Prosecution Insights
Last updated: April 19, 2026
Application No. 18/266,039

Branching Technology

Non-Final OA §101§102§103§DP
Filed
Jun 08, 2023
Examiner
KELLY-O'NEILL, YOLANDA LYNNETTE
Art Unit
1692
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Scion Holdings LLC
OA Round
1 (Non-Final)
27%
Grant Probability
At Risk
1-2
OA Rounds
3y 5m
To Grant
70%
With Interview

Examiner Intelligence

Grants only 27% of cases
27%
Career Allow Rate
6 granted / 22 resolved
-32.7% vs TC avg
Strong +42% interview lift
Without
With
+42.4%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
70 currently pending
Career history
92
Total Applications
across all art units

Statute-Specific Performance

§101
1.0%
-39.0% vs TC avg
§103
40.9%
+0.9% vs TC avg
§102
11.7%
-28.3% vs TC avg
§112
24.7%
-15.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 22 resolved cases

Office Action

§101 §102 §103 §DP
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. Priority This application is a 371 of PCT/ US2021/63934 which claims the benefit of US Provisional Applications 63/196,679 and 63/126,780 as reflected in the filing receipt mailed on 20 October 2023 . Claim Objections Claims 14 and 18-20 are objected to because of the following informalities: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.”, see MPEP 608.01(m) . Claim 14 recites “and wherein and greater than 8% of the mixture of C8-C36 alcohols are 2-ethyl branched alcohols, with compounds having one or more carboxylic acid functions. producing a product ester composition” , which appears to include typographical mistakes. Claim 14 is interpreted as “and wherein and greater than 8% of the mixture of C8-C36 alcohols are 2-ethyl branched alcohols, with compounds having one or more carboxylic acid functions . ; and , producing a product ester composition” . Claim s 18-20 appear to be missing ending periods. Appropriate correction is required. Claim Rejections - 35 USC § 102 (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. Claim s 14-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Matsuura et al. (US20110011124, hereinafter Matsuura) . Matsuura teaches the instant application claim 14 limitations of a complex ester composition made by esterifying a polyhydric alcohol with a dibasic acid at a predetermined rate for partial esterification, then the partial ester reacts with the fatty acid, such as a fatty acid having the carbon number of 5, such as 2-methyl-butyric acid, mixed with fatty acid having the carbon number of 6, such as 2-ethyl-butyric acid, at a weight ratio equal to or greater than 10:90 and equal to or less than 90:10, which is also mixed with fatty dibasic acids such as undecanoic diacid, dodecanoic diacid, tridecanoic diacid, and docosanoic diacid aka a C22 carboxylic acid, see Paras. [0113]-[0117], meeting the product ester composition in instant application claim 14 . In regard to “ produced as a product of the process, comprising the steps of: reacting … with compounds having one or more carboxylic acid functions. producing” in instant application claim 14 and the reactant compounds in instant application claim s 15-20, see MPEP 2113(I) stating “even 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)”. Matsuura teaches a composition comprising the ester composition; therefore, the process of production limitations in instant application claim 14, in instant application claim 15, in instant application claim 16, in instant application claim 17, in instant application claim 18, in instant application claim 19, and in instant application claim 20 are not given patentable weight. 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. 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsuya et al. (WO2008105557, see machine translation, hereinafter Tatsuya). Tatsuya teaches the instant application claims 1-8 limitations of a product amine composition containing (A) a complex of an amine compound and aluminum hydride, (B) an amine compound and (C) an organic solvent, see Abstract, where the (A) amine compounds, see Paras. [0016]-[0029], are specifically selected from the preferred amines of t-butylamine aka a primary amine, 2-methylbutylamine aka a branched primary 2-methyl amine, n-hexylamine, cyclohexylamine, 2-ethylhexylamine aka a branched primary 2-ethyl amine, octylamine aka a C8 amine, phenylamine, and benzylamine, see Para. [0024], and (B) amine compounds are mixtures of the above amines, see Paras. [0030]-[0036], including trimethylamine aka a tertiary amine, triethylamine, methyldiethylamine , dimethylethylamine , dimethylamine aka a secondary amine, diethylamine , and ethylenediamine, see Para. [0036]. The content of the (A) and (B) amines is based on the (B) amines present in the composition at a concentration of 1 to 70% by mass, see Para. [0065]; therefore, specifically tri(2-ethylhexyl)amine has a concentration in the amine composition of 1 to 70% by mass, or tri-2-methylbutylamine has a concentration in the amine composition of 1 to 70% by mass, or tri(2-ethylhexyl)amine has a concentration in the amine composition of 21% by mass, tri-2-methylbutylamine has a concentration in the amine composition of 49% by mass, and 0 % by mass liner amines, meeting: The product amine composition including a mixture of C8-C36 amines, mixtures of primary, secondary, and tertiary amines, within the range of linear amines, within the range of 2-methyl branched amines, and within the range of 2-ethyl branched amines in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, in instant application claim 5, in instant application claim 6, in instant application claim 