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 .
Status of the Application
Claims 26-31 are pending and under current examination.
Election/Restrictions
Applicant's election without traverse of species in the reply filed on 01/26/2026 is acknowledged.
On consideration, previously withdrawn species are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all species previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the election of species requirement as set forth in the Office action mailed on 11/25/2025 is hereby withdrawn.
Claims 26-31 are under current examination.
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.
Claims 26-31 are rejected under 35 U.S.C. 112(b), 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 26-31 are indefinite as claim 26 recites “corresponds substantially to the amount”
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This is because “corresponds substantially” is a relative term and said phrase is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
However, for the purpose of compact prosecution, the claim has been interpreted as any amount.
Since the dependent claims doesn’t cure the above deficiency, these claims are also indefinite. Appropriate correction required.
Claim Rejections - 35 USC § 103
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.
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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 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 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Back (US 10035746 B2; effective filing date 05/04/2016), Gooben (Adv. Synth. Catal., 2011, 353, 57-63) and Baker (US3359331) in combination.
Determining the scope and contents of the prior art
Back teaches ketonization and cross-ketonization of at least one fatty acid such as capric acid, lauric acid etc., or a mixture of fatty acids in presence of ketonization catalyst, a metal-containing compound with heating/without solvent, wherein no. of moles of metal in the mixture is at least equal to 90% of the sum of moles of total mixture of fatty acids to produce long chain ketone followed by hydrogenation in presence of hydrogenation catalyst, such as Pd/C/H2 (base as it introduces hydride for hydrogenation), to produce long chain alcohol (entire patent, abstract, examples and claims). The cited prior art teaches steps of decarboxylation comprising:
Heating the mixture (at least two fatty acids and metal containing compound as catalyst) at temperature sufficient to form metal carboxylate
Further heating the mixture at temperature sufficient to form mixed ketones
Further adding fatty acids corresponding to certain amount consumed in step (a) and (b) that were used in step (a), maintain temperature sufficient to form mixed ketones;
Optionally repeating steps of sequential addition of fatty acids, step (c).
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Ascertaining the differences between the prior art and the claims at issue
Back teaches ketonization and cross-ketonization of at least one fatty acid such as capric acid, lauric acid etc., or a mixture of fatty acids in presence of ketonization catalyst, a metal-containing compound with heating/without solvent, wherein no. of moles of metal in the mixture is at least equal to 90% of the sum of moles of total mixture of fatty acids to produce long chain ketone followed by hydrogenation in presence of hydrogenation catalyst, such as Pd/C/H2 (base as it introduces hydride for hydrogenation), to produce long chain alcohol. However, the cited prior art fails to teach example wherein cross-ketonization process uses aryl carboxylic acid and aliphatic carboxylic acid; and alkoxylation step of alcohol.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference wherein cross-ketonization process uses aryl carboxylic acid and aliphatic carboxylic acid- Back teaches ketonization and cross-ketonization of any mixture of fatty acids in presence of ketonization catalyst, a metal-containing compound with heating/without solvent, wherein no. of moles of metal in the mixture is at least equal to 90% of the sum of moles of total mixture of fatty acids to produce long chain ketone. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to aperson of ordinary skill in the art that process of Back may be useful in making mixed ketones using any fatty acids or any carboxylic acid including aromatic and aliphatic carboxylic acids.
This deficiency is further cured by Gooben.
In the same field of endeavor of making mixed ketone, Gooben teaches cross-ketonization of aryl and alkyl carboxylic acids in presence of several different catalysts, (including the catalyst taught by Back) with heating in presence or absence of any solvent, wherein no. of moles of metal in the mixture is at least equal to 90% of the sum of moles of aryl and aliphatic carboxylic acid (entire article). The cited prior art teaches the process with mechanism:
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Thus, with the guidance provided by Back and Gooben, it would have been prima facie obvious to a person of ordinary skill in the art that Back process may be useful in cross-ketonization of any carboxylic acids, such as mixture of aliphatic carboxylic acids (according to examples provided by Back), mixture of aliphatic and aryl carboxylic acid as shown by examples provided by Gooben.
With regards to the difference of alkoxylation of alcohol- this deficiency is cured by Baker.
Baker teaches a method of ethoxylation of secondary alcohol (entire patent). Thus, based on the guidance provided by Back, Gooben and Baker, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that mixture of mixed alcohol may be alkoxylated to corresponding alkoxylate using method of Baker.
Further, case law has established that “Since the claimed process and article produced thereby are no more than a selective combination of prior art teachings, done in a manner obvious to one of ordinary skill in the art, since each step of the process appears to be relatively complete in itself and there is no indication of an interaction between steps of such a type that would lead one of ordinary skill in the art to doubt that a substitution of alternative steps known to the art could be made”. In re Mostovych 144USPQ 38 (1964). Thus, the cited prior art meets limitation of the instant claims.
Since the cited prior art teaches same reaction using same total weight of the starting material, molar ratio, the result of the reaction in terms of alkoxylate produced with respect to weight % is expected to be same.
Therefore, combination reads applicants claims.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Back teaches ketonization and cross-ketonization of at least one fatty acid such as capric acid, lauric acid etc., or a mixture of fatty acids in presence of ketonization catalyst, a metal-containing compound with heating/without solvent, wherein no. of moles of metal in the mixture is at least equal to 90% of the sum of moles of total mixture of fatty acids to produce long chain ketone followed by hydrogenation in presence of hydrogenation catalyst, such as Pd/C/H2 (base as it introduces hydride for hydrogenation), to produce long chain alcohol. Gooben teaches cross-ketonization of aryl and alkyl carboxylic acids in presence of several different catalysts, (including the catalyst taught by Back) with heating in presence or absence of any solvent, wherein no. of moles of metal in the mixture is at least equal to 90% of the sum of moles of aryl and aliphatic carboxylic acid. Baker teaches a method of ethoxylation of secondary alcohol.
So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
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. 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. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. It is well within the skill of the organic chemist to recognize the fact that applicants claimed process is nothing but the combination of known individual chemical processes. Further, there is a reasonable expectation of success that alcohol may be alkoxylated and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Conclusion
No Claim is allowed.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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