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 .
DETAILED ACTION
Claim Status
Claims 1, 6-10, 12-13 and 15-24 are pending. Claims 1, 6-10, 12-13 and 15-24 are under examination. Claims 1, 6-10, 12-13 and 15-24 are rejected.
Filing Receipt
PNG
media_image1.png
94
973
media_image1.png
Greyscale
PNG
media_image2.png
46
971
media_image2.png
Greyscale
PNG
media_image3.png
127
977
media_image3.png
Greyscale
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.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites “the carboxylic acid” in line one, which is indefinite. “The carboxylic acid” may be referring to the “carboxylic acid” product in lines 1 and/or 8 of claim 1. However, “the carboxylic acid” in line one of claim 12 may be referring to the “alkene” in line three of claim 1 or the “C8-C26 fatty acid” in line six of claim 1.
Amending claim 12 to “The method of claim 1, wherein the alkene is an
unsaturated fatty acid” would overcome the rejection. See current claim 17 wherein the alkene is successfully identified as a monounsaturated fatty acid without the use of the indefinite phrase “the carboxylic acid”. Current claim 24 also successfully identifies the alkene without the use of the indefinite phrase “the carboxylic acid”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-10, 12-13 and 15-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No.11,814,350.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 11,814,350 claims the following.
PNG
media_image4.png
183
504
media_image4.png
Greyscale
PNG
media_image5.png
131
496
media_image5.png
Greyscale
Concerning the current C8-C26 fatty acid solvent, 11,814,350 claims a C2-C12 carboxylic acid solvent. Herein, the current fatty acid is the claimed carboxylic acid. The length of the carbon chains overlap.
MPEP 2144.05 I.: “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).”
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Concerning the current claims directed to species of the alkene, the ordinary artisan in need of a definition of the claimed alkene in 11,814,350, would have looked to the specification and would have found the currently claimed alkenes bridging columns 5 and 6.
Concerning the current claims directed to species of the fatty acid carboxylate, the ordinary artisan in need of a definition of the claimed carboxylate in 11,814,350, would have looked to the specification and would have found the currently claimed carboxylate in column 4, line 29-bottom.
The specification can be utilized as a dictionary to interpret the reference’s claims and to confirm the scope of the reference’s claims. See MPEP 804(II)(B)(1).
The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999) ("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01.
Allowable Subject Matter
Upon overcoming the outstanding 112(b) and non-statutory double patenting rejections in this office action, claims 1, 6-10, 12-13 and 15-24 would be allowable for the following reasons.
The closest prior art is to the invention is Siclari et al. (US Patent 3,856,833 , Patent date 12-1974).
Siclari et al. teach a non-reductive quenching of ozonides using Bronsted bases to yield an aldehyde and carboxylic acid (Example 1. For bases see column 3, lines 23-30). Siclari et al. teach cyclododecene (alkene) is subjected to ozone in acetic acid (C2 carboxylic solvent) (Example 1). Siclari et al. teach preference is given to the low molecular weight carboxylic acid solvents (column 3, lines 15-30).
Concerning the aldehyde, Siclari et al. teach in column 2 the aldehyde below is
made from the quenching of the ozonide.
PNG
media_image6.png
128
276
media_image6.png
Greyscale
However, Siclari et al. does not teach quenching the ozonide by adding an alkali metal or alkaline earth metal hydroxide, carbonate, bicarbonate, sulfate or phosphate to the ozonide in a C8-C26 fatty acid solvent, with water co-solvent to form the corresponding alkali metal or alkaline earth metal salt of the C8-C26 fatty acid carboxylate salt Bronsted base in-situ.
It would not have been obvious to modify the prior art to arrive at the current
invention. There being no motivation to do so.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
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, Scarlett Goon can be reached at (571)270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.G.D/Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
Prosecution Insights