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
Claim Status
Claims 26-45 are pending. Claims 26-43 are under examination. Claims 44-45 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 26-43 are rejected. No claims allowed.
Filing Receipt
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Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 26-43, drawn to a method for producing a separated product comprising an ester of butyric acid.
Group II, claim(s) 44-45, drawn to a formulation comprising a refined product comprising an ester of butyric acid.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a refined product comprising an ester of butyric acid, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Kang et al. (USPGPub 2013/0164801, Published 06-2013). Kang et al. teach a refined product comprising an ester of butyric acid example 5, page 6.
During a telephone conversation with Daniel Swirsky on 03/12/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 26-43. Affirmation of this election must be made by applicant in replying to this Office action. Claims 44-45 are withdrawn from further consideration by the examiner, 37
CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
Claim 29 is being interpreted as involving steps to obtain the aqueous carboxylic acid mixture in line one of step (i) in claim 26. The steps are reacting a salt of butyric acid and an additional carboxylic acid having one counter ion with a mineral acid to prepare a salt of the mineral acid and the at least one counter ion and separation of said mineral acid salt.
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 29 and 31 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “said salt” in line 5 of claim 29 is indefinite. The phrase may be referring to the salt of butyric acid or the carboxylic acid or the salt of the mineral acid. Amending the claim to “separating said salt of said mineral acid” will overcome the rejection of record.
The phrase “said refining” in line two of claim 31 is indefinite. There is insufficient antecedent basis for this limitation in the claim. Claim 26 from where claim 31 depends does not implicitly or explicitly recite a refining step. Claim 27 does.
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.
Claim(s) 26, 28, 33, 35, and 37-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang et al. (USPGPub 2013/0164801, Published 06-2013) as evidence by CRC (Handbook of Solubility Parameters and Other Cohesion Parameters second edition, six pages, Published 1991).
Kang et al. disclose
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Concerning current step (i), see Kang et al. par. 57. Concerning the at least 30%wt of total amount of acids are in the free acid form see Kang et al. par. 58 wherein the pH of the mixture was adjusted to 2 with sulfuric. Concerning step (ii) and (iii) see Kang et al. par. 60. Concerning the solubility parameter of less than 25 MPa(1/2), Kang et al. disclose par. 83 that isooctyl butyrate and octanol was a bottom product. This product requires isooctanol as the extractant solvent. See par. 45 of Kang et al. wherein isooctanol is explicitly recited as the extraction solvent. Thus, the octanol product disclosed by Kang et al. is the isooctanol extraction solvent in paragraph 45 of Kang et al.
Concerning the solubility parameter, this is a property of the isooctanol. As evidence by CRC page 275, wherein 2-ethylhexanol (isooctanol) has a solubility parameter of less than 25 MPa(1/2) or 19.4.
Concerning current steps (iv) and (v) See par. 82 (ethanol), 81 Amberlyst acidic resin of Kang et al. wherein ethyl butyrate was formed.
Concerning the optional limitation of water (H2O) being formed and separation thereof, see par. 81 of Kang et al. wherein a top product is separated into a H2O layer and an ethyl butyrate layer.
Concerning claim 28, substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Both the methods of the prior art and of the current invention were shown to involve claimed steps (i). Thus the methods of the prior art would necessarily result in the at least one non-acid impurity in the said acid mixture.
Moreover, the specification recites examples of impurities being carbohydrates, amino acids and mineral acids. Kang et al. teach carbohydrates are utilized in fermentations using Clostridium to produce butyric acid. The carbohydrates of the prior art are the claimed impurities. The optional phrase is optional.
Concerning claim 33, Kang et al. disclose ethanol (par. 82).
Concerning claim 35, Kang et al. disclose a separation of water comprising distillation of the water and a subsequent decantation (par. 81 and Figure 4).
Concerning claim 37-39 and the two phases in the reactor, there is a liquid bottom phase and a gaseous phase ascending the column (Kang et al. ethanol par. 81-83). Concerning the hydrophobic/hydrophilic nature of the phases, these are properties of the two phases. The gaseous phase is enriched with the ester and the bottom is fed the alcohol (Figure 4).
