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 .
Prefatory Note:
Multiple attempts using telephone to reach Attorney of Record for this case to explore compact prosecution failed.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 02/06/2026 is acknowledged.
The traversal is on the ground(s) that
A.
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B.
All the groups are
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C.
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None of the reasons is found persuasive
because
While
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is given due consideration just as any other papers in the Application File wrapper is given due consideration,
this Examiner is not bound by the conclusions of the
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B.
Applicant overlooks the following phrase in the previous action
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with regards to the multiple groups (key word here is
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and also
Applicant overlooks the following phrase in the previous action at page 6, line 10
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and
related arguments presented under this section (more on this below).
C.
Applicant overlooks the following phrase in the previous action
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and arguments presented under this section.
In addition to the above, Applicant is not responsive to the arguments, other than one pointed out above with respect to classification, for example multiple citations to support search, at page 7 of previous action.
Therefore, the requirement is still deemed proper and is therefore made FINAL.
Suggestion: See MPEP 818.01
Claims 11-16 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/06/2026.
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.
Claims 1-10, 17-20 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.
77-92-9 585-84-2
The structural identity of the starting material, product, solvent and other process parameters are vaguely defined.
The language for the starting material
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is confusing because it is unclear whether the three C atoms can be in the alcohol part of ester (to make up the 3Cs for the total mandatory 6Cs). Except for the indication that the total number of the C atoms as 6 and the mandatory requirement of three carboxylic acid groups present as starting materials, structural makeup of the compounds undergoing the reduction (hydrogenation) to make lactones (cyclic esters) is defined in convoluted manner. Further it is unclear, in a conceivable starting materials such as
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(all 6C tricarboxylic acids) \how (in what conditions of process parameters) only one (or two or which ones) of the COOHs is/are preferentially reduced.
The
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language is confusing. The language ‘preparing’ with regards to starting materials demands (the need for) method for making the starting materials. No such method for making starting materials is present in the claims. In addition to starting materials and products, other process parameters are also recited in incomplete and vague language. Consider for example, the language for the solvent indicated as ‘providing or preparing’. Again while the term ‘providing’ is understood, the term ‘preparing’ requires the step or steps to make the solvent. The step or steps for this is/are not recited. The solvent is also indicated with a property without an upper limit. It is not a breadth issue, rather clarity issue. Similarly what reagent or reagent(s) promote(s) lactonization as opposed to esterification if an alcohol solvent is used. Further what limits intramolecular esterification (for lactone formation) vs esterification (with alcohol solvent) without further reduction is unclear. There is no reagent recited here for the (essential) step of lactonization (for the removal of elements of water from the intermediates, that is dehydration). It is noted that necessary reagent may be embedded in the ‘catalyst’ for performing hydrogenation and dehydration. However catalysis is generally considered unpredictable merely from the chemical nature of the catalyst. See Corona Co. v. Dover; (USSC 1928) 276 US 358, 369. Catalytic effects are not ordinarily predictable with certainty. In re Doumani et al. (CCPA 1960) 281 F2d 215, 126 USPQ 408. The effect of a modification of one prior art catalytic process in a manner employed in another prior art process which employs a different catalyst was held unpredictable in Ex parte Berger et al. (POBA 1952) 108 USPQ 236.
There is no indication of stoichiometry in the reduction step. Assuming the indicated pressure implicitly recites this, there is no recitation as to why or how only one (or two) of the COOH groups is reduced. Claim language ‘when the starting compound is an aliphatic tricarboxylic acid’ has the connotation for the feasibility of aromatic starting material possibility. An aromatic system with three COOH groups defies commonly understood elementary principles of aromaticity. With the required BRI, limitations from the specification are not imported into claim interpretation. As stated in In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Dependent claims do not solve the problems of the base claim.
For example claim 17 the starting material consists of tricarboxylic acids. Because of the claim language
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It is unclear with the ‘thereof’ term, esters of all three acid functions are in the starting materials and the 6C includes (C atoms that could be present in the alcohol part of the ester group).
Consider claim 10, with the ‘open-ended’ comprising language with respect to the ‘product’. Here the ‘product’ (elaborately defined by the hydrogenation chemistry method in the base claim 1), now is not limited to lactones. The product here now includes the mandatory ‘lactones’ and has transitioned to a product comprising biological materials such as viruses and nucleic acids. The use of the term "comprising" in the instant Markush groupings causes the claims to be completely open-ended when a Markush grouping is "by its nature" a closed grouping of alternatives. Therefore, the use of “comprising” in the instant Markush-type claims renders the claims indefinite.
As per “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"). In Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005), the court held that a claim to "a safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades" encompasses razors with more than three blades because the transitional phrase "comprising" in the preamble and the phrase "group of" are presumptively open-ended. "The word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively open-ended." Id. In contrast, the court noted the phrase "group consisting of" is a closed term, which is often used in claim drafting to signal a "Markush group" that is by its nature closed. Id. The court also emphasized that reference to "first," "second," and "third" blades in the claim was not used to show a serial or numerical limitation but instead was used to distinguish or identify the various members of the group. Id.” The examiner points out the use of the term "comprising" in the instant Markush groupings causes the claims to be completely open-ended when, as stated above, a Markush grouping is "by its nature" a closed grouping of alternatives. Therefore, the use of “comprising” in the instant Markush-type claims renders the claims indefinite. A comprehensive patent search could not be done.
As such dependent claims do not resolve the issues of base claim 1. As such claims 2-10, 17-20 are rejected as well.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Verduyckt, Green Chem.,2017,19, 4642–4650; JP2018168135 and JP2018168136
Verduyckt at page 4644, Scheme 1 teaches hydrogenation of
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starting materials
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to make lactone
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The starting materials noted above is the same as in the exemplifications disclosed at page 10, line 22-24 of instant specification. The Verduyckt
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product falls under the scope of the instantly lactone product as defined:
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consisting of
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group.
The catalyst Ni used in the above pointed out Verduyckt chemistry and taught by Verduyckt in the opening statement of the reference as an alternative to Pd catalyst (as per claim 2) is same as limited in claim 1 (Ni and Pd) and 2 (Pd).
Though Verduyckt teaches the limitations of base claim 1, the starting materials including hydrogen, reagent (catalyst), solvent and product,
Verduyckt hydrogenation does not teach all the (vaguely) recited starting materials and products or process parameters/conditions as instantly recited:
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As per Examination guidelines, it has been held that where the general conditions
(in the instant case temperature and pressure)
of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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).
Furthermore, hydrogenation of 6C tricarboxylic starting materials to make lactone products is taught in JP2018168136 at numbered page 2 and at pages 9-10 products in generic chemical formulae. These generic formulae encompass the instantly recited starting materials and products. For 6C tricarboxylic starting material citric acid see page 2, line 31. Similarly, JP2018168135 teaches the same hydrogenation reaction including the specific starting material aconitic acid at page 2 and for isomers of 5-membered lactone products see bottom of page 9 on to page 10.
There is no comparative data for (the difference pointed out above) for secondary consideration. As such nothing unobvious is seen in the claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 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, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625
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