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 .
Rejections
Claim Rejections - 35 USC § 112
1. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
2. Claims 16-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the disclosed substituent groups, does not reasonably provide enablement for all of the instantly claimed compounds having the claimed “substituent group”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
A. The instant claims 16-22 recite “substituent group” without specifying the substituent groups. Note the recitation of “substituent group” in claim 16. Therefore, the claims encompass all possible substituents. The instantly claimed “substituent group” reads on an infinite number of compounds resulting from the potentially infinite number of substitutions which can be performed on the recited compounds. In re Wands has 8 criteria, (MPEP 2164.01(a)), as shown below.
(A)The breadth of the claims;
(B)The nature of the invention;
(C)The state of the prior art;
(D)The level of one of ordinary skill;
(E)The level of predictability in the art;
(F)The amount of direction provided by the inventor;
(G)The existence of working examples; and
(H)The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It is noted that the instant claims read on all potential substitutions of the recited compounds which encompasses an infinite number of compounds (Wands factors A and B). The specification does not describe how to make all such substituents, how to add them to the claimed compounds, nor how to select those substituents from the infinite list thereof which will function as required in the instant invention (Wands factors B, F, G). It would require an infinite amount of experimentation to determine how to make all of the substituents encompassed by the instant claims and another infinite amount of experimentation to determine which of these substituted compounds would function in the instantly claimed invention as required (Wands factors B and H). Chemistry is an unpredictable art (Wands factors B and E). The ordinary skilled artisan has not imagined nor figured out how to make all of the substitutions encompassed by the instant claim of “substituent group” yet (Wands factors B, C, D, E, F, G, and H). The enabling disclosure is not commensurate with the full scope of the claimed “substituent group”.
See Sitrick v Dreamworks, LLC (Fed Cir, 2007-1174, 2/1/2008), particularly
“Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges.
MOORE, Circuit Judge.
112(1) Enablement - The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation
We review the grant of summary judgment de novo. LiebeI-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007). Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112, ¶ 1 is a question of law, reviewed de novo, based on underlying facts, which are reviewed for clear error. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because a patent is presumed valid. Id. The “enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” Id. at 1244.
112(1) Enablement - The full scope of the claimed invention must be enabled.
A patentee who chooses broad claim language must make sure the broad claims are fully enabled.
The full scope of the claimed invention must be enabled. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). The rationale for this statutory requirement is straightforward. Enabling the full scope of each claim is “part of the quid pro quo of the patent bargain.” AK Steel, 344 F.3d at 1244. A patentee who chooses broad claim language must make sure the broad claims are fully enabled. “The scope of the claims must be less than or equal to the scope of the enablement” to “ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999).”
3. The instant claim 23 is objected to as depending from the above rejected claims but does not contain the above rejected subject matter, noting the specific second components recited therein.
Claim Rejections - 35 USC § 102
4. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
5. Claims 16 and 18-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 104862363 Lou et al., the machine English translation provided by the examiner being referenced below unless otherwise noted.
Regarding claims 16 and 18-23:
Lou discloses eutectic mixtures comprising the instantly claimed first and second components, including choline chloride and glutamine at page 2, lines 1-4, noting the combination of deep eutectic solvent (DES) and glutamine in the DES mixed solution, page 3, lines 20-21, page 4, lines 4-5, noting that the DES contains choline chloride of the instant claims including the instant claim 21,
The compositions of Lou must necessarily have the properties of the instant claims 16, 18, and 19 because their compositions contain the instantly claimed glutamine and choline chloride which is described as DES by Lou and is therefore expected to necessarily give the eutectic mixture of the instant claims as well as the properties thereof because similar compositions are expected to have similar properties. See MPEP 2112.
The additional components of Lou are encompassed by the open language of the instant claims.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 16-27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021036156 Yang et al., the English translation provided by the applicant being referenced below unless otherwise noted.
