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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 6 – 9, 12 – 19 and 21 - 16 in the reply filed on August 18, 2026 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 18, 2026.
Status of Claims
Claims 6 – 9 and 12 – 26 are pending.
Claims 1 – 5 and 10 – 11 are cancelled.
Claim 20 is withdrawn.
Claims 6 - 9, 12 – 19 and 21 – 26 are rejected
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 - 9 and 12 – 18 are rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 6, 7,12, 16, 17 and 18 are set out as claims in dependent form; however, each of the claims fail to reference a claim previously set forth are required. As such, claims 6, 7,12, 16, 17 and 18 are invalid for failing to meet the requirements of 35 USC 112(d). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 8, 9, 13,14 and 15 are rejected for being dependent upon a rejected base claim.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 factual inquiries 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.
Claim(s) 6 – 9, 12 – 19, 21, 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Perez et al. (WO2016/187581) in view of Colacino et al. (ACS Omega, 3, 2018, pp. 9196 – 9209) and Lillard et al. (US 2007/0224280).
Rejected claim 19 covers, inter alia, a method of producing cutin-derived monomers, oligomers, or both from plant-matter, the method comprising: obtaining cutin from a cutin-containing portion of plant matter; contacting the cutin with a nucleophile to form a first mixture; and subjecting the first mixture to mechanochemical processing to decompose at least a portion of the cutin, thereby yielding a second mixture comprising cutin-derived monomers, oligomers, or both.
Dependent claim 6 further limits the nucleophile. Dependent clams 7 – 9 further limits the mechanical processing. Dependent claims 12 and 15 further limits the process by adding an acid. Dependent claims 13 - 14 further limit the acid. Dependent claims 16 – 18 further limit the cutin-derived monomers. Dependent claim 21 further limits the amount of nucleophile. Dependent claim 23 further limits the mechanical processing time. Dependent claim 26 further limits the isolation process.
However, Perez describes a method for isolating cutin-derived monomers and oligomers. (abstract, pp. 2, & [0005]). Cutin is a biopolyester. (pp. 2, [0004]). In Perez cutin is obtained from a cutin-containing portion of a plant matter. The cutin is depolymerized is a first solution having a pH of 10 to 14 to obtain a first solution comprising first intermediate extract dissolved in the first solvent. The first intermediate extract includes a plurality of cutin-derived monomers, oligomers or combinations thereof. The first solution is acidified. (pp. 5, [0011]). Fig. 1 shows a schematic flow diagram of a method 100 for preparing the cutin extract. The method 100 can include mechanical processing to separate the cutin-containing portion from the plant matter. (pp. 19, [0053]). Based on Fig. 1 a second mixture is obtained comprising cutin-derived monomers, oligomers, or both.
The solvent with the pH of 10 to 14 is alkalized with metal hydroxide. (pp. 16, [0043]). In some embodiments the solvent is substantially free of water. (pp. 16, [0044]). The metal hydroxide can include, for example, Group I or Group II metal hydroxide; such as, lithium, sodium, potassium, calcium, rubidium or cesium. (pp. 22, [0057]).
Mechanical processes of Perez can include any of the mechanical processes described herein such as, for example, centrifugation, sonication, (ultra)sonication, ball milling, grinding, filtration, etc. (pp. 19 – 20, [0053]). According to Perez, a plurality of intermediate mechanical processes can be used to obtain the plant extract composition. For example, a mechanical step can be used to separate the cutin from the non-cutin-containing portion, as described herein, or be used to augment any other operation included in the method 100. Such mechanical processes can include any of the mechanical processes described herein such as, for example, centrifugation, sonication, (ultra)sonication, milling, grinding, filtration, etc. (pp. 20, [0053]).
Further, in the case where the intermediate extract is obtained from metal hydroxide-mediated depolymerization, the pH of the solvent and intermediate extract can be adjusted to be in the rage of about 1.0 to 6.5. (pp. 17, [0046] & pp. 23, [0058]). The adjusting of the pH can be performed using any suitable acid; such as, for example, hydrochloric acid, sulfuric acid and phosphoric acid. (pp.24, [0058]).
