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 1-7, 9, 12-14, and 17-22 were amended in the response filed 6/24/2026. Claims 1-22 are pending.
Specification/Drawings
The amendments and arguments filed on 6/24/2026 are not persuasive to overcome the objections of record on p. 2-3 of the OA dated 3/25/2026. The amendments to the specification are deficient because they refer to the paragraph numbers of the PGPUB and not the paragraph numbers of the specification as filed. However, if the amendments on p. 2-5 of the response were refiled and were mapped to the paragraphs of the specification as filed, they would overcome all of the objections on p. 2-3 of the OA dated 3/25/2026, except for the new matter objection.
The use of the term “Grubbs catalyst”, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Regarding the new matter objection, the Applicant argues that structure (IIIB) in Fig. 2 and structure (Vb) are implicitly supported by the specification as filed, which discusses “the structure of second-generation Grubbs catalysts (GII)” and “second-generation Hoveyda-Grubbs catalyst (HGII)”. Applicant argues that a person of ordinary skill would understand the NHC ligand of GII and HGII to correspond to that claimed. The Applicant’s arguments have been fully considered but are not persuasive.
As evidenced by Ogba (“Recent advances in ruthenium-based olefin metathesis” Chem. Soc. Rev. 2018, p. 4510), there are more than one GII and HGII catalysts, which can differ in the NHC ligand. See Figure 1 on p. 4512. See Ru-2-X series. Therefore, it is not clear that he labels second-generation Grubbs catalysts (GII)” and “second-generation Hoveyda-Grubbs catalyst” apply to one catalyst each.
Therefore, the new matter objection to the drawings and claims is maintained and reiterated below.
The amendment filed 2/11/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Structure (IIIB) in Fig. 2:
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600
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and
Structure (Vb) in Fig. 4.
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522
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.
Applicant is required to cancel the new matter in the reply to this Office Action.
The disclosure is objected to because of the following informalities: Tables 1 and 2 on p.12-13 are illegible.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: structure VII, which is mentioned with respect to Fig 4 in [0021] of the specification as filed.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Appropriate correction is required.
Claim Objections
The Applicant’s amendments are persuasive to overcome most of the objections of record on p. 4-5 of the OA dated 3/25/2026; therefore, unless the objection is repeated below, it is withdrawn.
Claims 3, 5, and 21 are objected to because of the following informalities:
In claims 3 and 5, the claim should first recite that there is a catalyst used in the hydrogenation before limiting the catalyst.
In line 3 of claim 21, the word “and” should be inserted before the word “stirring”.
Appropriate correction is required.
Maintained 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.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed structure, also present in newly amended Fig. 2 and 4, was not explicitly depicted in the disclosure as filed. At the top of p. 7 of the response filed 2/11/2026, the Applicant indicates that [0021] of the specification provides support for the amendment. However, there does not appear to be evidence to support the claimed structure in that paragraph. Therefore, the ligand appears to be new matter.
The Applicant’s arguments regarding the new matter rejection were addressed with respect to the objection to the specification above.
Modified Claim Rejections - 35 USC § 112
See rejections of record on p. 6-10 of the OA dated 3/25/2026. Unless the rejection is reiterated below, it has been withdrawn in view of the amendments filed on 6/24/2026.
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.
Claims 3, 7, 8, and 22 are 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 3 contains the trademark/trade name “Grubbs catalyst”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a catalyst and, accordingly, the identification/description is indefinite. It is noted that claim 4 cures the deficiency and is not included in the instant rejection.
Claims 7 and 8 are rejected because the term “the olefin” in line 1 is now indefinite in view of the amendments to independent claim 1. In claim 1, step b) comprises a C2-C6 olefin and step c) comprises olefins from the metathesis mixture. Therefore, it is not clear which olefin is being further limited in claims 7 and 8.
Claim 22 recites the limitation "wherein the organic ligand R" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Withdrawn Claim Rejections - 35 USC § 103
See p. 10-21 of the OA dated 3/25/2026 for the rejection of record. In the 6/24/2026 amendments, the Applicant newly introduced the limitation “wherein less than 5% of the carbon-carbon double bonds originally present in the methyl fatty acid esters have migrated from their original positions”. These are understood to be positional isomers. See [0024 and 0034] of the specification as filed.
On p. 16 of the response filed 6/24/2026, the Applicant argues that none of the cited references teaches or suggests this limitation. This argument has been fully considered and is persuasive. Therefore, the rejections of record are withdrawn.
Allowable Subject Matter
Claims 1, 2, and 9-20 are allowed. Claims 4-6 and 21 are objected to and claims 3, 7, 8, and 22 are rejected under 35 USC 112(a) and/or 35 USC 112(b), but otherwise appear to be free from the prior art.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art is Kaido, (US2010/0094034, published on 4/15/2010, of record), the primary reference in the previous 35 USC 103 rejection. However, the claims are distinguished from Kaido for the reasons cited above. Nor does any of the other prior art cure this deficiency.
Following an updated search, the prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hsu (“Catalytic Behavior of Palladium in the Hydrogenation of Edible Oils II. Geometrical and Positional Isomerization Characteristics” JAOCS, 1989, p. 232)
Hsu is directed toward the catalytic behavior of palladium in the hydrogenation of edible oils, in particular geometrical and positional isomerization characteristics. Hsu teaches that the goal of the work is to develop industrially useful catalysts which have a high cis selectivity and an activity similar to that of nickel. Hsu investigates the performance of palladium black (Pd/C) and palladium on alumina (Al2O3) in the partial hydrogenation of canola and soybean oil to selectively convert the di-unsaturated chains (dienes) to mono-unsaturated chains (monoenes). See abstract and introduction section on p. 232. Hsu tests for both geometric (cis/trans) and positional isomers (migration of the double bond). See “Materials and Methods” section on p. 232-233. Hsu discusses positional isomerization in the section of the same name on p. 233-236. In the final paragraph on p. 236, Hsu teaches that at pressures of 750 psig, 5% Pd/alumina produce only about 10-15% trans isomers and does not promote positional isomerization to any large extent. However, Hsu does not teach that the positional isomerization is below 5%. See Figures 3-6, which appear to teach a cumulative wt% of over 5% for all of the positional isomers (C, C7, C8, C10, C12, and C13).
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 AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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