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
Claim 38 is 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 38 recites the limitation "the anode material" in 13. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112/101
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 39 and 55 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 40-43 and 56 depend on the above claims and are, therefore, also rejected
Claims 39 and 55 provide for the use of a compound, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Thus, claims 39 and 55 are are also rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 33-40, 43-48, 50-51, and 63-64 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shono et al (7/23/1975, Journal of the American Chemical Society, 97:15, 4261-4264).
With regards to claims 33, 50, and 63, Shono teaches a process for making a compound by a process that includes electrolysis in methanol and an electrolyte of the following compound:
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(page 4261) wherein the amount of methanol is 55 to 71% (page 4262) and wherein the electrolyte is Et4NOTs (page 4261) reading on a quaternary ammonium salt having a organosulfate anion (page 4261).
With regards to claims 34, 39, 40, and 43-46, Shono teaches the reaction to form the following compounds:
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(page 4261).
With regards to claims 35 and 51, Shono teaches the compound to have a limonene skeleton (page 4261).
With regards to claims 36 and 64, Shono teaches the electrolysis to occur on the compound pinene in methanol (page 4263).
With regards to claim 37, Shono teaches the alkanol to be methanol (reading on a C1 alkanol (page 4261).
With regards to claim 38, Shono does not teach the addition of water (reading on less than 30%) (pages 4261-4264).
With regards to claims 47 and 48, Shono teaches the compound to be in methanol (page 4261) reading on a solvent.
Claims 52-54 and 59-61 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al (2020, J. Nat. Prod., 83, 3262-3269).
With regards to claims 52-54, Zhang teaches the following compound:
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(page 3262)
With regards to claims 59-61, Zhang teaches the compound to be in organic solvent (page 3267)
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.
Claims 41-42 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Shono et al (Journal of the American Chemical Society, 97:15, 7/23/1975, 4261-4264).
The disclosure of Shono is adequately set forth in paragraph 6 above and is herein incorporated by reference.
With regards to claims 41-42 and 49, Shono does not teach the compound to be used for aroma or the claimed composition.
However, when the compound recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed compound is used, the claimed function relating to the scent and function in an aroma composition are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claims 55-58 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (2020, J. Nat. Prod., 83, 3262-3269).
The disclosure of Zhang is adequately set forth in paragraph 7 above and is herein incorporated by reference.
With regards to claims 55-58 and 62, Zhang does not teach the compound to be used for aroma or the claimed composition.
However, when the compound recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed compound is used, the claimed function relating to the scent and function in an aroma composition are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763