Alternatively, interpreting the reactor of Kang et al. (Figure 4 with the cited working examples) the decanter is part of the reactor that does have two liquid phases. The first being more hydrophobic than the second has the ester and the second being water. The enrichment with alcohol would have been present due to substantially identical processes have substantially identical products such as the second phase being enriched with said alkanol.
The methods of the prior art are substantially identical to those being claimed because both teach reacting an extractant solution of butyric acid with an alcohol and separating the produced water.
Concerning claim 40, separating water from the ester does comprise separating the gaseous phase from the bottom liquid phase (Figure 4). Alternatively, the two phases in the decanter are separated.
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.
Claim(s) 26-28, 31-33, and 35-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (USPGPub 2013/0164801, Published 06-2013), CRC (Handbook of Solubility Parameters and Other Cohesion Parameters second edition, six pages, Published 1991), Burke (Solubility Parameters: Theory and Application, Part 2 - The Hildebrand Solubility Parameter, 5 pages, Published 08-1984), Nadeau et al. (US Patent 2,165,293, Patent sate 07-1939) and MIT (8.4-Extraction and Washing Guide, 4 pages, Published 01-2012).
Scope of the Prior Art
The disclosure of Kang et al. is written in the above 102 rejection and incorporated by reference. Additional teachings of Kang et al. are as follows. Kang et al. teach acids and bases do alter the product butyric acid and other acids and salts driving them in and out of solvent systems (Example 1-2 and 5 and par. 15).
Concerning claim 41, Kang et al. teach continuous operations with respect to extraction (Example 2), continuous heating of the broth (par. 73), and continuously centrifuging (par. 56). Moreover, Kang et al. teach with respect to Figure 4. (par. 50), “while the esterification takes place” and “passing the vapor thereof through the column”, implies continuous operations of the claimed reactor. Concerning the separation of the water from the ester this is interpreted to be continuous because a portion of the decanted ethyl butyrate layer is recirculated to the column to control the temperature and the concentration of the ester is maintained(par. 50). The recirculation would necessarily be continuous due the reaction in the column being continuous.
Ascertain the Differences
Kang et al. does not teach refining (water washing) of the extract as in claim 27 and 31 which involves contacting the butyric acid-containing extract with water, whereby at least a fraction of the additional carboxylic acid is washed out to form the refined extract. Kang et al. does not teach the water washing (refining) of the ester of butyric acid wherein a washed alkanol is formed.
Kang et al. does not teach toluene as an extraction solvent nor the Hildebrand solubility parameter thereof.
Secondary References
MIT teach “Aqueous washings are done to remove water soluble impurities from
organic products since normally the compound that you desire will be dissolve in the organic layer” (p. 1). Additionally, MIT teach “This handout describes standard extraction and washing protocols that can be applied to virtually any crude reaction mixture” (p. 1). MIT teach acid/base and distilled water washings. Aqueous washings are the current refining. These teachings broadly overlap with those of Kang et al. because both teach aqueous solutions coming into contact with organic phases having products.
CRC teach the Hildebrand solubility parameter of the current solvent toluene
(18.2) (p.6) and the two solvents taught by Kang et al., isooctanol (2-ethylhexanol, 19.2) (p.6) and tributylamine 17.8 (p.6). Note: the Hildebrand solubility parameters of the extraction solvents taught by the prior art encompass the Hildebrand solubility parameter of the current solvent toluene.
Burke teach neighboring solvents in proximity to (proximity to Hildebrand values) solvents known to dissolve a particular material would also dissolve the particular material (p. 3-4). Moreover, the solubility behavior of solutes can be predicted using the Hildebrand values (p. 4).
Naudeau et al. teach toluene to be an effective extractant for butyric acid from solutions containing water and acetic acid having a wide range mixed acid concentrations (page 2 column 1, lines 15-25, 30-40)(page 2, bridging columns 1 and 2)(page 2, column 2, lines 1-15).
Naudeau et al. teach the mixed acid solutions can come from micro organisms
and are generally in the aqueous state (p. 1, column 1, lines 15-25).
The above teachings of the secondary reference overlap with the teachings of the primary reference and render the secondary references analogous art to the invention.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the water washings of MIT on the extracted butyric acid composition taught by Kang et al. (end of Example 2, Kang et al.) with a reasonable expectation of success. The ordinary artisan would have done so with a reasonable expectation of success because MIT teach standard extraction and washing protocols that can be applied to virtually and crude reaction mixture and aqueous washings are done to remove water soluble impurities from organic products. Additionally, as instructed by Kang et al. as to acids and bases altering the butyric acid product and other salts by driving these in and out of solution and being aware of acetic acid, the ordinary artisan would have chosen the appropriate washings to ensure a pure product.
