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 .
Priority
This application is a National Stage entry of PCT/EP2021/086103, filed 12/16/2021, and claims foreign priority to EP20215330.0, filed 12/18/2020.
Information Disclosure Statement
The IDS filed on 1/29/2026, 7/31/2025, 7/17/2023, 6/26/2023, 6/14/2023 have been considered. See the attached PTO 1449 form.
Election/Restrictions
Applicant's election with traverse of Group I (claims 26-47) and linear cooling as the method of cooling (claim 36) in the reply filed on 1/21/2026 is acknowledged. The traversal is on the ground(s) that it was surprisingly found that the process including a seeding step results in a more pure product with respect to impurities II, III and IV. This is not found persuasive because applicant results are not commensurate in scope with the claims. Specifically, the independent claims broadly recite any crystallization solvent whereas the examples in the specification use specifically hexanol as the solvent. Thus, it cannot be established that the seeding steps provides unexpected effect because the results are not commensurate in scope with the claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 37-40 and 48-50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Status
Receipt of Remarks filed on 1/21/2026 is acknowledged. Claims 26-50 are currently pending. Claims 37-40 and 48-50 have been withdrawn. Accordingly, claims 26-36 and 41-47 are currently under examination.
Claim Objections
Claim 26 and 43 is objected to because of the following informalities:
Claim 26 (b) recites “such that the ratio of c : c* of the concentration c of dissolved diethylamino hydroxybenzoyl hexyl benzoate (I) to the equilibrium solubility c* of diethylamino hydroxybenzoyl hexyl benzoate (I)”. The recitation “ c : c* ” should either be deleted or recited in parenthesis at the end of the above phrase because the way it is currently recited does not appear grammatically correct.
In claim 43, the recitation “is carried with” should recite “is carried out with”.
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.
Claim 44 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 44 recites “the washing solvent is at least one selected from the crystallization solvent used in step (a), the feed and a saturated solution of (I) in the crystallization solvent used in step (a)”. While it is clear that the crystallization solvent used in step (a) is one of the solvent selected in the Markush grouping, however, it unclear what is the solvent when the claim recites “the feed and a saturated solution of (I) in the crystallization solvent used in step (a)”. The metes and bounds of the claim are unclear because it is not clear to the examiner whether the limitation above is referring to just one solvent which is used in step (a) (i.e., crystallization solvent) or whether the claim is directed to a Markush grouping from which the crystallization solvent is one of the solvent and “the feed and a saturated solution of (I) in the crystallization solvent used in step (a)” recitation is another alternative solvent. The way the claim is written makes this unclear to the examiner.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 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 26-28, 30-36, 41 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Woo et al. (KR20200002720A; 2020-01-08)(cited in IDS; see attached English Translation) in view of Buckton (https://web.archive.org/web/20210615131705/https://clinicalgate.com/solid-state-properties/; 8/2/2015), Harvard (https://web.archive.org/web/20170801165811/https://sciencedemonstrations.fas.harvard.edu/presentations/supersaturation-and-crystallization; Aug. 1, 2017), Toledo (https://web.archive.org/web/20200925184056/https://www.mt.com/us/en/home/applications/L1_AutoChem_Applications/L2_Crystallization/seeding-cryz.html; Sep. 25, 2020) and Hirayama (Handbook for Organic Compound Crystal Preparation: Principles and Expertise, 2008, pp. 57-84)(cited in IDS).
Woo teaches method of preparing diethylamino hydroxybenzoyl hexyl benzoate (DHHB) crystalline particles for cosmetic use and having excellent UV blocking effect can be obtained in a stable and high yield. DHHB or diethylamino hydroxybenozyl hexyl benzoate, known also as 2-(4'-diethylamino-2'-hydroxybenzoyl)benzoic acid hexyl ester.
