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 .
Detailed Action
Claims 1-10 are pending in this application (examiner notes that there are 3 sets of identical claims and filed on the same date 07/25/2023; clarification and correction is required).
Priority
Applicants’ claim for the benefit of priority under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a 371 of PCT/US2023/016586 filed on 03/28/2023, which claims benefit of Provisional application 63/304,027 filed on 01/28/2022. However, note that the instant claims are given the priority date of 371 of PCT/US2023/016586 filed on 03/28/2023, as the subject-matter of the instant claims are only disclosed in the 371 of PCT/US2023/016586 filed on 03/28/2023.
Information disclosure statement
The information disclosure statements (IDS) submitted on 07/25/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement is considered and initialed by the examiner.
Claim Objections
Applicant is advised that should claim 5 be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. Claims 5 and 10 recite “… wherein the enzymes are a mixture of amylase and cellulase”, and thus claim 10 does not further limit the scope of claim 5. See MPEP § 706.03(k).
Double Patenting rejection
Claim 10 is rejected to under 37 CFR 1.75 as being duplicate of claim 5. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k). Examiner takes the position that the scope of claim 5 and the rejected claim 10 are one and the same.
Claim Rejections: 35 USC § 112(b)
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.realtive term
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 7-9 that depends from claim 5 and claim 5 depends from claim 1 and lacks antecedent basis for “method of claim 5”; as claims 1 and 5 do not recite and not directed to a “method” as claims 1 and 5 are directed to a ”system”. Therefore, it is not clear to the examiner what the applicants’ are referring to in claims 7-9 and there is insufficient antecedent basis for this limitation in claims 7-9. Clarification and correction is required.
Double Patenting rejection
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 1-10 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-15 (dated 07/25/2023) of co-pending Application No. 18/226,039 (US 2023/0392218 A1) and in view of Rarbach et al., (US 2014/0045227 A1). This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct from each other. The subject matter claimed in the instant application is fully disclosed in the referenced co-pending application and would be covered by any patent granted on that co-pending application since the referenced co-pending application and the instant application are claiming common subject matter, as follows: The recited claims 1-15 (dated 07/25/2023) of co-pending Application No. 18/226,039 (US 2023/0392218 A1) encompass “A system for generating a water-soluble mixture of oligosaccharides for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…” that overlaps with the claimed subject-matter, as claimed in claims 1-10 of the instant application, and falls entirely within the scope of co-pending claims in co-pending reference application. Additionally the following reference of prior art clearly teaches a method of degradation of lignocellulosic mass to generate fermentable sugars and the use of enzymes amylases, cellulases and hemi-cellulases to utilize the generated sugars for fermentation and production of ethanol/biofuel: see Rarbach et al., (US 2014/0045227 A1), Abstract; paragraphs [0001-0007], [0015-0017], [0058], [0136]; and entire document; provides Teaching, Suggestion and Motivation for a method of degradation of lignocellulosic mass to generate fermentable sugars and the use of enzymes amylases, cellulases and hemi-cellulases to utilize the generated sugars for fermentation and production of ethanol/biofuel.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Rejections: 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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.
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.
Claims 1-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Slager et al., (US 10,994,255) and further in view of Rarbach et al., (US 2014/0045227 A1).
Claims 1-10 as interpreted are directed to “a system for generating a water-soluble mixture of oligosaccharides for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…” (also see claims objections and 35 U.S.C. 112(b) rejection above for claim interpretation).
Regarding claims 1-10, Slager et al., (US 10,994,255; priority 01/16/2018) discloses a system for generating a water-soluble mixture of oligosaccharides; said reference system is identical to the system claimed in the instant invention (Abstract; Fig. 1-6; Claims and entire document); said reference system includes device/mill for converting cellulose to sugar comprising a reaction chamber, comprises a crusher for receiving a mixture of cellulose feedstock and solid acid catalyst to optimize sugar production (col. 3, lines 4-67 to col. 4, lines 1-60).
The disclosure of Slager et al., as applied to claims 1-10 is described rejection above. However, Slager et al., does not explicitly teach in that “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…”.
Regarding claims 1-10, “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…”, Rarbach et al., (US 2014/0045227 A1) in Abstract; paragraphs [0001-0007], [0015-0017], [0058], [0136]; and entire document provides Teaching, Suggestion and Motivation for a method of degradation of lignocellulosic mass to generate fermentable sugars and the use of enzymes amylases, cellulases and hemi-cellulases to utilize the generated sugars for fermentation and production of ethanol/biofuel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed process of Slager et al., of industrial significance and incorporate the modification to the claimed process in that “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…”, as suggested by Rarbach et al., and to modify the teachings of Slager et al. A person of ordinary skill in the art is motivated to make such change, because “facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…” and utilization of produced sugars in the production of alcohols/biofuel and a skilled artisan would realize such a modification would be useful to increase the production of alcohols/biofuel. One of ordinary skill in the art has a reasonable expectation of success at adding the step i.e., “for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…” as suggested in the teachings of Rarbach et al., and are well known in the art. Therefore, the inventions as a whole lack an inventive step over the prior art. The expectation of success is high, because the combined teachings of Slager et al., and Rarbach et al., also provide the structural and functional elements of the instant invention (Teaching, Suggestion and Motivation).
Given this extensive teaching in prior art (Slager et al., and Rarbach et al.,) “a system for generating a water-soluble mixture of oligosaccharides for facile conversion to fermentable sugars, …enzymatically converted to fermentable sugars…” (also see claims objections and 35 U.S.C. 112(b) rejection above for claim interpretation) as taught by the instant invention and as claimed in claims 1-10 is not of innovation but of ordinary skill in the art and the expectation of success is extremely high i.e., “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”.
Hence, claims 1-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Slager et al., (US 10,994,255) and further in view of Rarbach et al., (US 2014/0045227 A1).
Allowable Subject Matter/Conclusion
None of the claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHIRAMA RAGHU whose telephone number is (571)272-4533. The examiner can normally be reached on M-F 8:30am-5pm EST.
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/GANAPATHIRAMA RAGHU/ Primary Examiner, Art Unit 1652