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 .
DETAILED ACTION
This Office action is responsive to Applicant's response to restriction requirement filed Jan. 02, 2026. As filed, claims 1-20 are pending.
Priority
This application, filed 05/12/2023 is a National Stage entry of PCT/EP2021/083815 , International Filing Date: 12/01/2021 claims foreign priority to 2012448, filed 12/01/2020.
Information Disclosure StatementApplicants' information disclosure statements (IDS) filed on 9/23/2022 have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-6, drawn to process for preparing frambione in the reply filed on 01/02/2026 is acknowledged.
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11 May 2015.
Claims 1-6 will be examined on the merits herein.
Claim Objections
Claim 1 is objected to because of the following informalities: omitted end period.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
1.Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: 1) the process steps and reaction conditions required for converting compound of formula (I) to frambione product; rendering claim 1 indefinite. Claims 2-6 depend directly or indirectly from the indefinite claim 1 and are, therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth above.
2.Claims 2-5 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.
Claims 2-4 are drawn to oxidation, condensation, hydrogenation steps to prepare intermediates of the claimed process- compounds (IV), compound of formula (VII) - however, the chemical structures of said compounds are not provided. As a result, one must refer back to the specification to define the claimed invention which discloses on [0063] and [0075] the structure of intermediates. However, claims must, under modern claim practice, stand alone to define an invention. Ex parte Fressola, 27 USPQ 2d 1608 (1993).
The recitation of claim 5: ”at least one compound chosen from phenol and glyoxylic acid is of biobased origin, and optionally acetone” is ambiguous since is not clear what “and optionally acetone” is referring to.
Claim Interpretation
The term “frambione” is being interpreted under the broadest reasonable interpretation (B.R.I.) in light of the specification, as referring to the compound formula VIII as shown on [0109} of PgPUB
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known in the art as 4-(4-hydroxyphenyl)-2-butanone, which is a natural product also known as frambinone, raspberry ketone.
The compound (IV) formed in step (b), is being interpreted under the broadest reasonable interpretation (B.R.I.) in light of the specification as referring to the compound of formula shown on [0063] and [0075] of PgPub (reproduced below):
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known in the art as 4-hydroxybenzaldehyde.
The compound (VII) formed in step (c), is being interpreted in light of the specification as referring to the compound of formula shown on [0075] of PgPub
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known in the art as p-hydroxybenzylidene acetone or 4-hydroxycinnamoylmethane.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 6,753,441 Jun.22,2004 by Jouve et al. (cited by Applicants in IDS).
Instant claims are drawn to a process for preparing frambione comprising a step (a) of condensing phenol and glyoxylic acid to form a compound of formula (I) according to the following scheme:
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The ‘441 patent teaches a method for preparing p-hydroxymandelic compounds optionally substituted and their derivatives by reacting an aromatic compound of formula I
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bearing at least a hydroxyl group and whereof the position in para is free 9e.g. phenol when R is H), with glyoxylic acid to give compounds of formula (IV)
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as valuable intermediates in synthesis of flavoring ketones products such as vanillin (abstract; col 2 lines 25-44; col 3 lines 42-63).
With respect to the limitations drawn to the “for preparing frambione”, the MPEP 2111.02(II) provides the following instruction for interpreting the preamble of a claim:
“During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim.”
In the instant case, the limitations do not carry patentable weight because the limitations do not further limit the method as the claimed. The prior art by the ‘441 patent teaches the same active step as claimed: reacting phenol with glyoxylic acid
to obtain the same compound as claimed which, as indicated by the prior art is utilized as intermediate in the synthesis of flavoring ketones products.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to utilize the teachings of the ‘441 patent concerning preparation of p-hydroxymandelic intermediates by reacting phenol with glyoxylic acid because the prior art teach specifically teach the same method active steps as claimed method and that the resulting intermediate for further conversion to flavoring ketones.
The rationale to support a conclusion that the claim would have been obvious is that 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. KSR, 550 U.S. at_, 82 USPQ2d at 1395.
Therefore, the claimed invention as a whole is prima facie obvious over the teachings of the prior art.
Conclusion
Claims 1-6 are rejected. Claims 7-20 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692