Woo teaches the crystallization can be performed using butanol (which reads on C4 alcohol in claim 28) as the crystallization solvent. The crystallization solvent is added to a concentrated residue of DHHB, heated to 30-50 degree C and dissolved with stirring to give complete dissolution. This reads on the solution comprising DHHB and crystallization solvent. After complete dissolution, the solution is cooled slowly to 15 to 20 degree C at a rate of 2 to 4 degree C/hr to slowly precipitate the crystals. When the target temperature is reached, the temperature is maintained while stirring for 1 hour, then cooled slowly to 0-5 C at a rate of 2 to 4 C/hr. This reads on the two cooling steps (step b and d) recited in the claims. When the target temperature was reached, the temperature was maintained while stirring for 1 hour, followed by filtration (i.e. separation) to obtain the DHHB compound in the form of crystalline particles. Woo teaches cooling at a rate of 2 to 4 C/hr and in example 4, Woo teaches cooling at a rate of 3 C/hr, which reads on the solution is cooled in a linear manner as recited in claim 36. Woo teaches DHHB, diethylamino hydroxybenzoyl hexylbenzoate, can be produced in high yield and mass-produced economically, with a purity of 98% or more, exemplified with a purity of 99.4%. (see e.g. abstract; claims; example 4; all examples; entire document).
While Woo teaches the solution is cooled slowly to 15 to 20 degree C, Woo does not expressly teach the cooling step is to obtain a supersaturated solution of DHHB. Woo also does not teach seeding the supersaturated solution as required in step (c) and the method of seed as recited in the claims. However, Buckton, Harvard, Toledo and Hirayama cure these deficiencies.
Buckton teaches if crystals are to be formed from a solution, it is necessary to have more solute present than can be dissolved, which is known is supersaturated solution. As crystals form from a supersaturated solution, the systems will progress until there are solid particles in equilibrium with a saturated solution. The processes by which a crystal forms are called nucleation and growth. Nucleation is the formation of a small mass onto which a crystal can grow. Growth is the addition of more solute molecules onto the nucleation site. In order to achieve nucleation and growth, it is necessary to have a supersaturated solution. A supersaturated solution is one where the amount of solute dissolved in the liquid is greater than the true solubility. (see entire document).
Harvard teaches a supersaturated solution is unstable and by seeding it you can trigger rapid crystallization. (see entire document).
Toledo teaches Seeding is one of the most straightforward methods used to control supersaturation. During seeding, a small mass of crystals is added to a supersaturation in order to start the crystallization at the desired supersaturation level and provide sufficient surface area to ensure supersaturation is consumed in a controlled way Choosing the correct seed loading (mass) and seed size can help produce final crystal product of a specified size. It is possible to develop a simple model where the final crystal size can be predicted simply based on the starting seed size and loading. (see entire document).
Hirayama teaches crystals of acetaminophen were obtained by dissolving acetaminophen in water at 55° C and adding 30 to 75 prn seed crystals of acetaminophen, and stirring at 30° C for 2 hours. (see entire document).
It would have been prima facie obvious to one or ordinary skill in the art to have combined the teaching of Woo, Buckton, Harvard, Toledo and Hirayama and cool the solution comprising DHHB to obtain a supersaturated solution. One would have been motivated to do so because Buckton teaches if crystals are to be formed from a solution, it is necessary to have more solute present than can be dissolved, which is known is supersaturated solution. As crystals form from a supersaturated solution, the systems will progress until there are solid particles in equilibrium with a saturated solution. The processes by which a crystal forms are called nucleation and growth. Nucleation is the formation of a small mass onto which a crystal can grow. Growth is the addition of more solute molecules onto the nucleation site. In order to achieve nucleation and growth, it is necessary to have a supersaturated solution. A supersaturated solution is one where the amount of solute dissolved in the liquid is greater than the true solubility. Thus, it would have been obvious to one skilled in the art to manipulate the temperature and achieve a ratio of dissolved DHHB to equilibrium solution of DHHB which would give a supersaturated solution.