Furthermore, in Perez, the plant extract composition obtained by the process, can include any suitable combination of cutin monomers including, for example, C16-ω-hydroxy fatty acids, and/or C16 hydroxy fatty acids, and/or C16 dihydroxy fatty acids, and/or Ci6 trihydroxy fatty acids, and/or C16-ω-hydroxy-oxo fatty acids, and/or C18-ω-hydroxy fatty acids, and/or C18 hydroxy fatty acids, and/or C18 dihydroxy fatty acids, and/or C18 trihydroxy fatty acids, and/or C18-ω-hydroxy-oxo fatty acids, and/or C18-ω-hydroxy-epoxy fatty acids, and residual fatty acids, and/or esters of said families of C16 hydroxy fatty acids and/or 18s hydroxy fatty acids and residual fatty acids. (pp. 26, [0062]). The C16 hydroxy fatty acids can include, but are not limited to, at least one of 16-hydroxyhexadecanoic acid, 9(10), 16-dihydroxyhexadecanoic acid, 9,10,16-trihydroxyhexadecanoic acid, and 16-hydroxy-10-oxohexadecanoic acid. The C18 hydroxy fatty acids can include at least one of 18-hydroxyoctadecanoic acid, 9(10), 18-dihydroxyoctadecanoic acid, 9,10, 18-trihydroxy octadecanoic acid, and 18-hydroxy-9,10-epoxy-octadecanoic acid. (pp, 26 – 27, [0062]).
Additionally, the residual fatty acids can include any other fatty acids excluding C16, and C18 hydroxy fatty acids in any proportion or combination such as, for example, hexadecanoic acid, dicarboxylic acids, 9,10-dihydroxyhexadecane-1,16-dioic acid, 9,12-octadecadienoic acid, trans-9-octadecenoic acid, cis-9-octadecenoic acid, octadecanoic acid, tetradecanoic acid, pentadecanoic acid, heptadecanoic acid, 22- hydroxydocosanoic acid, dihydroxyhexadecane, coumaric acid, ferulic acid, other C16 or C18 fatty acids, or any other <C18 fatty acid included in a portion of a plant from which the plant extract composition is prepared. (pp. 27, [0063]).
Example 2 of Perez is a concise showing of the process. Dried tomato peels and pomace obtained directly from an industrial tomato processing facility were ground to a fine powder using an electric grinder and then directly subjected to depolymerization. The waste (i.e., cutin-containing peels and pomace) was depolymerized in a methanolic solution including a stoichiometric excess of potassium hydroxide (relative to tomato waste) at about 65 degrees Celsius for about 24 hours. The resulting solution was filtered to remove any leftover solids and the filtrate was collected. Any excess solvent was removed from the filtered solution by rotary evaporation. The crude solid was redissolved in distilled water and chilled in an ice bath, and the pH of the resulting solution was adjusted to about 2 by adding aqueous HCl to the solution. The depolymerized multifunctional fatty acid monomers and oligomers of the cutin were solidified by precipitating from solution or by evaporation and the monomers were isolated by filtration to yield the crude tomato peel extract. The dried crude tomato peel extract was dry-loaded onto Celite and subjected to Soxhlet extraction with acetonitrile for 1 day. The solution in the solvent reservoir below the Soxhlet apparatus was collected and excess solvent was removed by rotary evaporator to yield a purified, resolidified tomato peel extract. (pp. 48, [00108]).
Applicant is reminded that the transitional term “comprising”, which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended."). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) ("The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps."); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves "the claim open for the inclusion of unspecified ingredients even in major amounts").
Thus, the difference between Perez and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. § 2131: "[t]he identical invention must be shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990)).
However, based on the above, Perez teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill before the effective filing date of the instantly claimed invention(the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. See M.P.E.P. § 2143).
The remaining differences between the instantly claimed invention and Perez is as follows: grinding comprises ball milling; grinding comprises planetary ball milling; milling is at a spinning frequency of about 1 rpm to about 1000 rpm; subjecting the first mixture to mechanical processing for 1min to 24 hours; and contacting the cutin with a catalytic amount, a stoichiometric amount, or a superstoichiometric amount of the nucleophile.