Additionally, it would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the water washings of MIT on the separated ester of the butyric acid taught by Kang et al. (par. 81) with a reasonable expectation of success. The ordinary artisan would have done so with a reasonable expectation of success because MIT teach standard extraction and washing protocols that can be applied to virtually and crude reaction mixture and
aqueous washings are done to remove water soluble impurities from organic products.
The ordinary artisan would have looked to MIT and would have combined the teachings therein with Kang et al. due to the overlapping subject matter and because MIT being analogous art the invention.
Upon performing the above argued washings the limitations of claims 27, 31, and 42-43. This includes a refined extract, a washed out additional carboxylic acid, the current refined product and washed alkanol are formed.
Concerning claim 32 and the Hildebrand values (Hv) as claimed, as a reminder, CRC teach the Hv of the prior art extraction solvents and of toluene. The Hv values of the prior art surround (encompass) the Hv of toluene. With this knowledge and the teachings of Burke wherein solvents in close proximity dissolve a particular material, it would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have tried the claimed toluene and solvents having the claimed Hv’s as an extractant. The ordinary artisan would have had a reasonable expectation of success in arriving at toluene and for that matter the claimed Hv’s because neighboring solvents in proximity to solvents known to dissolve a particular material would also dissolve the particular material (p. 3-4). Moreover, the solubility behavior of solutes can be predicted using the Hildebrand values (p. 4). Most critically, the Hv of the prior art encompass the Hv of toluene. An expectation of similar solubility properties is achieved. Alternatively, the ordinary artisan would have chosen toluene because Naudeau et al. teach toluene to be an effective extractant for butyric acid from solutions containing water and acetic acid having a wide range mixed acid concentrations (page 2 column 1, lines 15-25, 30-40)(page 2, bridging columns 1 and
2)(page 2, column 2, lines 1-15). The ordinary artisan would have looked to Naudeau et al. because of the teaching that butyric acid can come from microorganisms. As does the primary reference.
Concerning claim 36, upon utilizing toluene, a water-extractant azeotrope would necessarily occur due to the properties of the extractant and water.
Concerning claim 41, the claimed continuous processes were argued to be
taught by Kang et al. Moreover, the courts have held that continuous operation is obvious in light of a batch process in the prior art. See In re Dilnot, 319 F.2d 188, 138 USPQ (CCPA 1963) (Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art.). MPEP 2144.04 V. E.
Claim(s) 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (USPGPub 2013/0164801, Published 06-2013), CRC (Handbook of Solubility Parameters and Other Cohesion Parameters second edition, six pages, Published 1991), Burke (Solubility Parameters: Theory and Application, Part 2 - The Hildebrand Solubility Parameter, 5 pages, Published 08-1984), Nadeau et al. (US Patent 2,165,293, Patent sate 07-1939) and MIT (8.4-Extraction and Washing Guide, 4 pages, Published 01-2012) as applied to claims 26-28, 31-33, and 35-43 in the above 103 rejection and in further view of Clark et al. (USPGPub 2019/0112247, Published 04-2019) and Lee et al. (Recovery of Ammonium Sulfate from fermentation waste by electrodialysis, Water Research, 37 pp. 1091-1099, Published 2003).
Scope of the Prior Art
The teachings of Kang et al. CRC, Burke, and MIT are written in the above 102 and 103 rejections and are incorporated by reference. Additional teachings of Kang et al. are as follows.
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The immediately above pH of 6 overlaps the claimed range of 5 to 8 in current claim 29. The immediately above sugar cane fermentation is the claimed “providing said aqueous solution comprises fermenting a carbohydrate with butyric acid forming microorganism”.
Kang et al. goes on to teach the following.
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The immediately above is the reaction of the aqueous solution with a mineral acid (sulfuric acid) whereby a salt of said mineral acid and said at least one counter ion is formed.
Ascertain the Differences
Kang et al. does not teach separating said salt comprises crystallizing it to form (NH4)2SO4 crystals and separating said (NH4)2SO4 crystals.
