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 .
Non-Final Rejection
The Status of Claims:
Claims 1-13 are pending.
Claims 1-5 are rejected.
Claims 6-13 are withdrawn from consideration.
DETAILED ACTION
1. Claims 1-5 are under consideration in this Office Action.
Priority
2. It is noted that this application is a 371 of PCT/EP2021/025454 11/19/2021 which has a foreign priority document, FRANCE FR2012215 11/26/2020.
Drawings
3. None.
IDS
4. The IDS filed on 5/24/2023 is reviewed by the examiner.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-5) on 2/20/2026 is acknowledged. Claims 6-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected groups II-III, there being no allowable generic or linking claim.
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.
Claims 1-5 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.
Claim 2 recites the limitation "a total residual content of sodium and potassium atoms " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation " a total residual content of calcium and magnesium atoms " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation " a total residual content of iron atoms " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation " a total residual content of chlorine atoms " in line 2. There is insufficient antecedent basis for this limitation in the claim.
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). In the present instance,
claim 1 recites the broad recitation “a total residual nitrogen atom content of between 0.01 ppm and 150 ppm” , and the claim also recites “preferably of between 0.02 ppm and 20 ppm, more preferably of between 0.05 ppm and 10 ppm, and, more preferentially, of between 0.07 ppm and 5 ppm”, which is the narrower statement of the range/limitation.
claim 2 recites the broad recitation “a total residual content of sodium and potassium atoms comprised between 0.002 ppm and 100 ppm” , and the claim also recites “preferably between 0.004 ppm and 50 ppm, more preferably between 0.006 ppm and 20 ppm, and, more preferentially, between 0.008 ppm and 10 ppm”, which is the narrower statement of the range/limitation.
claim 3 recites the broad recitation “a total residual content of calcium and magnesium atoms of between 0.005 ppm and 100 ppm” , and the claim also recites “preferably between 0.010 ppm and 50 ppm, more preferably between 0.015 ppm and 20 ppm, and, more preferentially, between 0.020 ppm and 10 ppm”, which is the narrower statement of the range/limitation.
claim 4 recites the broad recitation “a total residual content of iron atoms of between 0.005 ppm and 100 ppm” , and the claim also recites “preferably between 0.010 ppm and 50 ppm, more preferably between 0.015 ppm and 20 ppm, and,Date: May 24, 2023 more preferentially, between 0.020 ppm and 10 ppm”, which is the narrower statement of the range/limitation.
claim 5 recites the broad recitation “a total residual content of chlorine atoms of between 0.005 ppm and 100 ppm” , and the claim also recites “preferably between 0.010 ppm and 50, more preferably between 0.015 ppm and 20 ppm, and, more preferentially, between 0.020 ppm and 10 ppm”, which is the narrower statement of the range/limitation.
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.
The examiner recommends to put the narrowed limitations to their corresponding dependent claims.
Claim Rejections - 35 USC § 103
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.
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 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.
5. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Fuji et al (EP 2223951 A1)..
Applicant claims the followings:
1. (Currently Amended): A product of internal dehydration of sorbitol, characterized in thatwherein it has a total residual nitrogen atom content of between 0.01 ppm and 150 ppm, preferably of between 0.02 ppm and 20 ppm, more preferably of between 0.05 ppm and 10 ppm, and, more preferentially, of between 0.07 ppm and 5 ppm, this residual content being expressed as dry weight relative to the total dry weight of said product, and in that it has a total residual sulphur atom content of between 0.0001 ppm and 100 ppm, preferably between 0.0002 ppm and 50 ppm, more preferably between 0.0004 ppm and 30 ppm, and more preferentially, between 0.0008 ppm and 20 ppm, this total residual content being expressed in dry weight relative to the dry weight of said product.
2. (Currently Amended): The product according to claim 1, characterized in thatwherein it has a total residual content of sodium and potassium atoms comprised between 0.002 ppm and 100 ppm, preferably between 0.004 ppm and 50 ppm, more preferably between 0.006 ppm and 20 ppm, and, more preferentially, between 0.008 ppm and 10 ppm, this total residual content being expressed in dry weight relative to the total dry weight of said product.
3. (Currently Amended): The product according to one of claims 1 or 2, characterized in thatwherein it has a total residual content of calcium and magnesium atoms of between 0.005 ppm and 100 ppm, preferably between 0.010 ppm and 50 ppm, more preferably between 0.015 ppm and 20 ppm, and, more preferentially, between 0.020 ppm and 10 ppm, this total residual content being expressed in dry weight relative to the total dry weight of said product.