7, and in instant application claim 8 . In regard to “ produced as a product of the process, comprising the steps of: reacting … with an amine and hydrogen to produce” in instant application claim 1 and “the reacting ..” in instant application claims 2-4, see MPEP 2113(I) stating “even 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)”. Tatsuya teaches a composition comprising the specific amines; therefore, the process of production limitations in instant application claim 1, in instant application claim 2, in instant application claim 3, and in instant application claim 4 are not given patentable weight. Tatsuya teaches the specific instantly claimed branched amines in a list of possible choices. When there is motivation to solve a problem and there are a finite number of identified, predictable solutions to be tested for improved properties, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense, see KSR, 550 U.S. at 402-03, 82 USPQ2d at 1390 and MPEP 2143 I.E. Tatsuya details 15 preferred amines as amine (A) and/or amine (B), see Paras. [0024];[0036]. 15 amines are within a finite number of amines to be tested for predictable improved properties, such as storage stability, of the aluminum hydride composition leading to a reasonable expectations of success for those of ordinary skill in the art, before the effective filing date of the claimed invention, to obtain an aluminum film of good quality and storage stability by selecting tri-2-methylbutylamine and tri(2-ethylhexyl)amine , see Paras. [0009]-[0011]. 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”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Tatsuya teaches the selection of tri-2-methylbutylamine and tri(2-ethylhexyl)amine f rom a list of only 15 amines , a person of ordinary skill in the art has good reason to produce an amine composition by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of obtain an aluminum film of good quality and storage stability by selecting tri-2-methylbutylamine and tri(2-ethylhexyl)amine , see Paras. [0009]-[0011] and MPEP 2141. Selection of a known material, such as a 2-methy l and 2-ethyl branched amines , based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. In addition, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges”, such as the concentration of the 2-ethyl branched amines , “is the optimum combination of percentages.” In re Hoeschele , 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05. Claims 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuura et al. (US20110011124, hereinafter Matsuura) . Matsuura teaches the instant application claims 9-13 limitations of a carboxylic acid composition containing a fatty acid having the carbon number of 5, such as 2-methyl-butyric acid, mixed with a fatty acid having the carbon number of 6, such as 2-ethyl-butyric acid, at a weight ratio equal to or greater than 10:90 and equal to or less than 90:10, which is also mixed with fatty dibasic acids such as undecanoic diacid, dodecanoic diacid, tridecanoic diacid, and docosanoic diacid aka a C22 carboxylic acid, see Paras. [0115]-[0117], therefore, specifically 2-methyl-butyric acid has a concentration in the carboxylic acid composition of 10 to 90% by mass, or 2-ethyl-butyric acid has a concentration in the carboxylic acid composition of 10 to 90% by mass, or 2-ethyl-butyric acid has a concentration in the carboxylic acid composition of 21% by mass, 2-methyl-butyric acid has a concentration in the carboxylic acid composition of 49% by mass, and 30% by mass linear docosanoic diacid, meeting: The product carboxylic acid composition including a mixture of C8-C36 carboxylic acids, within the range of linear carboxylic acids, within the range of 2-methyl branched carboxylic acids, and within the range of 2-ethyl branched carboxylic acids in instant application claim 9, in instant application claim 10, in instant application claim 11, in instant application claim 12, and in instant application claim 13 . In regard to “ produced as a product of the process, comprising the steps of: reacting … with oxygen or other oxidizing agents to produce” in instant application claim 9, see MPEP 2113(I) stating “even 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)”. Matsuura teaches a composition comprising the specific carboxylic acids; therefore, the process of production limitations in instant application claim 9 are not given patentable weight. Matsuura teaches the specific instantly claimed linear carboxylic acids in a list of possible dibasic choices. When there is motivation to solve a problem and there are a finite number of identified, predictable solutions to be tested for improved properties, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense, see KSR, 550 U.S. at 402-03, 82 USPQ2d at 1390 and MPEP 2143 I.E. Matsuura details 12 preferred linear dibasic carboxylic acids, see Para. [0117]. 12 carboxylic acids are within a finite number of carboxylic acids to be tested for predictable improved properties leading to a reasonable expectations of success for those of ordinary skill in the art, before the effective filing date of the claimed invention, in producing a polyol ester compatible in the specific refrigerant oil , see Paras. [0113]-[0117]. 