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 .
Claim Status
Claims 1-11 are rejected.
Claims 12-13 are cancelled.
Claims 14-16 are withdrawn.
Election/Restrictions
Newly submitted claims 14-16 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the inventions are distinct processes.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 14-16 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 1-4, 6-8 and 10-11 are finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fearon (US 5,340,406).
With respect to claim 1, Fearon discloses a method for removing contaminants including the steps of: adding the solid product to propanol in a vessel to obtain a mixture (see col. 11, lines 34-40); stirring the mixture (see page 11, lines 34-43); filtering the mixture so as to separate the product from the propanol (see col. 12, lines 20-27); and drying the filtered product (see col. 11, lines 58-60).
With respect to claim 2, Fearon discloses wherein the propanol is 2-propanol (see col. 11, lines 34-36).
With respect to claims 3 and 11, Fearon discloses wherein the product is an amino acid, a nucleoside or a salt and/or dimer thereof (see col. 12, lines 28-32, gypsum salt).
With respect to claim 4, Fearon discloses wherein the chemical process comprises a process for synthesizing and/or purifying and/or modifying the product, and/or forming a salt of the product (see col. 1, lines 16-20).
With respect to claim 6, Fearon discloses wherein stirring is carried out at a temperature of from 5 to 80 °C (see col. 11, lines 38-40).
With respect to claim 7, Fearon discloses wherein stirring comprises a first stirring step which is carried out at a first temperature, and a second stirring step which is carried out at a second temperature, wherein the second temperature is lower than the first temperature (see col. 11, lines 34-51).
With respect to claim 8, Fearon discloses wherein drying comprises a first drying step which is carried out at a first temperature, and a second drying step which is carried out at a second temperature, wherein the second temperature is higher than the first temperature (see col. 11, lines 58-68 and col. 12, lines 17-27).
With respect to claim 10, Fearon discloses synthesizing, purifying and/or modifying the product, and/or forming a salt of the product; and treating the product (see col. 1, lines 43-67 and col. 2, lines 1-27)
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.
Claim(s) 5 and 9 are finally rejected under 35 U.S.C. 103 as being unpatentable over Fearon (US 5,340,406).
With respect to claim 5, Fearon teaches wherein the propanol is added to the vessel in an amount, with the typical volume ratio of extraction solvent (i.e., 2-methyl-2-propanol) to contaminated soil is 3:1 (see col. 11, lines 36-37). Fearon lacks wherein the propanol is added to the vessel in an amount of 0.5 kg to 5 kg 2-propanol per kg of the solid product. However, this would have been obvious to one of ordinary skill in the art since ratio of 3:1 of Fearson is within the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)."
With respect to claim 9, Fearon lacks wherein the first drying step is carried out for a greater period of time than the second drying step. However, this would have been obvious to one of ordinary skill in the art since one of ordinary skill would recognize to allow a desired period of time for the drying step in order to achieve a desired result.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s argument that Matsumoto lacks adding a solid product to a propanol, as required by amended claim 1: Fearon teaches the new limitation of claim 1, as stated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE GONZALEZ whose telephone number is (571)272-5502. The examiner can normally be reached M-F 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MADELINE GONZALEZ/Primary Examiner, Art Unit 1773
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