Determination of the scope and content of the prior art
Fuji et al teaches that isosorbide is obtained by the dehydrating condensation of sorbitol, which is produced from various starches that are abundant resources and are easily available.
Also, isosorbide is apt to be gradually oxidized by oxygen. It is therefore important during storage or in handling during production that a free-oxygen absorber or a nitrogen atmosphere should be used in order to prevent decomposition by oxygen (see Page 8, paragrpahs#0041-0042).
In addition, a distillated isosorbide was stored in a sealed aluminum laminate bag together with Ageless (manufactured by Mitsubishi Gas Chemical Co., Ltd.) enclosed therein, at room temperature in a nitrogen stream, except the isosorbide for use in Examples 40 and 42 and Comparative Examples 5 and 6 (see page 24, a paragrpah#0188).
About 0.5 g of a sample was precisely weighed out and subjected to closed pressure decomposition with sulfuric acid and nitric acid. For the closed pressure decomposition, use was made of microwave decomposer MULTIWAV, manufactured by PerkinElmer, Inc. (see page 24, a paragraph#0184)
Furthermore, The same procedure as in Example 13 was conducted, except that use was made of isosorbide having a formic acid content of 400 ppm, a sodium content of 12.0 ppm (76.28 µmol per mole of the isosorbide), a potassium content of 0.06 ppm (0.22 µmol per mole of the isosorbide), and a calcium content of 0.02 ppm (0.073 µmol per mole of the isosorbide )(see page 36, a paragraph#0256); or a sodium content of 17.0 ppm (of the isosorbide), a magnesium content of 0.02 ppm and a calcium content of 0.02 ppm (see page 50 , table 11 ).
The current invention, however, differs from the prior art in that the claimed total residual nitrogen atom content and sulfur atom content are unspecified in the prior art.
Ascertainment of the difference between the prior art and the claims
1. The difference between the instant application and the applied Fuji et al art is that the Fuji et al does not expressly teach the claimed the claimed total residual nitrogen atom content and sulfur atom content
Resolving the level of ordinary skill in the pertinent art.
Regarding the instant Claim 1, with respect to the lack of disclosing the claimed total residual nitrogen atom content and sulfur atom content, the prior art is silent about them. However, Fuji et al does mention the presence of nitrogen and sulfur atoms in the isosorbide distillate as described in the following passage: the distillated isosorbide was stored in a sealed aluminum laminate bag enclosed therein, at room temperature in a nitrogen stream (see page 24, a paragrpah#0188) and a sample was precisely weighed out and subjected to closed pressure decomposition with sulfuric acid and nitric acid (see page 24, a paragraph#0184). From these descriptions, it seems reasonable for the skilled artisan in the art to have evaluated each of the total nitrogen and sulfur content in the distillated isosorbide for the purpose of analyzing the entire contents of the isosorbide sample.
So, if the skilled artisan in the art had desired to evaluate the claimed total residual nitrogen atom content and sulfur atom content in the isosorbide sample, it would have been obvious to be motivated to use the ICP-MS analyzer (see page 24, a paragraph#0184) supported by the prior art so as to verify and quantify their contents.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Fuji et al expressly teaches that isosorbide obtained by the dehydrating condensation of sorbitol contains various metals such as sodium content of 12.0 ppm , a potassium content of 0.06 ppm and a calcium content of 0.02 ppm (see page 36, a paragraph#0256) or a sodium content of 17.0 ppm (of the isosorbide), a magnesium content of 0.02 ppm and a calcium content of 0.02 ppm (see page 50 , table 11 ).
Although the Fuji et al does not specify the total residual nitrogen and sulfur content in the isosorbide sample, the prior art does describe that nitrogen and sulfur atoms can be present in the isosorbide sample by reviewing the following passages: the distillated isosorbide was stored in a nitrogen stream in the sealed aluminum laminate bag (see page 24, a paragraph#0188) and also the isosorbide l sample can be treated with sulfuric acid and nitric acid acid (see page 24, a paragraph#0184).
From these descriptions, it seems reasonable for the skilled artisan in the art to have evaluated each of the total nitrogen and sulfur content in the distillated isosorbide for the purpose of analyzing the entire contents of the isosorbide sample.
So, if the skilled artisan in the art had desired to evaluate the claimed total residual nitrogen atom content and sulfur atom content in the isosorbide sample, it would have been obvious to be motivated to use the ICP-MS analyzer (see page 24, a paragraph#0184) disclosed by the prior art so as to verify and quantify their contents.
Conclusion
Claims 1-5 are rejected.
Claims 6-13 are withdrawn from consideration.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached 8:00-5:00.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 3/13/2026