Secondary References
Clarke et al. teach salts can be removed by evaporative crystallization (par. 10 and 50). Clarke et al. is considered analogous art to the invention because Clarke et al. teach separation of components of a fermentation broth (par. 2). Clark et al. goes on to teach fermentation media salts include ammonium sulfate (par. 41). Concerning separating said (NH4)2SO4 crystals, Clarke et al. separation methods that include centrifugation and ultrafiltration when removing solids (par. 10).
Lee et al. teach ammonium sulfate isolated from fermentation waste is used as a fertilizer (p. 1091). The above teachings renders Lee et al. and Clark et al. analogous art to the invention.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the evaporative crystallization and filtration methods of Clarke et al. to remove the ammonium sulfate from the fermentation broth taught by Kang et al. to use the ammonium sulfate as fertilizer as taught by Lee et al.
The ordinary artisan would have had a reasonable expectation of success because Clark et al. teach salts can be removed by evaporative crystallization. The ordinary artisan would have looked to both Clarke et al. and Lee et al. because both teach ammonium sulfate is in fermentation broth. Concerning the pH range of claim 29, MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (USPGPub 2013/0164801, Published 06-2013), CRC (Handbook of Solubility Parameters and Other Cohesion Parameters second edition, six pages, Published 1991), Burke (Solubility Parameters: Theory and Application, Part 2 - The Hildebrand Solubility Parameter, 5 pages, Published 08-1984), Nadeau et al. (US Patent 2,165,293, Patent sate 07-1939) and MIT (8.4-Extraction and Washing Guide, 4 pages, Published 01-2012) as applied to claims 26-28, 31-33, and 35-43 in the above rejection and in further view of Soffar (Chemicals properties of alcohols, Economical importance of Ethanol, Ethylene Glycol & Glycerol, 1 page, Published 07-2019).
Scope of the Prior Art
The teachings of Kang et al. CRC, Burke, and MIT are written in the above 102 and 103 rejections and are incorporated by reference.
Additional teachings of Kang et al. are as follows. Kang et al. teach alcohols having four or less carbons can be used (par. 25).
Ascertain the Differences
Kang et al. does not explicitly recite glycerol or a glycerol ester of butyric acid being mono, di and/or tri butyrate.
Secondary References
Soffar teach ethanol and glycerol are alcohols (p. 1).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have substituted the ethanol in the processes of Kang et al. with the glycerol of Soffar to arrive at the current invention with a reasonable expectation of success. The ordinary artisan with a reasonable expectation of success would have done so because Kang et al. teach alcohols having four or less carbons can be used (par. 25). The mono to tri esters being a result of molar ratios of reactants.
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.
Claim 26-43 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 10 and 15-16 of copending Application No. 18/010,056 in view of Kang et al. (USPGPub 2013/0164801, Published 06-2013), CRC (Handbook of Solubility Parameters and Other Cohesion Parameters second edition, six pages, Published 1991), Burke (Solubility Parameters: Theory and Application, Part 2 - The Hildebrand Solubility Parameter, 5 pages, Published 08-1984), MIT (8.4-Extraction and Washing Guide, 4 pages, Published 01-2012), Soffar (Chemicals properties of alcohols, Economical importance of Ethanol, Ethylene Glycol & Glycerol, 1 page, Published 07-2019), Clark et al. (USPGPub 2019/0112247, Published 04-2019) and Lee et al. (Recovery of Ammonium Sulfate from fermentation waste by electrodialysis, Water Research, 37 pp. 1091-1099, Published 2003).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example,
18/010,056 claims the following.
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18/010,056 does not claim current claimed steps (iv)-(vi) wherein a provided alcohol is contacted with the butyric acid-comprising extract. Instead, 18/010,056 claims esterifying the butyric acid in the clarified broth.
Both scenarios, currently claimed and claimed by 18/010,056 resulted with a separated ester of butyric acid.
Resolving the difference between 18/010,056 and 18/277,092 is just one of substituting one known method for another to obtain predictable results. See MPEP 2141 III (B). See the esterification of the extracted butyric acid teachings of Kang et al. in the above 102/103 rejections which are incorporated by reference.
The remainder of the currently claimed limitations are met by the teachings of the cited references see above 102/103 rejections which are incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/B.G.D/ Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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