Prosecution Insights
Last updated: April 18, 2026
Application No. 18/007,900

Branched Compounds

Non-Final OA §112§DP
Filed
Dec 02, 2022
Examiner
PARSA, JAFAR F
Art Unit
1692
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Scion Holdings LLC
OA Round
1 (Non-Final)
87%
Grant Probability
Favorable
1-2
OA Rounds
2y 1m
To Grant
96%
With Interview

Examiner Intelligence

Grants 87% — above average
87%
Career Allow Rate
1073 granted / 1229 resolved
+27.3% vs TC avg
Moderate +9% lift
Without
With
+8.7%
Interview Lift
resolved cases with interview
Fast prosecutor
2y 1m
Avg Prosecution
18 currently pending
Career history
1247
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
48.4%
+8.4% vs TC avg
§102
12.8%
-27.2% vs TC avg
§112
15.3%
-24.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1229 resolved cases

Office Action

§112 §DP
DETAILED ACTION Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 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 appl icant regards as his invention. Claims 1-5 and 21-32 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. The term “ type of an organophosphorus ligand ” in claim 1, lines 3-4 fails to inform a person of ordinary skill in the art of the claim’s scope with reasonable certainty. The term “type” is a subjective classification that lacks a clear objective boundary or a standard definition in the art, leaving it unclear whether the metes and bounds are defined by chemical subclass(e.g., phosphines vs phosphite ), molecular structure (e.g., monodentate vs. bidentate), or functional reactivity. Closest prior art: Hanson (Journal of Chemical Education , Vol. 64 (11), 928-930,1987) in view of Yates (US 4,443,638) are considered the closest prior art. Hanson teaches only a one-step hydroformylation process using only one catalyst system. The experimental investigation of Hanson provides results of 14 batch experiments showing the effect of reaction temperature, reaction time, ligand type, and ligand / Rh molar ratio on reaction conversion, selectivity and relative ratio of linear and branched aldehydes produced. E ach of Hanson's hydroformylation experiments were one-step experiments. Additionally, the reaction conditions of Hanson were held constant during each experiment. Specifically, the reaction pressure was held constant, i.e. one constant pressure, during each of Hanson's experiments. In none of the 14 experiments, does Hanson perform any two-step experiments for producing aldehydes, and thus also does not perform any three-step experiments to produce alcohols. Yates discloses a very high pressure one-step process to produce a mixture of aldehydes. In summary, Yates teaches the use of Rh/phosphite catalysts to hydroformylate internal olefins at very high pressures, e.g. 750 psig-2000 psig, in a one-step constant-pressure process to produce a mixture of aldehydes, a majority of which were branched aldehydes. 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. Claims 1- 5 and 21-26 are rejected on the ground of nonstatutory double patenting a s being unpatentable over claims 1-10 of U.S. Patent No. 12,054,455 and over claim 1 of US patent No. 11,680,032 . Although the claims at issue are not identical, they are not patentably distinct from each other because the primary differences between the instant claims of the present claims (18/007,900) reside in the specific pressure thresholds and the chemical composition identified at different stages of the reaction . Specifically, the instant claims broader first pressure (0 to 10 bar (g)) encompasses the narrow patented range (0.01 to 10 bar (g)), while the instant claims focus on an intermediate isomerized olefin concentration (20 wt. %) compared to the patented focus on the final branched alcohol product (greater or equal 50 wt. %). These claims are considered obvious because the instant pressure range is substantially identical to the patented range, and a person skilled in the art would recognize that achieving the patented final alcohol concentration inherently requires the production of the intermediate isomerized olefin within the same three step process (isomerization, hydroformylation, and hydrogenation). Therefore, the instant claims represent a patentably indistinct variation of the already patented process, merely claiming the same chemical transformation. The primary difference is that the instant claims of (18/007,900) introduce specific first and second pressure ranges, whereas the patented claim 1 of US 11,680,032 is silent regarding these parameters while reciting the identical three-step process of isomerization, hydroformylation and hydrogenation to produce branched alcohols. A person ordinary skill in the art, having possession of the patented 11,680,032 claims, would arrive at the present claims because the recited pressures represent standard operating parameters that are inherent to and required for the practical execution of the disclosed chemical reactions. Since the patented process utilizes the same catalysts and precursors to achieve the same final product, selecting the specific pressure ranges (0-10 bar and 5-400 bar(g)) would be a matter of routine experimentation and optimization to ensure reaction efficiency and safety. Furthermore, because these pressures are typical for the industrial hydroformylation and hydrogenation stages, their explicit inclusion in the instant claims is a predictable and patentably indistinct variation that provides no unexpected results over the broader, silent disclosure of the 032 patent. 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- 5 and 21-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 -10 of copending Application No. 18/755,473 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims (18/007,900) describes a specific pressure range (0 to 10 bar (g)) and a second pressure (5 to 400 bar (g) for the production of branched alcohols. In contrast, while copending claim 1 of ‘473 is silent on the specific hydrogenation step and focuses on producing the aldehyde, claim 9 of that same application explicitly discloses the hydrogenation of aldehyde to alcohols. Additionally, the copending application identifies a specific intermediate concentration of 20 wt. % internal olefins, which mirrors the composition goal of the instant invention. A person ordinary skill in the art, having possession of the ‘473 application, would arrive at the present claims because the reference already contemplates the entire three-step reaction sequence (isomerization, formylation and hydrogenation) by combining the teachings of claim 1 and claim 9. The use of a 20 wt. % internal olefin intermediate is not a patentable distinction, as it is explicitly recited in ‘473 claims a target concentration for this specific catalytic process. Furthermore, although claim 1 of the reference is silent on hydrogenation, the explicit inclusion of that step in claim 9 makes it predictable to apply the same hydrogenation conditions to produce the final branched alcohol. Therefore, the instant claims are obvious variation of the copending disclosure, merely reciting a narrow first pressure range that falls within pressure range that falls within the broader routine optimization of the ‘473 process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT JAFAR F PARSA whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-0643 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 10:00 AM-6:30PM . 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, FILLIN "SPE Name?" \* MERGEFORMAT Scarlett Goon can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-5241 . 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. /JAFAR F PARSA/ Primary Examiner, Art Unit 1692
Read full office action

Prosecution Timeline

Dec 02, 2022
Application Filed
Mar 31, 2026
Non-Final Rejection — §112, §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
87%
Grant Probability
96%
With Interview (+8.7%)
2y 1m
Median Time to Grant
Low
PTA Risk
Based on 1229 resolved cases by this examiner. Grant probability derived from career allow rate.

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