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 .
Claim Rejections - 35 USC § 102
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 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suhr et al. (KR 20180067968) as evidenced by Sousa et al. (ChemSusChem 2008, 1, 1020-1025). Note: A machine translation is being used for KR 2018-0067968.
Considering Claims 1 and 9: Suhr et al. teaches a polymer from suberin monomers (pg. 3) made by a process of extracting suberin from a starting material, conducting alkaline hydrolysis of the suberin to prepare suberin monomers, adding an acid to the suberin monomer solution, extracting the suberin monomer from the solution (pg. 4, Fig. 3), heating the monomers to 130-180 ºC (above the melting point of the monomer), and curing the monomer mixture to polymerize the monomers (pg. 4, Fig. 3). Sousa et al. teaches that the polycondensation of suberin monomers results in a crosslinked structure (pg. 102).
Suhr et al. does not teach the starting material as being birch bark, or the extraction as removing botulin and other triterpenes. However, the instant claims are product by process claims. "[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). See MPEP § 2113. As the compounds removed from the monomer mixtures (i.e. botulin, triterpenes, glycerol) do not change the structure of the final product, as they are not present during the polymerization, they do not materially alter the structure of the claimed elastomeric material.
Considering Claim 2: Suhr et al. teaches using an ethanol extraction, followed by removal of the volatile components (i.e. ethanol) (pg. 4).
Considering Claim 3: Suhr et al. is silent towards the alkaline hydrolysis time and temperature. However, the instant claims are product by process claims. "[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). See MPEP § 2113.
Considering Claim 4: Suhr et al. teaches filtering the alkaline hydrolysis solution to remove lignocellulose residue (pg. 4).
Considering Claim 5: Suhr et al. teaches the fraction as being acidified to 4 or less (pg. 4).
Considering Claim 6: Suhr et al. is silent towards the solvent used in the extraction. However, the instant claims are product by process claims. "[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). See MPEP § 2113.
Considering Claim 7: Suhr et al. teaches drying the suberin monomers (pg. 4).
Considering Claim 8: Suhr et al. does not teach the claimed melting temperature. However, the instant claims are product by process claims. "[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). See MPEP § 2113.
Considering Claim 10: Sousa et al. teaches the presence of C10-C30 monomers in the suberin hydrolysis mixture (Figure 1).
Considering Claims 11-14: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the tensile strength, loss factor, melting peak and DTG peak, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim Rejections - 35 USC § 103
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.
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Suhr et al. (KR 20180067968) in view of Krasutsky et al. (US Pat. 6,392,070) as evidenced by Sousa et al. (ChemSusChem 2008, 1, 1020-1025). Note: A machine translation is being used for KR 2018-0067968.
Considering Claim 1: Suhr et al. teaches a polymer from suberin monomers (pg. 3) made by a process of extracting suberin from a starting material, conducting alkaline hydrolysis of the suberin to prepare suberin monomers, adding an acid to the suberin monomer solution, extracting the suberin monomer from the hydrophilic components of the solution (pg. 4, Fig. 3), heating the monomers to 130-180 ºC (above the melting point of the monomer), and curing the monomer mixture to polymerize the monomers (pg. 4, Fig. 3). Sousa et al. teaches that the polycondensation of suberin monomers results in a crosslinked structure (pg. 102).
Suhr et al. does not teach the suberin source as being birch bark. However, Krasutsky et al. teaches using birch bark as a source of suberin monomers (1:60-67), where the betulin and other terpenes are removed from the birch bark (12:23-42). Suhr et al. and Krasutsky et al. are analogous art as they are concerned with a similar technical difficulty, namely isolating suberin monomers. It would have been obvious to a person of ordinary skill in the art to have used the extracted birch bark of Krasutsky et al. as the source of suberin in the process of Suhr et al., and the motivation to do so would have been, as Krasutsky et al. suggests, it produces suberin from widely available waster product (1:6-11), and the extraction of betulin reduces interference with the alkaline treatment of Suhr et al. (12:23-42).
Considering Claim 2: Suhr et al. teaches using an ethanol extraction, followed by removal of the volatile components (i.e. ethanol) (pg. 4).
Considering Claim 3: Suhr et al. is silent towards the alkaline hydrolysis time and temperature. However, the instant claims are product by process claims. "[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). See MPEP § 2113.
Considering Claim 4: Suhr et al. teaches filtering the alkaline hydrolysis solution to remove lignocellulose residue (pg. 4).
Considering Claim 5: Suhr et al. teaches the fraction as being acidified to 4 or less (pg. 4).
Considering Claim 6: Suhr et al. is silent towards the solvent used in the extraction. However, the instant claims are product by process claims. "[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). See MPEP § 2113.
Considering Claim 7: Suhr et al. teaches drying the suberin monomers (pg. 4).
Considering Claim 8: Suhr et al. does not teach the claimed melting temperature. However, the instant claims are product by process claims. "[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). See MPEP § 2113.
Considering Claim 10: Sousa et al. teaches the presence of C10-C30 monomers in the suberin hydrolysis mixture (Figure 1).
Considering Claims 11-14: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the tensile strength, loss factor, melting peak and DTG peak, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant's arguments filed May 11, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Suhr et al. does not teach a step of removing betulin and other triterpenes is not persuasive. Suhr et al. does not teach the starting material as being birch bark, or the extraction as removing botulin and other triterpenes. However, the instant claims are product by process claims. "[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). See MPEP § 2113. As the compounds removed from the monomer mixtures (i.e. botulin, triterpenes, glycerol) do not change the structure of the final product, as they are not present during the polymerization, they do not materially alter the structure of the claimed elastomeric material.
B) The applicant’s argument that Sousa teaches that the naturally occurring suberin polymers are crosslinked rather than the repolymerized monomers is not persuasive. In the section on polyester from depolymerized suberin mixtures, Sousa et al. teaches the polymers resulting fomr the polymerization of the monomers “contained variable portions of insoluble fraction, which suggested the formation of cross-linked structures”.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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