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
2. The instant application is a national stage entry of PCT/FR2022/050388, filed March 4, 2022.
3. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d) by application no. FR2102123 filed in the French Patent Office on March 4, 2021, which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on September 5, 2023; October 2, 2025; November 24, 2025; and December 31, 2025 were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS documents were considered. A signed copy of each form 1449 is enclosed herewith.
Election/Restrictions
5. Applicant’s election without traverse of Group I in the reply filed on February 5, 2026 is acknowledged.
Status of the Claims
6. Claims 1-15 are pending in the instant application. Claims 11-15 are withdrawn for being drawn to a non-elected invention. Claims 1-10 are under consideration herein.
Claim Rejections - 35 USC § 102
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.
7. The following is a quotation of the appropriate paragraphs of pre-AIA 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.
8. Claims 1-3 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP4517486B2.
JP4517486B2 teaches a method for preparing HMTBN from MTP and HCN with a molar ratio of HCN:MTP of 1:05:1 and in the presence of potassium carbonate. The pH is adjusted to 7.9 and then reaction medium is acidified by lowering to a pH of 1.33 by adding sulphuric acid (see translation, abstract, and table) and working Examples 1-4. See [0011] for pH and distillation limitations of instant claims and [0009] for limitations regarding the continuous carrying out of the method.
Claim Rejections - 35 USC § 103
9. Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP4517486B2 in view of CN109912472A.
JP4517486B2 teaches a method for preparing HMTBN from MTP and HCN with a molar ratio of HCN:MTP of 1:05:1 and in the presence of potassium carbonate. The pH is adjusted to 7.9 and then reaction medium is acidified by lowering to a pH of 1.33 by adding sulphuric acid (see translation, abstract, and table) and working Examples 1-4. See [0011] for pH and distillation limitations of instant claims and [0009] for limitations regarding the continuous carrying out of the method. JP4517486B2 does not specifically tech the temperature range of instant claim 4 or the limitations of instant claim 5.
CN109912472A teaches a method for preparing HMTBN from MTP and HCN with a molar ratio of HCN:MTP of 1:001 to 1. The process comprises microchannel reaction of MTP with HCN under catalysis of catalyst (citric acid-sodium citrate buffer solution, acetic acid-sodium acetate buffer solution, etc.) at 30-70° and 0.05-0.5 MPa for 0.5-10 min. The process has shortened reaction time, reduced generation of byproducts, high product yield and low cost.
See MPEP 2144.05(I): 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).
With respect to this difference, MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at ___, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
Based on the teachings of the MPEP and KSR above, by employing the rationale in A and F above, it would have been obvious for one of ordinary skill in the art to make the aforementioned modifications and arrive at the presently claimed invention.
If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP 2145.
Please note that if Applicant intends to rely on unexpected or unforeseen results, attention is invited to MPEP 716. Absent clear, convincing, side-by-side data demonstrating unobviousness vis-à-vis the prior art commensurate with the scope of protection sought, the claims are considered prima facie obviousness.
Conclusion
10. No claims are allowed.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha Shterengarts whose telephone number is (571)270-5316. The examiner can normally be reached on Monday thru Thursday 9-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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