However, regarding grinding comprises ball milling; grinding comprises planetary ball milling; milling is at a spinning frequency of about 1 rpm to about 1000 rpm; and subjecting the first mixture to mechanical processing for 1min to 24 hours, the Examiner turns to the teaching of Perez, Colacino and Lillard et al. Perez teaches that mechanical processing is used to separate the cutin-containing portion from the plant matter. (pp. 19, [0053]). Suitable mechanical processes can include, for example, centrifugation, (ultra)sonication, pressing, ball milling, grinding, etc. A mechanical step can be used to separate the cutin from the non-cutin-containing portion, or be used to augment any other operation included in the method of thermally treating a plant matter to at least partially separate a cutin-containing portion from plant matter. (pp. 20, [0053]). Mechanical processes of Perez can include any of the mechanical processes described herein such as, for example, centrifugation, sonication, (ultra)sonication, milling, grinding, filtration, etc. ([0053]). Perez does not identify the specific ball milling apparatus that can be used.
For this difference the Examiner turns to the teachings of Colacino and Lillard. Colacino teaches that ball millings can be used to promote chemical reactivity. (pp. 9196, left col. 1st para. Introduction). in the synthesis of organic compounds. Further, Colacino discloses that one of the most popular ball mills are planetary mills. (pp. 9197, left col. para. 3 & Figure 2). According to the Colacino discussion, high speed planetary ball mills were manufactured to reach rotational speeds of up to 1100 rpm. (pp. 9198, left col. para. 1). Lastly, Colacino discloses that ball milling has been successfully used in the preparation of organic compounds. (pp. 9203, rt. col. 4.6). Lillard discloses an inexpensive preparation technique for the generation of nanoparticles through planetary ball milling, which allows the control of the size of the particle. (pp. 1, [0009]). Lillard discloses that the planetary ball milling apparatus (Retsch® PM100) and the size of the milling balls played a significant roll in controlling the particle size. (pp. 4, [0034]). Also, Lillard discloses that the speeds can be modulated and run for 20 minutes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant clamed invention to use planetary ball milling as disclosed in Colacino or Lillard, as the ball milling mechanical process of Perez to promote the chemical reactivity in the depolymerization process. Further, to subject the first mixture to mechanical process for a set time in order to grind the first mixture down to a particle size for ease of depolymerization. Motivation for the use is found in the teaching of Colacino where it is discussed that planetary mills are popular; the planetary mills have been used to reduce particle size of diverse materials and can reach rotational speeds up to 1100 rpm, and the mills have been used in the synthesis of organic compounds. Using the known planetary ball milling would have been obvious to one of ordinary skill in the art.
Therefore, the claims would have been obvious because the technique for improving the reaction process by the use of planetary ball milling was part of the ordinary capabilities of one skilled in the art based upon the teachings of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art before the effective filing date of the instantly claimed invention.
With regard to contacting the cutin with a catalytic amount, a stoichiometric amount, or a superstoichiometric amount of the nucleophile; the Examiner turns to the teaching of Perez. Examples 2 3 and 4 of Perez discloses the use of superstiochiometric amounts of potassium hydroxide (nucleophile). Also, Perez states that the steric bulk of the nucleophile dictates the species that are depolymerized. (pp. 17, [0045]) As such, base on the desired species desired from the depolymerization of the cutin, one of ordinary skill in the are can determine by routine experimentation the amount of nucleophile to use in the process of Perez. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim Rejections - 35 USC § 103
Claim(s) 19 and 23 - 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perez et al. (WO2016/187581) in view Ekman et al. (US 4,732,708.).
Rejected claim 19 covers, inter alia, a method of producing cutin-derived monomers, oligomers, or both from plant-matter, the method comprising: obtaining cutin from a cutin-containing portion of plant matter; contacting the cutin with a nucleophile to form a first mixture; and subjecting the first mixture to mechanochemical processing to decompose at least a portion of the cutin, thereby yielding a second mixture comprising cutin-derived monomers, oligomers, or both.
Dependent claims 23 – 26 further limit the second mixture comprised of the cutin-derived monomers, oligomers, or both to salts there of wherein Xp+ is cationic counter ion.
