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 Application
Claims 1-15 and 20-24 are pending.
Amendment necessitated new claim rejection as set forth below.
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.
Claim 22 is 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 pre-AIA the applicant regards as the invention.
Claim 22 is indefinite as the claim recites “the aqueous mixture”, which lacks antecedent basis.
Further, claim 22 is indefinite as the claim recites “comprises adding an organic solvent to the monophasic mixture”, which would result a multiphase mixture. However, claim 20, step c recites separation from the monophasic mixture.
Appropriate correction required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 22 is in an improper dependent form because the claim recites “comprises adding an organic solvent to the monophasic mixture”, which would result a multiphase mixture. However, claim 20, step c recites separation from the monophasic mixture. Thus, claim 22 is not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4, 6, 12, 13, 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (CN104672079; as provided by the applicant on IDS dated 08/23/2023; Machine English translation is used for this rejection).
Wang discloses a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side stream comprising:
Providing an aqueous stream comprising at least about (200g of waste stream resulted pure 22.3g of isooctanoic acid. Even by not considering sodium weight, the weight above 11wt%) 11wt% of dissolved or homogenously admixed alkali metal carboxylate (sodium salts) having added alkali metal hydroxide;
Adding an acid, such as HCl, H2SO4 and formic acid (pKa>1) etc., to the stream for pH of 1-5 thereby providing an aqueous mixture comprising carboxylic acid, with examples of isooctanoic acid, and alkali metal salt;
separating the mixture to first stream of carboxylic acid and distillation to pure acid and a second stream comprising alkali metal salt;
adding NaOH to obtained isooctanoic acid to corresponding alkali metal salt, concentrating by removal of water and using/recycling obtained carboxylic acid in the form of obtained salt, such as pharmaceutical (entire patent).
Since the process steps, carboxylic acid and alkali metal carboxylate salts etc., of the cited prior art are same as in the instant claims, the aqueous mixture of the cited prior as monophasic or biphasic is expected to be the same.
Since the cited prior art reads on all the limitations of the instant claims 1-2, 4, 6, 12, 13, and 14, these claims are anticipated.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claims 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Strohmeyer (US 4002539).
Determining the scope and contents of the prior art
Strohmeyer discloses a method of isolating carboxylic acid with example of isobutyric acid with co-production of alkali metal salt from an aqueous side stream comprising:
Providing an aqueous stream comprising at least about 25-43wt% of dissolved or homogenously admixed alkali metal carboxylate (sodium or potassium salts) having added alkali metal hydroxide;
Adding an acid, such as HCl, H2SO4 etc., to the stream for pH of 2-4 thereby providing an aqueous mixture comprising carboxylic acid, with examples of propionic acid, butyric acid, isobutyric acid and alkali metal salt;
Thermally separating (distillation) the mixture to first stream of carboxylic acid and a second stream comprising alkali metal salt;
Using/recycling obtained carboxylic acid to make esters (entire patent, especially abstract, col 2-6 and claims).
Since the process steps, carboxylic acid and alkali metal carboxylate salts etc., of the cited prior art are same as in the instant claims, the aqueous mixture of the cited prior as monophasic or biphasic is expected to be the same. In addition, dependent claim 22, adds organic solvent to step c that would result multiphasic mixture.
Ascertaining the differences between the prior art and the claims at issue
Strohmeyer teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side stream, but fails to teach source of aqueous stream from peroxide process; acid as acetic acid; ratio of acetic acid to carboxylate salt; source of acetic acid; alkali metal salt as sodium acetate.
Resolving the level of ordinary skill in the pertinent art
With regards to limitation of the claims as source of aqueous stream or of added acid-The cited prior art teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream. Thus, based on the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that any waste stream comprising about 25-43wt% of alkali metal carboxylate may be treated in the manner taught by the cited prior art to purify carboxylic acid. Further, a person of ordinary skill in the art would have motivated to integrate steps of the cited prior art for purification of the waste stream to reduce pollution, purify useful substance for further recycling and/or use in other processes. It would have also been obvious to a person of ordinary skill in the art that acid obtained from a commercial source or obtained from recycling source or side stream of any other source may be useful for the purpose of adjusting pH of the aqueous stream. Thus, the cited prior art meets all limitations of the instant claims.
With regards to limitation of the claims “acid as acetic acid; ratio of acetic acid to carboxylate salt; and alkali metal salt as sodium acetate -The cited prior art teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream using acid, such as HCl and H2SO4 to adjust pH, thereby making carboxylic acid stream and alkali metal salt stream, such as NaCl and NaSO4. Thus, based on the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that any acid may be used for adjusting pH, such as HCl, H2SO4, acetic acid absent any evidence to the contrary in an amount that will adjust the pH between 2-4 and thereby making carboxylic acid and corresponding alkali metal salt stream, such as NaCl, NaSO4 or sodium acetate depending on the acid used. Thus, the cited prior art meets all limitations of the instant claims.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Strohmeyer teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream using acid, such as HCl and H2SO4 to adjust pH, thereby making carboxylic acid stream and alkali metal salt stream, such as NaCl and NaSO4.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the aqueous waste stream containing alkali metal carboxylate in the process of the cited prior art and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Claims 1-15 and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN104672079; as provided by the applicant on IDS dated 08/23/2023; Machine English translation is used for this rejection).
