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 .
Applicants’ arguments, filed 10/31/2025, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 – New by Amendment
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, 2 and 5 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Regarding Formula (I), the broader range is recite at claim 1, Formula (I)(v): “the total carbon content of the compound is in the range of 10 to 19”. The narrower range is the range required by structural elements in the claim. By the Examiner’s reading of limitations (i)-(iv) of Formula (I), the fewest number of carbon atoms the compound may have is 17.
Regarding Formula (II), the broader range is recite as “the total carbon content of the compound is in the range of 10 to 19”. The narrower range is the range required by structural elements in the claim. By the Examiner’s reading of the limitations of Formula (II), the fewest number of carbon atoms the compound may have is 12.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, the minimum carbon count will be interpreted as being limited by the structural elements (i.e., 17 for Formula (I) and 12 for Formula (II)) and the maximum carbon count will be interpreted as being limited by 19, as explicitly recited.
Claim Rejections - 35 USC § 103 – Previous
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Saha et al. (WO 2019/036663 A1, publication date 02/21/2019; cited in IDS 08/07/2023).
Regarding instant claim 1 (Formula (I)), 2 and 5, Saha discloses a compound that has a biobased content between 10 and 100% according to ASTM-D6866 (i.e., instant claim 5) [p. 17, lines 27-33], with the formula (R1-A)b-(CHx)a-(CHR2)m-(C(R4Rs) )n-(CHR3)o-(CHy )c-(A-R1')d [p. 3, line 16]. Saha discloses that “b” may be 1 or 2, “a” may be 0, “m” may be 1, “n” may be 1, “o” may be 1, “c” may be 0, “d” may be 1 and R4-5 may be H [p. 3, lines 17-23]. Accordingly, Saha discloses the formula (R1-A)b-(CHR2)-(CH2)-(CHR3)-(A-R1') wherein R1-3 may be alkyl groups having 1 to 18 carbon atoms (i.e., instant claim 2), R1 and R1’ may be the same and A is independently an unsaturated furan ring, a partially saturated furan ring or a saturated furan ring [p. 3, lines 26-30]. Finally, Saha discloses the total carbon content is in the range of 20 to 62 [p. 3, lines 32-33].
The disclosure of the prior art formula does not anticipate the instant claims because it does not have a total carbon count between 10 and 19.
However, the MPEP 2144.05 states that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
“Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).”
In the present case, one of ordinary skill in the art would have expected the structures of the prior art to have the same properties as structures recited by Formula (I), because they only differ by 1 carbon atom. Accordingly, a prima facie case of obviousness exists.
Furthermore, given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, at the time of filling, to have selected and combined known components for their established functions with predictable results by following the teachings of Saha. MPEP 2143 and 2144.06(I). Therefore it, would have been obvious for one of ordinary skill in the art, at the time of filling, to have formulated the compound described above to have a bio-based carbon content in the range of 30 to 100%, as instantly claimed (i.e., instant claim 5).
Regarding instant claims 1 (Formula (II)) and 3, Saha discloses a compound that has a biobased content between 10 and 100% according to ASTM-D6866 [p. 17, lines 27-33] with the formula (R1-A)b-(CHx)a-(CHR2)m-(C(R4R5) )n-(CHR3)o-(CHy )c-(A-R1')d [p. 3, line 16]. Saha discloses that “b” may be 1, “a” may be 0, “m” may be 4, “n” may be 1, “o” may be 4, “c” may be 0, “d” may be 1 and R1, R1’, R2, R3 and R4 may be H [p. 3, lines 17-23]. Accordingly, Saha discloses the formula (A)-(CH2)4-(CHR5)-(CH2)4-(A) wherein R5 is an alkyl group having 1 to 18 carbons and A is independently an unsaturated furan ring or a saturated furan ring [p. 3, lines 15-35].
The disclosure of the prior art formula does not anticipate the instant claims because it does not have a total carbon count between 10 and 19.
However, the MPEP 2144.05 states that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
“Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).”
In the present case, one of ordinary skill in the art would have expected the structures of the prior art to have the same properties as structures recited by Formula (II) in claim 1 and right most structure recited in claim 3, because they differ by only 1 carbon atom. Accordingly, a prima facie case of obviousness exists for the structures.
Furthermore, given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, at the time of filling, to have selected and combined known components for their established functions with predictable results by following the teachings of Saha. MPEP 2143 and 2144.06(I). Therefore it, would have been obvious for one of ordinary skill in the art, at the time of filling, to have formulated the compound described above to have a bio-based carbon content in the range of 30 to 100%, as instantly claimed.
Regarding instant claims 1, 2, and 4, Saha also discloses a compound with the formula (R1-A)b-(CHx)a-(CHR2)m-(C(R4R5) )n-(CHR3)o-(CHy )c-(A-R1')d, wherein “m” is 0, “b” is 2, “a” is 1, “o” is 1 and “c” is 0. [p. 3, lines 17 and 22]. This yields the formula (R1-A)2-(CH)-(CR4R5)-(CHR3)-(A-R1'), wherein R1, R1’, R4 and R5 may be H, R3 may be an alkyl group having 1-18 carbon atoms and A is independently an unsaturated furan ring, a partially saturated furan ring or a saturated furan ring [p. 3, lines 24-29].
While the formula of the prior art encompasses structures of Formula I and instant claim 4, it does not anticipate the instant claims as it does not specifically disclose the overlapping structures were synthesized.
