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 .
The amendment filed 13 February 2026 has been received, entered and considered. The following information has been made of record in the instant amendment:
1. Claims 5, 11, 14-15, 18 and 23-24 have been canceled.
2. No new Claims have been added.
3. Claims 1, 3, 8 and withdrawn claim 13 have been amended.
4. Remarks drawn to rejections under 35 USC 112, 103 and double patenting.
The following objection(s)/rejection(s) has/have been overcome:
5. Claims 1-4, 6-10 and 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph has been withdrawn in view of applicant’s remarks. The rejection of Claims 5 and 11 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph has been rendered moot by cancelation.
6. The rejection of Claim(s) 5 and 11 under 35 U.S.C. 103 as being unpatentable over Balensiefer et al (US 2010/0081798 A1; cited in IDS filed 12/09/2022) in view of Pan et al (US 2013/0252302 A1; cited in IDS filed 12/09/2022) and further in view of Morohashi (WO 91/03574; cited in IDS filed 12/09/2022) has been rendered moot by cancelation.
7. The rejection of Claims 5 and 11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8 and 12-14 of copending Application No. 18/009,081 (‘081), and the rejection of Claims 5 and 11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, and 8-12 of copending Application No. 18/009,391 (‘391) has been rendered moot by cancelation.
Claims 1-4, 6-10, 12-13, 16-17, and 19-22 are pending in the case. Claims 13, 16-17, and 19-22 have been withdrawn as being drawn to non-elected invention. Claims 1-4, 6-10 and 12 are under prosecution.
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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.
Claim(s) 1-4, 6-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Balensiefer et al (US 2010/0081798 A1; cited in IDS filed 12/09/2022; of record) in view of Pan et al (US 2013/0252302 A1; cited in IDS filed 12/09/2022; of record) and further in view of Morohashi (WO 91/03574; cited in IDS filed 12/09/2022; of record).
Balsenfier et al teaches a sugar composition comprising, in a preferred embodiment, at least 90wt% of the C6 sugar glucose, 0.1-20wt% of C5 sugars arabinose and xylose. The C5/C6 ratio is about 0.11. The lignin content is 0.001% (paras 0290-0291; part of the limitations of claim 1 regarding the C6 and C5 sugars and their ratio and lignin content; limitation of claim 2, limitation of claim 4, limitation of claim 9 regarding percentage of C6 sugar; limitation of claim 10 regarding percentage of C5 sugar). The composition is free of sulfur compounds (as in claim 7).
Balensiefer does not teach the conductivity the aqueous carbohydrate solution as in claim 1 and the limitations of claims 3, 6, 8 and 12.
Pan teaches a composition comprising about 95% glucose and mannose and minor amount of xylose. The ratio of C5/C6 sugar is about 0.07 (paras 0012-0013; paras 0053-0059; paras 0113-0114). In addition, Pan teaches that anti-solvent precipitation, ion-exclusion chromatography and/or ion-exchange chromatography can be employed for purification of the sugars (para 0012). In view of this teaching one of ordinary kill in the art can purify the composition of the C6/C5 sugars using the above techniques and check the conductivity of an aqueous solution of the sugars if the conductivity is in the range as in claim 1 as a measure of purity. One of ordinary skill in the art knows that conductivity goes down on reducing the amount of charged components. The amount of organic and inorganic impurities and the amount of nitrogen containing impurities can also be adjusted to the desired level as in claims 6 and 8 via the same technique. Pan teaches that oligomeric saccharides can be further hydrolyzed to monosaccharides (para 0024). Therefore, the amount of oligomeric C6 and C5 sugars can be reduced to the desired level as in claim 3 in view of this teachings.
Morohashi teaches that purification of sugar solutions using a cation exchange resin and an anionic resin exchange resin wherein the sugar solution is contacted with a decolorizing resin to remove color bodies and acidic substances (page 2, lines 29-34; page 12, Example 1). This technique can be used to remove color bodies from the sugar composition of Balensiefer and check for the color value as in claim 12.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, the claimed composition of monomeric C6 and C5 sugars are known. Purification techniques are also suggested in the prior art. Thus, it is obvious to combine prior art elements and arrive at the claimed carbohydrate composition.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One ordinary skill in the art would be motivated to make the claimed carbohydrate compositions having high levels of purity since they are employed as sugar feed stocks for art-known fermentation and catalytic/thermal conversion processes (Pan: para 0013).
