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
This Office Action is in response to Applicant’s Amendment filed, 12 February 2026, wherein Applicant amended claims 1, 5-6, 13, 16-17, and 20.
Claims 1-20 are pending.
Information Disclosure Statement
The Information Disclosure Statement filed on 12 February 2026 and the references cited therein have been considered, unless indicated otherwise.
Rejections Withdrawn
Claim Rejections – 35 USC § 112
1. Claims 5-6 and 16-17 were rejected for failing to further limit the subject matter upon which it depends or for failing to include all the limitations of the claim upon which it depends. Claims 5 and 16 were amended to specify “the process further comprises hydrodeoxygenating said furoin based molecule,” and claims 6 and 17 were amended to update their dependency. Applicant’s amendment, see page 1, with respect to claims 5-6 and 16-17 has been fully considered. The rejection of claims 5-6 and 16-17 has been withdrawn.
Claim Rejections – 35 USC § 102
2. Claim 20 was rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Wegenhart (ChemSusChem, 2014, 7, 2742-2747; Supplementary Information, S1-S24; of record, see PTO-892, filed 12 Nov 2025).
Applicant’s amendment and arguments, see page 1-2, with respect to the rejection of claim 20 has been fully considered and is persuasive. The 102(a)(1) rejection of claim 20 has been withdrawn.
Rejections: New/Modified or Maintained
Claim Rejections – 35 USC § 102
3. (Maintained) Claims 1, 3-5, 7, and 9-12 were rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Wegenhart (ChemSusChem, 2014, 7, 2742-2747; Supplementary Information, S1-S24; of record, see PTO-892, filed 12 Nov 2025).
Applicant’s amendment and arguments, see page 1-2, with respect to the rejection of claims 1, 3-5, 7, and 9-12 has been fully considered but they are not persuasive.
Applicant amended claim 1 to specify that the alcohol solution comprises less than 0.02 wt % of water. Applicant further argues that none of the references cited discloses wherein the alcohol solution comprises less than 0.02 wt % of water as claim 1 now recites. Further, Applicant argues that achieving a water content of less than 0.02 wt % in the solution results in the highest DHMF yield (page 2).
However, while Applicant states that none of the references cited disclose the alcohol solution comprises less than 0.02 wt % of water, Wegenhart indeed teaches this limitation as evidenced by Sigma Aldrich (“Certificate of Analysis: Ethyl alcohol, pure – 200 proof, anhydrous,” Sigma Aldrich, 2026, <https://www.sigmaaldrich.com/certificates/sapfs/PROD/sap/certificate_pdfs/COFA/Q14/459836-BULKSHBT6602.pdf>, accessed 24 Mar 2026). While Wegenhart does not explicitly teach the water content of the alcohol solution, Wegenhart teaches that the alcohol solution utilized (ethanol) was obtained from Sigma-Aldrich and used as received (page S2). The broadest reasonable interpretation includes utilization of anhydrous ethanol, which according to the certificate of analysis as taught by Sigma Aldrich reports a water content of ≤0.005%, which is then evaluated by Karl Fischer to meet the specification (page 1; Table 1). Accordingly, Wegenhart teaches the alcohol solution comprises less than 0.2 wt% of water (page S2).
Thus, the rejection of claims 1, 3-5, 7, and 9-12 as being anticipated over Wegenhart is maintained.
4. (Maintained) Claims 1-5, 7, 9-16, 18, and 20 were rejected under 35 U.S.C. § 103 as being unpatentable over Wegenhart (ChemSusChem, 2014, 7, 2742-2747; Supplementary Information, S1-S24; of record, see PTO-892, filed 12 Nov 2025) in view of Scharzec (Chemical Engineering Research and Design, 2020, 157, 65-76; of record, see PTO-892, filed 12 Nov 2025).
Applicant’s amendment and arguments, see page 2-3, with respect to the rejection of claims 1-5, 7, 9-16, 18, and 20 has been fully considered but they are not persuasive.
Applicant argues that Wegenhart does not recycle a homogeneous NHC stream nor utilize an alcohol-based catalyst medium for reuse. Applicant further states that Wegenhart provides no teaching of autogenous precipitation enabling catalyst retention. Applicant then argues that Scharzec discloses that membrane separation is required before any recycling step and does not disclose direct recycle of a homogeneous catalyst stream in an alcohol solution and also does not employ autogenous precipitation to separate products.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant’s argument that Scharzec does not disclose direct recycle of a homogenous catalyst stream, Scharzec teaches that the catalyst-rich solvent A is directly recycled to the reactor (page 66, column 1, paragraph 4; page 66, column 2, paragraph 1), which addresses Applicant’s arguments regarding (1) requirement of membrane separation before any recycling step and (2) that there is no direct recycling of catalyst.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., autogenous precipitation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Thus, the rejection of claims 1-5, 7, 9-16, 18, and 20, as being unpatentable over Wegenhart in view of Scharzec is maintained.
5. (Maintained) Claims 6 and 17 were rejected under 35 U.S.C. § 103 as being unpatentable over Wegenhart (ChemSusChem, 2014, 7, 2742-2747; Supplementary Information, S1-S24; of record, see PTO-892, filed 12 Nov 2025) and Scharzec (Chemical Engineering Research and Design, 2020, 157, 65-76; of record, see PTO-892, filed 12 Nov 2025) as applied to claims 1-5, 7, 9-16, 18, and 20 above, and in further view of Lucarelli (Catalysis Today, 2011, 175, 504-508; of record, see PTO-892, filed 12 Nov 2025).
Applicant’s amendment and arguments, see page 2-3, with respect to the rejection of claims 6 and 17, have been fully considered, but they are not persuasive. Claim 6 depends upon claim 5, and claim 17 depends upon claim 16. Applicant relies upon the amendment and arguments over claims 1-5, 7, 9-16, 18, and 20 to overcome the rejection of claims 6 and 17. However, Applicant’s amendment and arguments over claims 1-5, 7, 9-16, 18, and 20 were not persuasive. Thus, the rejection of claims 6 and 17, as being unpatentable over Wegenhart and Scharzec in view of Lucarelli is maintained.
6. (Maintained) Claims 8 and 19 were rejected under 35 U.S.C. § 103 as being unpatentable over Wegenhart (ChemSusChem, 2014, 7, 2742-2747; Supplementary Information, S1-S24; of record, see PTO-892, filed 12 Nov 2025) and Scharzec (Chemical Engineering Research and Design, 2020, 157, 65-76; of record, see PTO-892, filed 12 Nov 2025) as applied to claims 1-5, 7, 9-16, 18, and 20 above, and in further view of Chen (U.S. Patent No. 9,469,626, issued 18 Oct 2016, see IDS filed 21 Aug 2023).
Applicant’s amendment and arguments, see page 2-3, with respect to the rejection of claims 8 and 19, have been fully considered, but they are not persuasive. Claim 8 depends upon claim 7, and claim 19 depends upon claim 18. Applicant relies upon the amendment and arguments over claims 1-5, 7, 9-16, 18, and 20 to overcome the rejection of claims 8 and 19. However, Applicant’s amendment and arguments over claims 1-5, 7, 9-16, 18, and 20 were not persuasive.
Thus, the rejection of claims 8 and 19, as being unpatentable over Wegenhart and Scharzec in view of Chen is maintained.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
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/MADELINE M. DEKARSKE/Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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