It would have been prima facie obvious to one or ordinary skill in the art to have combined the teaching of Woo, Buckton, Harvard, Toledo and Hirayama and seed the supersaturated solution with seed crystals of DHHB followed by agitating the supersaturated solution comprising the seed crystals for 1 to 8 hours, wherein the amount of seed crystals is in range from 0.1 to 15 wt%, wherein the seeding is carried out at a temperature of 20-35 C, and wherein the seed crystal is employed in the form of solid crystalline mass. One would have been motivated to do so because Harvard teaches a supersaturated solution is unstable and by seeding it you can trigger rapid crystallization. Toledo teaches Seeding is one of the most straightforward methods used to control supersaturation. Thus, it would have been obvious to seed the supersaturated solution as both Harvard and Toledo provide the motivation to seed a supersaturated solution. Further, as discussed supra, Toledo teaches that during seeding, a small mass of crystals is added to a supersaturation in order to start the crystallization at the desired supersaturation level and provide sufficient surface area to ensure supersaturation is consumed in a controlled way choosing the correct seed loading (mass) and seed size can help produce final crystal product of a specified size. Hirayama teaches crystals of acetaminophen were obtained by dissolving acetaminophen in water at 55° C and adding 30 to 75 prn seed crystals of acetaminophen, and stirring at 30° C for 2 hours. Thus, it would have been obvious to include the method of agitating the supersaturated solution comprising the seed crystals for 1 to 8 hours, wherein the seeding is carried out at a temperature of 20-35 C, and wherein the seed crystal is employed in the form of solid crystalline mass because Toledo and Hirayama teach method of seeding crystal which involve these steps and as such, one would have easily envisioned using a method which is known in the art to seed a solution in crystallization process. Further, Toledo teaches that it is possible to develop a simple model where the final crystal size can be predicted simply based on the starting seed size and loading, and therefore, it would have been obvious to determine the amount of seed crystals based on the final crystal size desired. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Regarding claim 41 wherein separation of crystals is carried out by filtration while maintaining the temperature of the solution within + or – 5 C of the temperature to which the solution is cooled in step (d), as discussed supra, Woo teaches that when the target temperature was reached, the temperature was maintained while stirring for 1 hour, followed by filtration (i.e. separation) to obtain the DHHB compound in the form of crystalline particles. Thus, Woo teaches maintaining the temperature to which the solution is cooled down to. Further, it would have been obvious to maintain the temperature to not cause any further changes to the crystals obtained after the cooling down method.
Regarding the claimed amount of DHHB based on the weight of the feed, it would have been obvious to one skilled in the art to optimize the amount of DHHB and crystallization solvent in the feed which would provide the dissolution and a supersaturated solution of DHHB. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Regarding the level of impurities (i.e. the amount of PSDHE II, rhodamine III and rhodamine hexyl ester), while the cited references do not expressly disclose the content of the claimed impurities, one skilled in the art would have found it obvious to minimize the content of these impurities in the cosmetic composition which can be harmful to the subject being administer the composition. As discussed supra, Woo teaches DHHB, diethylamino hydroxybenzoyl hexylbenzoate, can be produced in high yield and mass-produced economically, with a purity of 98% or more, exemplified with a purity of 99.4%. Thus, one skilled in the art would have been motivated to minimize the content of PSDHE II, rhodamine III and rhodamine hexyl ester in DHHB. Further, the combination of the cited references render obvious the claimed method steps and thus, the resulting crystalline DHHB would necessarily have similar amounts of PSDHE II, rhodamine III and rhodamine hexyl ester content as recited in the instant claims.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over Woo et al. (KR20200002720A; 2020-01-08)(cited in IDS; see attached English Translation) in view of Buckton (https://web.archive.org/web/20210615131705/https://clinicalgate.com/solid-state-properties/; 8/2/2015), Harvard (https://web.archive.org/web/20170801165811/https://sciencedemonstrations.fas.harvard.edu/presentations/supersaturation-and-crystallization; Aug. 1, 2017), Toledo (https://web.archive.org/web/20200925184056/https://www.mt.com/us/en/home/applications/L1_AutoChem_Applications/L2_Crystallization/seeding-cryz.html; Sep. 25, 2020) and Hirayama (Handbook for Organic Compound Crystal Preparation: Principles and Expertise, 2008, pp. 57-84) as applied to claims 26-28, 30-36, 41 and 47 above and further in view of Beck (US20050165099A1).
