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 .
Status of the Claims
The amendment filed on 12/10/2025 has been entered. Claims 1-3, 5-8, 9, 13, 15-18, 21 and 23-26 have been amended, claims 4 and 19 have been canceled; and claim 27 has been newly added. Thus claims 1-3, 5-18 and 20-27 are currently pending; claims 9-18 and 20-26 have been withdrawn from further consideration and claims 1-3, 5-8 and 27 are under current examination.
Withdrawn Objection
The objection of the record has been withdrawn in view of the amendment of the specification and drawing.
Claim Rejections - 35 USC § 102
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 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 1-3 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patent application publication number US2021/0380510A1 (US’510; effectively filed Jun. 5, 2020; cited in PTO-892 09/12/2025).
Regarding claims 1-3 and 7, US’510 teaches primary alcohol compositions comprising linear and branched C13/15 alcohol chains, wherein 100% of the branched alcohol chains are mono-branched chains with a branch at the second carbon atom relative to the hydroxyl carbon, i.e. the only mono-branched chains in the composition are the 2-alkyl ones ([0288] and [0292]) (see below):
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Regarding claims 1 and 5, US’510 is silent about the average number of branches per molecule chain as instantly claimed. However, since the above compositions meet all the limitations of claim 1, there is a prima facie case of anticipation for the above compositions to have the average number of branches per molecule chain as instantly claimed.
Regarding claim 6, the above compositions comprise 13.2 wt% or 1-tridecanol and 13.7 wt% if 1-pentadecanol.
Regarding claim 8, the limitation “wherein the linear and branched Cn alcohol chains is converted from isomerized a C(n-1) linear olefin” is a product by process claim language as a result of the catalyst product. The product by process limitation is not limited to the manipulations of the recited step for preparing the linear and branched Cn alcohol chains, but only to the structure implied by the step, in this case, only to the the linear and branched Cn alcohol chains. See MPEP § 2113:
"[E]ven 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) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Furthermore, because the process step does not appear to impart distinctive structural characteristic to the final linear and branched Cn alcohol chains, the process step is not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture").
The examiner notes that even if the limitation is given patentable weight, US’510 teaches that the compositions set forth above are obtained from isomerized 1-dodecene and 1-tetradecene (Example 1).
Response to Arguments
Claim 1 has been amended to recite the limitation “wherein the primary alcohol composition is lightly branched having an average number of branches per molecule chain that is less than 1.4” which is incorporated from previously presented, now canceled claim 4. In view of this amendment, Applicant argues that Killebrew (US’510 hereinafter) the incorporated limitation. Applicant discusses that in view of the specification ([142-145] and Table 1), the modification of WHSV value changes the content of the branched olefins and internal olefins for a given isomerized. Furthermore, Applicant discusses that hydroformylating the isomerized feeds results in alcohol products exhibiting properties such as branching index ([154-156] and Table 3). Applicant thus argues that generated alcohols may exhibit a high degree of branching using different reaction conditions.
Applicant argues that even though US’510 teaches isomerization and hydroformylation in the production of branched alcohols, it fails to teach the average number of branches per molecule as instantly claimed. Applicant further argues that the reference does not contemplate modification of WHSV in order to achieve a certain content of branched olefins and internal olefins and/or degree of branching. Accordingly, Applicant argues the claimed limitation “the primary alcohol composition is lightly branched having an average number of branches per molecule chain that is less than 1.4”.
The arguments have been considered but are not persuasive.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In this instance, the process described in the specification to make the alcohol composition, including the manipulation of WHSV is not a limiting factor to the claimed composition, thus the arguments are moot.
Even if the examiner gives weight to the reaction conditions, specifically WHSV of the olefin isomerization as a controlling factor or a reaction condition that results to the specific alcohol composition, the final alcohol composition that is obtained in the instant specification is the same composition as that of US’510. Specifically, the PGPub of the instant application, US20230382830A1, describes:
the primary alcohol composition comprises linear and branched Cn alcohols, wherein at least 50% of the branched alcohol chains are mono-branched chains with a branch at the second carbon atom relative to the hydroxyl carbon ([0050]);
the primary alcohol composition comprises less than 60 wt % of linear Cn alcohol ([0056]) (thus, the remaining of the primary alcohol composition is more than 40 wt% of the branched Cn alcohol); and
the alcohol composition is lightly branched and comprises linear and branched C11,13,15,17,19,21 primary alcohols substantially branched at the second carbon atom ([0057]-[0062]).
The alcohol compositions of US’510 indicated in the above rejection and reproduced below from [0288] and [0292] are as follows:
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The compositions meet all the characteristics described in the instant specification, i.e.
The alcohol compositions comprise linear and branched Cn alcohols, wherein 100% of the branched alcohol chains are mono-branched chains with a branch at the second carbon atom relative to the hydroxyl carbon because the only mono-branched chains in the composition are the 2-alkyl branched alcohols. Thus, percent of the branched alcohol chains of US’510 that are mono-branched chains with a branch at the second carbon atom relative to the hydroxyl carbon are encompassed by the described at least 50 %.
The alcohol compositions comprise respectively 13.2 wt% and 13.7 wt% of C13 and C15 linear alcohols. Thus, less than 60 wt % of linear Cn alcohol as described in the instant specification and the remaining of the alcohol compositions would be 86.8 wt% and 86.3 wt%, which is more than 40 wt% of the branched Cn alcohol; and
The alcohol compositions are lightly branched as they comprise linear and branched C13,15 primary alcohols solely branched at the second carbon atom as there are no other branching in the compositions.
In view of the foregoing, because all the instantly described and claimed characteristics of the primary alcohol composition are the same as those of US’510, including the light branching on the compositions, the examiner maintains that there is a prima facie case of anticipation for the compositions of US’510 to have an average number of branches per molecule chain of less than 1.4. Accordingly, the instantly claimed primary alcohol composition remains anticipated by the teachings of US’510.
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 27 is newly rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2021/0380510A1 (US’510; effectively filed Jun. 5, 2020; cited in PTO-892 09/12/2025).
The teachings of US’510 have been set forth above.
Regarding claim 26, while US’510 exemplify alcohol compositions comprising respectively 13.2 wt% and 13.7 wt% of C13 and C15 linear alcohols, the reference fails to provide in the examples alcohol composition comprising less than 5 wt% linear alcohol. However, the reference teaches in non-exemplified embodiments that the alcohol composition comprises:
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The claimed wt% of the linear alcohol in the alcohol composition, less than 5 wt% linear alcohol, lies inside that of US’510, <70 wt% linear alcohols. MPEP § 2144.05 states that where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Accordingly, the instantly claimed wt% of the linear alcohol is prima facie obvious over that of US’510.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to obtain a primary alcohol composition comprising linear and branched Cn alcohol chains, wherein at least 50% of the branched alcohol chains are mono-branched chains with a branch at the second carbon atom relative to the hydroxyl carbon, where n is an odd integer, taking one or more values ranging from 11 to 21, wherein the composition is lightly branched having an average number of branches per molecule chain that is less than 1.4 and wherein the primary alcohol composition comprises less than 5 wt. % linear alcohol in view of of US’510.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Patent application publication number US2004/0030200A1 (cited in PTO-892 09/12/2025) teaches a primary alcohol composition comprising linear and branched C13/15 alcohol chains, wherein at least 50% of the branched alcohol chains are mono-branched chains with a branch at the second carbon atom relative to the hydroxyl carbon ([0272]).
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Conclusion
Claims 1-3, 5-8 and 27 are rejected and no claims are allowed.
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 MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692