Determining the scope and contents of the prior art
Wang discloses a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side stream comprising:
Providing an aqueous stream comprising at least about (200g of waste stream resulted pure 22.3g of isooctanoic acid. Even by not considering sodium weight, the weight above 11wt%) 11wt% of dissolved or homogenously admixed alkali metal carboxylate (sodium salts) having added alkali metal hydroxide;
Adding an acid, such as HCl, H2SO4 and formic acid (pKa>1, monoprotic acid) etc., to the stream for pH of 1-5 thereby providing an aqueous mixture comprising carboxylic acid, with examples of isooctanoic acid, and alkali metal salt;
separating the mixture to first stream of carboxylic acid and distillation to pure acid and a second stream comprising alkali metal salt;
adding NaOH to obtained isooctanoic acid to corresponding alkali metal salt, concentrating by removal of water and using/recycling obtained carboxylic acid in the form of obtained salt, such as pharmaceutical (entire patent).
Since the process steps, carboxylic acid and alkali metal carboxylate salts etc., of the cited prior art are same as in the instant claims, the aqueous mixture of the cited prior as monophasic or biphasic is expected to be the same. In addition, dependent claim 22, adds organic solvent to step c that would result multiphasic mixture.
Ascertaining the differences between the prior art and the claims at issue
Wang teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side stream, but fails to teach source of aqueous stream from peroxide process; acid as acetic acid; ratio of acetic acid to carboxylate salt; source of acetic acid; alkali metal salt as sodium acetate; metal carboxylate salt has octanoic acid as carboxylic part; recycling of obtained carboxylic acid in processes such as to make ester; weight % in stream as at least 25wt%.
Resolving the level of ordinary skill in the pertinent art
With regards to limitation of the claims as source of aqueous stream or of added acid-The cited prior art teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream. Thus, based on the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that any waste stream comprising alkali metal carboxylate may be treated in the manner taught by the cited prior art to purify carboxylic acid. Further, a person of ordinary skill in the art would have motivated to integrate steps of the cited prior art for purification of the waste stream to reduce pollution, purify useful substance for further recycling and/or use in other processes. It would have also been obvious to a person of ordinary skill in the art that acid obtained from a commercial source or obtained from recycling source or side stream of any other source may be useful for the purpose of adjusting pH of the aqueous stream. Thus, the cited prior art meets all limitations of the instant claims.
With regards to limitation of the claims “acid as acetic acid; ratio of acetic acid to carboxylate salt; and alkali metal salt as sodium acetate -The cited prior art teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream using acid, such as HCl, formic acid and H2SO4 to adjust pH, thereby making carboxylic acid stream and alkali metal salt stream, such as NaCl, NaSO4, sodium formate. Thus, based on the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that any acid may be used for adjusting pH, such as HCl, formic acid, H2SO4, acetic acid absent any evidence to the contrary in an amount that will adjust the pH between 2-4 and thereby making carboxylic acid and corresponding alkali metal salt stream, such as NaCl, NaSO4, sodium formate or sodium acetate depending on the acid used. Thus, the cited prior art meets all limitations of the instant claims.
With regards to limitation of the claims “at least 25wt% of metal carboxylate salt in the waste stream” -The cited prior art teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream with examples having above 11wt% of metal carboxylate salt. Thus, based on the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that waste stream comprising any amount above 11wt% of alkali metal carboxylate may be treated in the manner taught by the cited prior art to purify carboxylic acid absent any evidence to the contrary.
With regards to limitation of the claims “carboxylic acid as octanoic acid” -The cited prior art teaches a method of isolating carboxylic acid, isoocatnoic acid, with co-production of alkali metal salt from an aqueous side/waste stream. Thus, based on the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that waste stream comprising any octanoic acid in any isomeric form may be purified in the manner taught by the cited prior art. This is because compounds which are position isomers (com-pounds having the same radicals in physically differ-ent positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In reWilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). Thus, the cited prior art meets limitation of the instant claims.
With regards to limitation of the claims “recycling of obtained carboxylic acid in processes such as to make ester” -The cited prior art teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream and using obtained acid to make metal carboxylate salt and recycling such salt. Thus, based on the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that acid purified from the waste stream may be recycled in any process that requires use of such acid, such as for making ester, or pharmaceutical etc. Thus, the cited prior art meets limitation of the instant claims.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Wang teaches a method of isolating carboxylic acid with co-production of alkali metal salt from an aqueous side/waste stream using acid, such as HCl, formic acid and H2SO4 to adjust pH, thereby making carboxylic acid stream and alkali metal salt stream, such as NaCl, NaSO4, sodium formate.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the aqueous waste stream containing alkali metal carboxylate in the process of the cited prior art and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-15 and 20-24 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12297118 B2, since the claims, if allowed, would improperly extend the “right to exclude" already granted in the patent.
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application and claims 1-20 of U.S. Patent No. 12297118 B2 are drawn to a process of alkali metal salt and carboxylic acid using same steps with a difference in wording.
The difference of wording, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of claims 1-20 of U.S. Patent No. 12297118 B2. For the foregoing reasons, the instantly claimed process is made obvious.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See also MPEP § 804.
Response to Arguments
Applicant’s remarks and amendment, filed on 02/12/2026, have been fully considered but not found persuasive.
Applicant argued that
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This is not found persuasive and the instant claims stand rejected. This is because (1) the instant claims are not restricted to any specific acid that will form monophasic mixture. In fact, dependent claim 3 recites acids, such as neooctanoic acid, neoheptanoic acid, isononanoic acid etc., that are more hydrophobic than isooctanoic acid of the cited prior art and will form same mixture as in the cited prior art; (2) the claims are open ended and include any step that may result mono or multiphasic mixture. In fact, dependent claim recites a step that forms multiphasic mixture.
Rest of applicant’s argument is moot in view of new rejection as set forth above.
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.
Conclusion
No Claim is allowed.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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