The references cited above do not teach the method further comprising a step of washing the separated DHHB (claims 42-44) and the further comprising method steps recited in claim 45. However, Beck cures these deficiencies.
Beck also teaches the purification and crystallization of n-hexyl 2-(4-N,N-diethylamino-2-hydroxy]benzoyl)benzoate, also known as DHHB, diethylamino hydroxybenozyl hexyl benzoate or 2-(4'-diethylamino-2'-hydroxybenzoyl)benzoic acid hexyl ester. Beck teaches crystallization using an alcoholic solution to dissolve the DHHB at a temperature of 10 to 100 degree C, passing this solution over granular activated carbon at the same temperature range and filtering, crystallizing and distilling the DHHB. Beck teaches washing with solvent (hexanol) the filter cake of the isolated product after filtering. Beck also teaches hexanol used as the solvent to dissolve DHHB, thus teaching washing solvent can be same as the crystallization solvent (the solvent to dissolved DHHB). Beck teaches isolation in crystalline form of DHHB also involves dissolution of DHHB in toluene, metering of this solution over a granular activated carbon bed or a silica (adsorbent) gel bed, subsequent isolation of DHHB by separating off the toluene by distillation. (see: abstract; claims; examples; entire document).
It would have been prima facie obvious to one or ordinary skill in the art to have combined the teaching of above cited references with Beck and further implement the washing steps and the steps recited in claim 45. One would have been motivated to do so because Beck also teaches the purification and crystallization of DHHB, and Beck further discloses the claimed washing steps and the steps recited in claim 45 to further purify the crystalline DHHB. It would have been obvious to one skilled in the art to follow the method steps which are well known in the art to make and further purify the crystalline DHHB, especially because both Beck and Woo teach obtaining highly purified DHHB. Further, it would have been obvious to use washing solvent having a temperature within +-5 C of the temperature to which the solution is cooled because having a temperature which is too far off can result in physical/chemical changes to the crystalline product obtained after cooling step.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 46 is rejected under 35 U.S.C. 103 as being unpatentable over Woo et al. (KR20200002720A; 2020-01-08)(cited in IDS; see attached English Translation) in view of Buckton (https://web.archive.org/web/20210615131705/https://clinicalgate.com/solid-state-properties/; 8/2/2015), Harvard (https://web.archive.org/web/20170801165811/https://sciencedemonstrations.fas.harvard.edu/presentations/supersaturation-and-crystallization; Aug. 1, 2017), Toledo (https://web.archive.org/web/20200925184056/https://www.mt.com/us/en/home/applications/L1_AutoChem_Applications/L2_Crystallization/seeding-cryz.html; Sep. 25, 2020) and Hirayama (Handbook for Organic Compound Crystal Preparation: Principles and Expertise, 2008, pp. 57-84) as applied to claims 26-28, 30-36, 41 and 47 above and further in view of Choi (WO1993019826A1).
The references cited above do not teach the specific crystallizer used in the crystallization method taught. However, Choi cures this deficiency.
Choi teaches process for crystallization which uses draft tube baffle crystallizer which provides continuous crystallization (abstract; entire document).