Response to Applicant’s Remarks
Applicant has traversed the rejection of claims 1-4, 6-10 and 12 as it applies now under 35 USC 103 of record arguing that the Office Action acknowledges that Balenseifer does not teach not suggest the conductivity of a 10% aqueous solution of the carbohydrate composition is 0.5-10mS/cm as in claim 1. To cure this deficiency the Office Action applies Pan.
However, Pan also does not disclose or suggest that its carbohydrate composition has the conductivity recited in claim 1. Based on para 12 of Pan the Office Action alleges that it would have been obvious to one of ordinary skill in the art to measure conductivity during a purification method to obtain the carbohydrate composition of claim 1. Para 12 of Pan merely discloses a list of generally known purification methods without disclosing or suggesting conductivity measurements. Thus, there is no motivation to measure the conductivity as in claim 1. Morohashi likewise does not cure this deficiency.
As discussed at page 8, lines 30-37, of the present Specification, the value of conductivity and the amount of soluble lignin are connected. The conductivity value recited in claim 1 is an indicator of the quality of the carbohydrate composition, which can also be seen in the low amount of soluble lignin present in the composition. Pan does not include any disclosure or suggestion regarding reducing the amount of soluble lignin, much less by ensuring the recited conductivity. For the above reasons Claim 1 and dependents thereof are believed to be allowable over the cited references (Remarks-pages 2-3).
Applicant’s arguments have been considered but are not found to be persuasive.
Balsenfier et al teaches a sugar composition comprising, in a preferred embodiment, at least 90wt% of the C6 sugar glucose, 0.1-20wt% of C5 sugars arabinose and xylose. The C5/C6 ratio is about 0.11. The lignin content is 0.001%. This is soluble lignin as in claim 1. The composition is free of sulfur compounds.
At para 12 Pan teaches that residual lignin can be separated from the sugars via filtration or centrifugation and salts can be separated using any art known method ad in particular solvent extraction, antisolvent precipitation, ion exclusion chromatography and/or ion exchange chromatography. Pan’s composition is also a composition as taught by Balensiefer and as in claim 1. In view of this teaching one of ordinary kill in the art can purify the composition of the C6/C5 sugars using the above techniques and check the conductivity of an aqueous solution of the sugars if the conductivity is in the range as in claim 1 as a measure of purity. One of ordinary skill in the art knows that conductivity goes down on reducing the amount of charged components. There need not be an express teaching in Pan that its carbohydrate composition has the conductivity recited in claim 1. In view of Pan’s teaching one of ordinary skill in the art can measure the conductivity of the composition as in claim 1 since charged species including other impurities are removed as taught by Pan. This should give an indication of the purity of the composition. This can also be done with the composition of Balenseifer. Pan need not include any disclosure or suggestion regarding reducing the amount of soluble lignin since Balenseifer teaches a composition which has the claimed sugars and soluble lignin in the claimed range.
Morohashi is cited for teaching that purification of sugar solutions using a cation exchange resin and an anionic resin exchange resin wherein the sugar solution is contacted with a decolorizing resin to remove color bodies and acidic. This technique can be used to remove color bodies from the sugar composition of Balensiefer and check for the color value as in claim 12. Morohashi also need not expressly teach measuring conductivity since this is suggested by Pan. Pan also provides the motivation for making the claimed compositions.
The combined teachings of the prior art do render the instant claims obvious. The rejection is 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO Internet website contains Terminal Disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4, 6-10 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6, 8 and 12-14 of copending Application No. 18/009,081 (‘081).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘081 patent and the instant claims contain limitations with overlapping ranges, and the instant claims are therefore considered obvious variants and/or routine optimizations of the values in the claims of the ‘081 patent.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
This is a provisional nonstatutory double patenting rejection.
Claims 1-4, 6-10 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, and 8-12 of copending Application No. 18/009,391 (‘391).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘391 patent and the instant claims contain limitations with overlapping ranges, and the instant claims are therefore considered obvious variants and/or routine optimizations of the values in the claims of the ‘391 patent.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
This is a provisional nonstatutory double patenting rejection.
Response to Applicant’s Remarks
Regarding the double patenting rejection(s) of record applicant has requested that they be held in abeyance until allowable subject matter is indicated. The filing of a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s/patents claims is necessary. Since neither has been made of record the rejection(s) are being maintained.
Conclusion
1. Claims 1-4, 6-10, 12-13, 16-17, and 19-22 are pending.
2. Elected claims 1-4, 6-10 and 12 (Group I) are rejected.
3. Group II Claims 13, 16-17, and 19-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
4. Claims 5, 11, 14-15, 18 and 23-24 have been canceled.
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 GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693
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