Regarding claims 16-27, and 29:
Yang discloses a eutectic solvent containing hydrogen bond donor and hydrogen bond acceptor. See the abstract. The hydrogen bond acceptor is a choline ionic liquid. See Yang’s claim 1. The hydrogen bond donor may be glutamic acid, which falls within the scope of the instantly claimed second component, including those of the instant claims 1, 23, 24, and 29. Yang’s claim 7 recites “one or more of hydrochloric acid or … glutamic acid”. It is clear from the recitation of “one or more” prior to “hydrochloric acid” that the combinations of acids include combinations of HCl and glutamic acid. The referenced eutectic solvent would have been expected to necessarily and inherently have the physical limitations of the eutectic mixture of the instant claims 16, 18, 19, 24, and 27 because they contain the same ingredients, e.g. choline chloride and glutamic acid (Yang’s claim 7), as required by the instant claims, including the instant claims 21 and 23, Yang describes their mixtures as forming deep eutectic solvents, “eutectic” necessitates the melting points of the two compounds, the hydrogen bonding of each component necessitates that a homogenous liquid state occurs when the composition is melted, and similar compositions necessarily have similar properties. See MPEP 2112.
Even though Yang does not exemplify the instantly claimed compositions or otherwise describe them with sufficient specificity to anticipate the instant claims, they claim choline chloride (Yang’s claim 3) and include mixing it with glutamic acid (Yang’s claim 7) which encompasses the combination of choline chloride and glutamic acid as claimed subject matter. It is a basic consideration in solvents that the melting points and boiling points are considered. These are basic physical parameters of solvents undergraduate chemistry students are required to look up for lab experiments. The ordinary skilled artisan has a PhD in chemistry and many years of experience in their art in the examiner’s experience. They would readily be able to choose the desired melting points of each component and the mixture for the relatively small group of deep eutectic solvents disclosed and claimed by Yang. It is not seen that the instantly claimed physical particulars are not predictable to the ordinary skilled artisan from basic experimentation and provide any unexpected result to the instantly claimed invention over the inventions of Yang.
The solvent mixtures of Yang per se give the amounts of the instant claims 17 and 29.
The solvent mixtures of Yang are combined with wood powder, which contains cellulose, lignocellulose, hemicellulose and lignin. See Yang’s claims 10, 11, and 12. Yang thereby encompasses the inventions of the instant claims 24, 25, and 26.
See the entire disclosure of Yang. See Yang, paragraphs [0007], [0009], [0013], [0014], [0018], noting the “high value lignin products”, [0032], [0033], [0036], and the remainder of the document.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the eutectic solvents of Yang which fall within the scope of those of the instant claims and to extract lignin therewith according to the instant claims because such inventions are encompassed by Yang and would have been expected to give only predictable properties to the ordinary skilled artisan including the properties of Yang’s inventions which are specifically discussed by Yang and the properties which are inherent to Yang’s inventions. This makes obvious the instant claims 16-27 and 29.
8. Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2021036156 Yang et al., the English translation provided by the applicant being referenced below unless otherwise noted, as applied to claims 16-27 and 29 in paragraph 7 above, in view of WO 2016/135385 Hakalahti et al.
The discussion of Yang’s disclosure of paragraph 7 above is repeated here in its entirety.
Yang, paragraph [0018], discloses high value lignin products but does not further describe them. Yang does not disclose the molded articles of the instant claim 28.
Hakalahti discloses making shaped articles from solutions of cellulosic materials suspended in choline chloride and hydrogen bond donor. See the abstract, page 7, lines 19-23, which wood-based pulp necessarily contributes cellulose, hemicellulose, and lignin to the composition to be shaped, page 18, lines 5-7, noting molding, and the remainder of the document.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the molded articles of the instant claim 28 as the high value lignin products of Yang because Hakalahti discloses making molded articles from similar wood-based compositions and making such molded articles as the high value lignin products of Yang would have been expected to make similar articles to those of Hakalahti with the benefits of Yang’s solvent mixture.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762
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