However, Perez describes a method for isolating cutin-derived monomers and oligomers. (abstract, pp. 2, & [0005]). Cutin is a biopolyester. (pp. 2, [0004]). In Perez cutin is obtained from a cutin-containing portion of a plant matter. The cutin is depolymerized is a first solution having a pH of 10 to 14 to obtain a first solution comprising first intermediate extract dissolved in the first solvent. The first intermediate extract includes a plurality of cutin-derived monomers, oligomers or combinations thereof. The first solution is acidified. (pp. 5, [0011]). Fig. 1 shows a schematic flow diagram of a method 100 for preparing the cutin extract. The method 100 can include mechanical processing to separate the cutin-containing portion from the plant matter. (pp. 19, [0053]). Based on Fig. 1 a second mixture is obtained comprising cutin-derived monomers, oligomers, or both.
Also, in Perez, the plant extract composition obtained by the process, can include any suitable combination of cutin monomers including, for example, C16-ω-hydroxy fatty acids, and/or C16 hydroxy fatty acids, and/or C16 dihydroxy fatty acids, and/or Ci6 trihydroxy fatty acids, and/or C16-ω-hydroxy-oxo fatty acids, and/or C18-ω-hydroxy fatty acids, and/or C18 hydroxy fatty acids, and/or C18 dihydroxy fatty acids, and/or C18 trihydroxy fatty acids, and/or C18-ω-hydroxy-oxo fatty acids, and/or C18-ω-hydroxy-epoxy fatty acids, and residual fatty acids, and/or esters of said families of C16 hydroxy fatty acids and/or 18s hydroxy fatty acids and residual fatty acids. (pp. 26, [0062]). The C16 hydroxy fatty acids can include, but are not limited to, at least one of 16-hydroxyhexadecanoic acid, 9(10), 16-dihydroxyhexadecanoic acid, 9,10,16-trihydroxyhexadecanoic acid, and 16-hydroxy-10-oxohexadecanoic acid. The C18 hydroxy fatty acids can include at least one of 18-hydroxyoctadecanoic acid, 9(10), 18-dihydroxyoctadecanoic acid, 9,10, 18-trihydroxy octadecanoic acid, and 18-hydroxy-9,10-epoxy-octadecanoic acid. (pp, 26 – 27, [0062]).
Additionally, the residual fatty acids can include any other fatty acids excluding C16, and C18 hydroxy fatty acids in any proportion or combination such as, for example, hexadecanoic acid, dicarboxylic acids, 9,10-dihydroxyhexadecane-1,16-dioic acid, 9,12-octadecadienoic acid, trans-9-octadecenoic acid, cis-9-octadecenoic acid, octadecanoic acid, tetradecanoic acid, pentadecanoic acid, heptadecanoic acid, 22- hydroxydocosanoic acid, dihydroxyhexadecane, coumaric acid, ferulic acid, other C16 or C18 fatty acids, or any other <C18 fatty acid included in a portion of a plant from which the plant extract composition is prepared. (pp. 27, [0063]).
Furthermore, Perez teaches that in some embodiments, the liberated cutin monomers can include the salts of a fatty acid, hydroxy fatty acid, a dihydroxy fatty acid, and/or a trihydroxy fatty acid. (pp. 24, [0058]).
The difference between the instantly claimed invention and Perez is disclosing the salt forms of cutin-derived monomers.
However, with regard to Perez failing to disclose salt forms of their cutin-derived monomers, the Examiner turns to the teaching of Ekman. The prior art of Ekman relates to a method for converting biopolyesters consisting of straight-chain hydroxyacids monomers containing 10 to 40 carbon atoms, such as cutin, in to a plain mixture of organic acids and their salts. (abstract). Ekman is using birch bark which contains cutin. In Ekman dehydration oxidation is carried out with sodium hydroxide or potassium hydroxide. (col. 4, ln 36 – 39). Like Perez, Ekman’s process uses sodium hydroxide or potassium hydroxide. Based on the teachings the strong alkaline are used in both reactions, one skilled in the art, would reasonably presume that cutin-derived monomer or oligomer salts of sodium or potassium would naturally flow from the reactions of Perez, based on the discussion of Ekman. Further, it is known that sodium and potassium are cations. It is well settled that a patent cannot be properly granted for the discovery of a result which would flow naturally from the teaching of the prior art. In re Libby, 118, USPQ 94, 96; 255 F2d 412 (C.C.P.A. 1958).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
