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 .
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.
Priority
3. This application is a 371 of PCT/KR2021/008638 07/07/2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application KOREA, REPUBLIC OF 10-2020-0083991 07/08/2020 filed on 01/06/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 01/06/23 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election with traverse of claims 1-9 and species: features of new claim 16 in the reply filed on 04/24/26 is acknowledged. Traversal on grounds of no unity of invention objection raised during international phase have been respectfully considered but are not persuasive because USPTO is independent agency and apply its own rules of restriction practices.
New claim 16 has been added, claims 1-16 are pending, and claims 10-15 are directed to non-elected invention. Accordingly, claims 10-15 are withdrawn from further consideration by Examiner, 37 CFR 1.142(b), as being drawn to non-elected invention. Claims 1-9, 16 are examined in this Office action.
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 1-9, 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-10 of U.S. Patent No. 12,503,547. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claimed invention and the patented claimed invention are directed to a polyol composition comprising same anhydrosugar alcohol composition and alkene oxide. Regarding instant independent claim 1, although patented claims does not teach the polyol composition prepared by addition reaction of 100 parts by weight of anhydrosugar alcohol composition and more than 50 parts by weight to less than 4,000 parts by weight of an alkylene oxide, this is considered product-by-process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding instant claim 2, the patented claim 1 discloses the composition has a number average molecular weight (Mn) of 193 to 1,589 g/mol; (ii) the composition has a polydispersity index (PDI) of 1.13 to 3.41; and (iii) the average number of —OH groups per molecule in the composition is 2.54 to 21.36.
Instant dependent claims 3-9, 16 are same as patented dependent claims 2-7, 9-10.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9, 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Im (US 2023/0250213).
The applied reference has a common assignee and/or inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Im discloses a polyol composition comprising addition product of 80 to 200 parts by weight of alkylene oxide per 100 parts by weight of polyol (para [0063]), fall into claimed 50 to less than 4,000 parts by weight of alkylene oxide
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per 100 parts by weight of polyol, wherein in para [0020]-[0021] the polyol
(claim 1), meeting the requirement of claim 1.
Regarding claim 2, Im discloses the composition has a number average molecular weight (Mn) of 193 to 1,589 g/mol; (ii) the composition has a polydispersity index (PDI) of 1.13 to 3.41; and (iii) the average number of —OH groups per molecule in the composition is 2.54 to 21.36 (claim 1).
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Regarding claim 3, Im discloses:
(claim 2).
Regarding claim 4, Im discloses the monoanhydrosugar alcohol is monoanhydrosugar hexitol (claim 3).
Regarding claim 5, Im discloses the dianhydrosugar alcohol is dianhydrosugar hexitol (claim 4).
Regarding claim 6, Im discloses wherein e) the polymer of one or more of a) to d) comprises at least one selected from the group consisting of condensation polymers prepared from the following condensation reaction: condensation reaction of monoanhydrosugar alcohol, condensation reaction of dianhydrosugar alcohol, condensation reaction of the polysaccharide alcohol represented by Formula 1, condensation reaction of anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1, condensation reaction of monoanhydrosugar alcohol and dianhydrosugar alcohol, condensation reaction of monoanhydrosugar alcohol and polysaccharide alcohol represented by Formula 1, condensation reaction of monoanhydrosugar alcohol and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1, condensation reaction of dianhydrosugar alcohol and polysaccharide alcohol represented by Formula 1, condensation reaction of dianhydrosugar alcohol and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1, condensation reaction of polysaccharide alcohol represented by Formula 1 and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1, condensation reaction of monoanhydrosugar alcohol, dianhydrosugar alcohol and polysaccharide alcohol represented by Formula 1, condensation reaction of monoanhydrosugar alcohol, dianhydrosugar alcohol and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1, condensation reaction of monoanhydrosugar alcohol, polysaccharide alcohol represented by Formula 1 and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1, condensation reaction of dianhydrosugar alcohol, polysaccharide alcohol represented by Formula 1 and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1, or condensation reaction of monoanhydrosugar alcohol, dianhydrosugar alcohol, polysaccharide alcohol represented by Formula 1 and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1 (claim 5).
Regarding claim 7, Im discloses hydrogenating a glucose-containing saccharide composition to prepare a hydrogenated sugar composition, heating the obtained hydrogenated sugar composition under an acid catalyst to a dehydration reaction by heating and conducting thin-film-distillation of the obtained dehydration reaction product (claim 6).
Regarding claim 8, Im discloses the glucose-containing saccharide composition comprises 41 to 99.5 wt % of glucose based on the total weight of the glucose-containing saccharide composition (claim 7).
Regarding claim 9, Im discloses the hydrogenation is carried out under a hydrogen pressure condition of 30 to 80 atm and a heating condition of 110° C. to 135° C., the dehydration reaction is carried out under a reduced pressure condition of 1 mmHg to 100 mmHg and a heating condition of 105° C. to 200° C. and the thin-film-distillation is conducted under reduced pressure condition of 2 mbar or less and a heating condition of 150° C. to 175° C (claim 9).
Regarding claim 16, Im discloses polysaccharide comprises mixture of
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and condensation reaction of monoanhydrosugar alcohol, dianhydrosugar alcohol, polysaccharide alcohol represented by Formula 1 and anhydrosugar alcohol derived from polysaccharide alcohol represented by Formula 1 (claims 2, 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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