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”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Matsuura teaches the selection of tri-2-methylbutylamine and tri(2-ethylhexyl)amine from a list of only 12 dibasic linear carboxylic acids , a person of ordinary skill in the art has good reason to produce a carboxylic acid composition with the optimal dibasic linear carboxylic acid by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of producing a polyol ester compatible in the specific refrigerant oil , see Paras. [0113]-[0117] and MPEP 2141. Selection of a known material, such as a linear dibasic carboxylic acid , based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. In addition, “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges”, such as the concentration of the 2-ethyl branched carboxylic acids , “is the optimum combination of percentages.” In re Hoeschele , 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05. Double Patenting A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co. , 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18562959 to Killebrew et al. (hereinafter Killebrew ‘959) (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. The claims of Killebrew ‘959 recite the instant application claim 1 product composition produced as a product of a process, see claim 1, comprising the steps of: reacting a mixture of C8-C36 aldehydes, wherein less than 60% of the mixture of C8- C36 aldehydes are linear aldehydes, wherein greater than 25% of the mixture of C8-C36 aldehydes are 2-methyl branched aldehydes, and wherein greater than 8% of the mixture of C8-C36 aldehydes are 2-ethyl branched aldehydes, see claim 1, with an amine and hydrogen to produce a mixture of C8-C36 amines wherein less than 60% of the amines are linear amines, and greater than 25% of the amines are 2-methyl branched amines and greater than 8% of the amines are 2-ethyl branched amines, see claim 1; and producing an amine composition, see claim 1; The reacting amines and the amine compositions produced in instant application claims 2-4 , see claims 2-4; The % 2-ethyl branched amines in instant application claims 5-8 , see claims 5-8; The instant application claim 9 product carboxylic acid composition produced as a product of a process, see claim 9, comprising the steps of: reacting a mixture of C8-C36 aldehydes, wherein less than 60% of the mixture of C8-C36 aldehydes are linear aldehydes, wherein greater than 25% of the mixture of C8-C36 aldehydes are 2-methyl branched aldehydes, and wherein greater than 8% of the mixture of C8-C36 aldehydes are 2-ethyl branched aldehydes, see claim 9, with oxygen or other oxidizing agents to produce a mixture of C8-C36 carboxylic acids wherein less than 60% of the carboxylic acids are linear carboxylic acids, and greater than 25% of the carboxylic acids are 2-methyl branched carboxylic acids and greater than 8% of the carboxylic acids are 2-ethyl branched carboxylic acids, see claim 9; producing a product carboxylic acid composition, see claim 9; The % 2-ethyl branched carboxylic acids in instant application claims 10-13 , see claims 10-13; The instant application claim 14 product ester composition produced as a product of a process, see claim 14, comprising the steps of: reacting a mixture of C8-C36 alcohols, wherein less than 60% of the mixture of C8-C36 alcohols are linear alcohols, wherein greater than 25% of the mixture of C8-C36 alcohols are 2-methyl branched alcohols, and wherein and greater than 8% of the mixture of C8-C36 alcohols are 2-ethyl branched alcohols, see claim 14, with compounds having one or more carboxylic acid functions., see claim 14, producing a product ester composition, see claim 14; The compounds comprising one or more carboxylic acids in instant application claims 15-17 , see claims 15-17; and, The % 2-ethyl branched alcohols in instant applications 18-20 , see claims 18-20. 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 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 26-32 of copending Application No. 17553752 to Killebrew et al. (hereinafter Killebrew ‘752) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. The claims of Killebrew ‘752 recite the instant application claim 14 product ester composition produced as a product of a process, see claim 26, comprising the steps of: reacting a mixture of C8-C36 alcohols, wherein less than 60% of the mixture of C8-C36 alcohols are linear alcohols, wherein greater than 25% of the mixture of C8-C36 alcohols are 2-methyl branched alcohols, and wherein and greater than 8% of the mixture of C8-C36 alcohols are 2-ethyl branched alcohols, see claim 26, with compounds having one or more carboxylic acid functions., see claim 26, producing a product ester composition, see claim 26; The compounds comprising one or more carboxylic acids in instant application claims 15-17 , see claims 27-29; and, The % 2-ethyl branched alcohols in instant applications 18-20 , see claims 30-32. Conclusion No claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT Y. Lynnette Kelly-O'Neill whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3456 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Thursday, 8 a.m. - 6 p.m., EST, with Flex Time . 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, FILLIN "SPE Name?" \* MERGEFORMAT Scarlett Yen-Ye Goon can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 270-5241 . 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. /YO/ Examiner, Art Unit 1692 /RENEE CLAYTOR/ Supervisory Patent Examiner, Art Unit 1691
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Prosecution Timeline

Jun 08, 2023
Application Filed
Dec 17, 2025
Non-Final Rejection — §101, §102, §103 (current)

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1-2
Expected OA Rounds
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Grant Probability
70%
With Interview (+42.4%)
3y 5m
Median Time to Grant
Low
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