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
Response to Amendments
The amendments made to the claims 06/15/2026 have bene entered.
Withdrawn Rejections
In view of the amendments made, the 112(b) rejections are withdrawn.
In view of the arguments made in the remarks submitted 06/15/2026, the 103 rejection and non-statutory double patenting rejections have been withdrawn.
However, upon further consideration, a new ground(s) of rejection.
New Rejection
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the specific conditions leading to the improved results, does not reasonably provide enablement for the general conditions as currently claimed in claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The following Wands Factors have been considered if not explicitly stated:
(A) The breadth of the claims, (B) The nature of the invention, (C) The state of the prior art, (D) The level of one of ordinary skill, (E) The level of predictability in the art, (F) The amount of direction provided by the inventor, (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Breadth of the claims
Amended claim 1 is now drawn to a method for preparing acesulfame comprising an intermediate preparation step, a sulfonation cyclization step, a hydrolysis step, and a salt forming step. The intermediate preparation step has been amended to include “in the presence of a solid superacid catalyst SO42-/MxOy wherein M represents a metal atom, x and y are integers, and the catalyst is a sulfated metal oxide, at a reaction temperature of 20 to 35oC, wherein a molar ratio of an amount of the sulfamic acid to an amount of the diketene is 1:1.1, to obtain an intermediate solution, wherein the solid superacid catalyst is packed in a fixed bed reactor.”
Nature of the Invention
The invention is a method of preparing the chemical compound acesulfame potassium.
State of the Prior Art
The art does not explicitly disclose a method that reads on the instant method. While the claimed method is drawn to methods and components that are well-known and within the skillset of one of ordinary skill in the art, the method described in specification results in the unexpected increase in yield percentage as shown in the remarks and in the specification, para. [0099], Table 1, summarized from the remarks below.
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Guidance and Working Examples
As shown above, the instant disclosure provides the results of embodiments 1A-D. The conditions which are detailed in para. [0074]-[0098].
However, the same results show that the unexpected increase in yield only occurs under specific conditions which are detailed in bullet (a) of the remarks, shown above. Applicant’s own argument repeats this on p. 12, bullet (c) which states “The dramatic improvement from 52.5% to 95.4% is achieved only by the specific combination of all the claimed limitations: solid superacid…temperature, molar ratio, fixed bed reactor, ethanol aqueous hydrolysis agent, 0-20oC hydrolysis temperature and 30-400 second hydrolysis time.”
Quantity of Experimentation and Predictability
Currently, claim 1 does not include the limitations above and each are separated into their own individual dependent claims (see claims 3-8). One of ordinary skill cannot practice the claimed method as claimed in claim 1 and cannot practice the separated limitations as in claims 3-8 to predictable give the increased yields.
The independent claim requires the specific conditions which produce the increased yields.
This new rejection has been necessitated by amendments made to the claims and arguments presented in remarks submitted 06/15/2026.
New Objection
Claim 1 reads “wherein comprising” where it should simply read “comprising”.
Conclusion
No claims allowed.
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.
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/L.G./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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