However, given the disclosure of the overlapping general structure, it would have been prima facie obvious for a person having ordinary skill in the art at, at the time of filling, to have selected and combined known components for their established functions with predictable results by following the teachings of Saha to synthesize compounds of the instantly claimed Formula I. MPEP 2143 and 2144.06(I). Therefore it, would have been obvious for one of ordinary skill in the art, at the time of filling, to have synthesized (A)2-(CH)-(CH2)-(CHR3)-(A) wherein R3 may be alkyl groups having 1 to 18 carbon atoms, and A is independently an unsaturated furan ring or a saturated furan ring.
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.
Claim 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-24 of copending Application No. 2022/0025287 A1 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a bio-based compound [claim 13; instant claim 5] with the same formula [claim 1; instant claims 1-4]. For example, when R1 is a linear alkyl group with 10 to 12 carbons, R3 is a linear alkyl group with 8 to 10 carbon, R2 is an alkyl group having 5 or 6 carbons and R4 is a hydrogen [claim 1]. It would have been obvious to one of ordinary skill in the art, at the time of filling, to have made an instantly claimed compound because the claims of ‘287 disclose it. MPEP 2143
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4, 5, 7-9, 11, 13, 23, 33, 34, 36-40, 42-45 of copending Application No. 2021/0040055 A1 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a bio-based compound with overlapping structures [claim 1]. For example, the formula of claim 1, (R1-A)b-(CHx)a-(CHR2)m-(C(R4Rs) )n-(CHR3)o-(CHy )c-(A-R1')d, wherein “b” may be 1 or 2, “a” may be 0, “m” may be 1, “n” may be 1, “o” may be 1, “c” may be 0, “d” may be 1 and R4-5 may be H. This yields the formula (R1-A)b-(CHR2)-(CH2)-(CHR3)-(A-R1') wherein R1-3 may be alkyl groups having 1 to 18 carbon atoms (i.e., instant claim 2), R1 and R1’ may be the same and A is independently an unsaturated furan ring, a partially saturated furan ring or a saturated furan ring. It would have been obvious to one of ordinary skill in the art, at the time of filling, to have made an instantly claimed compound because the claims of ‘055 disclose it. MPEP 2143
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
1) Applicant argues the instant claims would not have been obvious over Saha because “Saha discloses processes for the preparation of compounds having a total carbon content in the range of 20 to 62 (e.g., see Abstract of Saha)” and that “[t]here is no disclosure in Saha that the processes disclosed therein could or should be used to produce compounds having a total carbon content in the range of 10 to 19” (see Remarks at page 16, lines 6-9).
This argument is not found to be persuasive. MPEP 2144.05 states that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
“Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).”
As discussed above the structures of Saha and the instant claims only differ by 1 carbon atom. One of ordinary skill in the art would have expected such compounds to have the same properties. Therefore, a case of prima facie obviousness exists.
2) Applicant argues the instant claims would not have been obvious over Saha because the “compounds of claim 4 possess complex branched structures that are not suggested nor captured by the above formulas” (see Remarks, p. 16, penultimate paragraph)
This argument is not found to be persuasive. The Examiner respectfully disagrees with the applicants assertion that claim 4 possess complex branched structures that are not suggested nor captured by Saha. The structures of claim 4 were rejected because Saha teaches “the formula (R1-A)2-(CH)-(CR4R5)-(CHR3)-(A-R1'), wherein R1, R1’, R4 and R5 may be H, R3 may be an alkyl group having 1-18 carbon atoms and A is independently an unsaturated furan ring, a partially saturated furan ring or a saturated furan ring [p. 3, lines 24-29]” (see rejection of claims 1, 2 and 4 at page 11 of this office action and pages 13-14 of the office action mailed 08/26/2025). The examiner is interpreting the two (R1-A) groups to be bound to the adjacent CH in the bolded section of the formula. Support for this can be found in the disclosure of the generic structure on page three of Saha. The bolded group, (R1-A)2-(CH), in the above formula comes from the bolded section of Formula I disclosed by Saha [p. 3]:
(R1-A)b-(CHx)a-(CHR2)m-(C(R4R5) )n-(CHR3)o-(CHy )c-(A-R1')d
Saha discloses that “each of x and y is independently 1 or 2, dependent upon the values of a-d” [p. 3, lines 20-21]. For the value of “x” (i.e., number of H atoms) to depend on “a-d” (i.e., “b”; number of (R1-A) groups), then each (R1-A) must be bound to the CHx group. This is distinct from an interpretation where each (R1-A) group is bound to another (R1-A) group (e.g., where (R1-A)2(CHx) is (R1-A)-(R1-A)-(CHx)) because in this interpretation “x” cannot be dependent on “a-d” as it does not depend in “b”. Therefore, the formula taught by Saha and discussed above and in the rejections of claim 4 is, for example:
PNG
media_image1.png
230
205
media_image1.png
Greyscale
Wherein the “formula (R1-A)2-(CH)-(CR4R5)-(CHR3)-(A-R1'), wherein R1, R1’, R4 and R5 may be H, R3 may be an alkyl group having 1-18 carbon atoms and A is independently … or a saturated furan ring” [p. 3, lines 24-29] (see rejection of claims 1, 2 and 4 at page 11 of this office action and pages 13-14 of the office action mailed 08/26/2025).
The above structure, taught by Saha as discussed in the rejection of claim 4, reads on structures recited in Formula I of instant claim 1 and structures recited in instant claim 4. The Examiner respectfully disagrees with the Applicant’s assertion that claim 4 possess complex branched structures that are not suggested nor captured by Saha because the instant claims and Saha both define the R group (R1 in instant claim 4) as alkyl groups having 1 to 18 carbon atom(s), which includes a methyl group.
3) Applicant requests the double patenting rejections be held in abeyance until the claims are found allowable.
The double patenting rejections stand as the instant claims continue to read on the copending claims.
Conclusion
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 COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
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, Sahana Kaup can be reached at (571)272-6897. 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.
/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612