It would have been prima facie obvious to one or ordinary skill in the art to have combined the teaching of above cited references with Choi and use specifically draft tube baffle crystallizer because Choi teaches process for crystallization which uses draft tube baffle crystallizer which provides continuous crystallization. Thus, it would have been obvious to use a crystallizer which is known in the art and especially for the reason that it provides continuous crystallization.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Woo et al. (KR20200002720A; 2020-01-08)(cited in IDS; see attached English Translation) in view of Buckton (https://web.archive.org/web/20210615131705/https://clinicalgate.com/solid-state-properties/; 8/2/2015), Harvard (https://web.archive.org/web/20170801165811/https://sciencedemonstrations.fas.harvard.edu/presentations/supersaturation-and-crystallization; Aug. 1, 2017), Toledo (https://web.archive.org/web/20200925184056/https://www.mt.com/us/en/home/applications/L1_AutoChem_Applications/L2_Crystallization/seeding-cryz.html; Sep. 25, 2020) and Hirayama (Handbook for Organic Compound Crystal Preparation: Principles and Expertise, 2008, pp. 57-84) as applied to claims 26-28, 30-36, 41 and 47 above and further in view of Takigawa (JP2009102263A).
The references cited above do not teach wherein the crystallization solvent is 1-hexanol. However, Takigawa cures this deficiency.
Takigawa teaches isolation and purification of L-carnitine which involves step of crystalizing. Takigawa teaches 1-hexanol, 2-butanol and 1-butanol as suitable crystallization solvents that can be used for crystallizing and purification.
It would have been prima facie obvious to one or ordinary skill in the art to have combined the teaching of above cited references with Takigawa and use 1-hexanol as the crystallization solvent in the method taught by Woo. As discussed supra, Woo teaches 1-butanol and 2-butanol as suitable crystallization solvents and Takigawa teaches 1-hexanol, 2-butanol and 1-butanol as suitable crystallization solvents that can be used for crystallizing and purification. It would have been obvious to one of ordinary skill in the art to substitute the known crystallization solvent (e.g. 2-butanol for 1-hexanol) as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 26-36 and 41-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-30 of copending Application No. 18/874,602.
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘602 is also directed to a method for obtaining crystalline DHHB comprising providing a feed comprising DHHB and crystallization solvent, heating the feed to obtain a solution. Cooling the solution to obtain supersaturated solution and seeding the supersaturated solution. Cooling the solution to obtain crystalline DHHB followed by separating the crystalline DHHB. Washing the DHHB with washing solvent. ‘602 also discloses the content of PSDHE II, rhodamine II and rhodamine hexyl ester which reads on or overlaps the claimed amount of these impurities.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 26-36 and 41-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-31 of copending Application No. 17/802,171 (US20230357129A1) in view of Woo, Buckton, Harvard, Toledo, Hirayama, Takigawa, Beck and Choi (all cited in the 103 rejection above).
‘171 is directed to a process for isolating crystalline DHHB comprising dissolving a mixture comprising DHHB in a solvent having a boiling point of at most 110 C to obtain a solution. Cooling the solution to a temperature in the range of from 20 to 40 C. Adding seed crystals of DHHB to the solution. Cooling the solution to a temperature below 5 C to obtain a suspension. Filtering the suspension to isolate DHHB in crystalline form. Cooling is performed in linear cooling rate. Further, washing the isolated DHHB with a solvent. Also discloses the content of PSDHE II and rhodamine which overlaps the claimed amounts.
‘171 does not expressly teach cooling the solution to obtain a solution as required in step d. Cooling the solution to obtain supersaturated solution. The specific crystallization solvent (e.g. 1-hexanol) and the specific seeding method and post washing steps. However, as discussed supra, Woo, Buckton, Harvard, Toledo, Hirayama, Takigawa, Beck and Choi all disclose that these method steps are well known in the art for crystallization of a compound and thus, one skilled in the art would have found it obvious to employ these specific steps in the method taught in ‘171.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI SAEED whose telephone number is (571)272-2371. The examiner can normally be reached M-F 8-5 EST.
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, SUE X LIU can be reached at 5712725539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALI S SAEED/ Examiner, Art Unit 1616