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 a response to Applicant’s amendments/remarks after non-final rejection filed 12/2/2025.
As filed, claims 1 and 3-6 are pending; and claim 2 is cancelled.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 12/2/2025, with respect to claims 1-6, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 102(a)(1) rejection of claim 2 by Zielinska-Nadolska is withdrawn per cancellation of the claim.
The § 102(a)(1) rejection of claims 1 and 3-6 by Zielinska-Nadolska is withdrawn per amendments. However, the process of claims 1 and 3-6 is prima facie obvious over Zielinska-Nadolska. For details, see prior art rejection below. In addition, Applicant’s remarks regarding the unexpected results are not persuasive because the experimental data (shown in examples 4 and 5 of Table 1 in the instant specification) is incommensurate in scope for the instantly claimed process of making heterogeneous linear carbonate. In another word, experimental data for DMC and ethanol does not provide adequate support for the entire scope of instantly claimed symmetric linear carbonate and aliphatic alcohol, respectively. See MPEP 716.02(d). Accordingly, the Examiner does not find that one of ordinary skill in the art can reliably extrapolate that the same conversion rate for DMC can be observed in other species of symmetric linear carbonate, when the art of organic synthesis is known to be unpredictable. In addition, the experimental data in Table 1 of the instant specification failed to provide a margin of error and thus, the difference in the DMC conversion rate within Table 1 of the instant specification was not statistically significant and could be due to experimental error, technical error, instrument error, etc.
For reasons set forth above, in addition to the reasons set forth in the rejection below, the instant process is prima facie obvious over Zielinska-Nadolska.
The claim objection of claims 1, 2, and 5 is withdrawn per amendments and cancellation of claim 2.
Claim Rejections - 35 USC § 112(a)
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 1 and 3-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant’s amendment with respect to amended claim 1 herein has been fully considered but is deemed to insert new matter into the claims since the specification as originally filed does not provide support for the entire scope of “a mass ratio of the aliphatic alcohol to the symmetric linear carbonate is 2:1 to 4:1” as instantly claimed.
The instant specification and the originally filed claim (i.e. filed 5/24/2023) only provide support for a mass ratio that is 1:10 or more and 50:1 or less for the instant aliphatic alcohol/symmetric carbonate; or 2:1 to 4:1 for ethanol/DMC and thus, a mass ratio of 2:1 to 4:1 for species outside of ethanol/DMC created a new subgenus for the instantly claimed mass ratio of the instantly claimed aliphatic alcohol/symmetric carbonate, which is considered new matter.
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104
578
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(pg. 7, lines 3-5)
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294
582
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(Table 1, examples 1-5)
Adequate written description means that, in the specification, the applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 [19 USPQ2d 1111] (Fed. Cir. 1991).
See MPEP 2163 regarding the guidelines for the written description requirement: "The proscription against the introduction of new matter in a patent application (35 U.S.C. 132 and 251) serves to prevent an applicant from adding information that goes beyond the subject matter originally filed. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA 1981).
See MPEP § 2163.06 through § 2163.07 for a more detailed discussion of the written description requirement and its relationship to new matter. The claims as filed in the original specification are part of the disclosure and, therefore, if an application as originally filed contains a claim disclosing material not found in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985).
Thus, the written description requirement prevents an applicant from claiming subject matter that was not adequately described in the specification as filed. New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (a subgenus is not necessarily described by a genus encompassing it and a species upon which it reads).”
Regarding claims 3-6, these claims are dependent of claim 1, and they failed to correct the defective issue of claim 1, which rendered these claims improper.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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(a) 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 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over “Zeolite and other heterogeneous catalysts for the transesterification reaction of dimethyl carbonate with ethanol”, hereinafter Zielinska-Nadolska. See IDS filed 5/24/2023..
Regarding claims 1 and 3-6:
Determining the scope and contents of the prior art:
Zielinska-Nadolska, for instance, teaches a process of preparing ethyl methyl carbonate (EMC) and diethyl carbonate (DEC) by performing transesterification of 100g of dimethyl carbonate (DMC) and 100 g of ethanol (i.e. a mass ratio of ethanol to DMC is 1:1) in the presence of 13.5 g of a strongly acidic ion exchange resin catalyst, such as Amberlyst 35 Dry, which contains a sulfonic acid group as a functional group in a matrix of styrene-divinylbenzene. The transesterification takes place in a continuous stirred tank reactor. The catalyst is input at 13.5% by weight based on the weight of the symmetric linear carbonate, and Amberlyst 35 Dry has a total exchange capacity of ≥1.90 eq/L-wet resin.
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782
780
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(pg. 227, left column, paragraphs 1-3)
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568
776
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(pg. 227, right column, section 2.2)
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602
780
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(pg. 227, left column, section 2.1)
Ascertaining of the difference between the prior art and the claim at issue:
Zielinska-Nadolska did not explicitly teach a mass ratio of ethanol to DMC is 2:1 to 4:1.
Finding of prima facie obviousness --- rationale and motivation:
MPEP 2144.05(II)(A) states “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Accordingly, the Examiner finds that it would have been obvious for a person of ordinary skill in the art to modify the mass molar ratio of ethanol/DMC from 1:1 to 2:1-4:1 in order to increase the conversion rate of DMC via routine optimization.
Conclusion
Claims 1 and 3-6 are rejected.
Claim 2 is cancelled.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621