey et al. fails to disclose or fairly suggest recovering the monopotassium salt of the dicarboxylic acid nor removing water to achieve the claimed concentration of the malonate.
It would not have been obvious to have modified the prior art to arrive at the invention. There being no motivation to do so.
Conclusion
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/B.G.D/ Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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