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 .
Amended claims 1-20 are pending.
Response to Applicants Remarks are at the end of the maintained rejections.
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 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.
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 or in what conditions of process parameters, only one (or two or which ones) of the COOHs is/are preferentially reduced to make a hydroxy group necessary lactonization/esterification with the carboxylic acid.
In addition to the
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language is confusing as discussed above, the language
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is also confusing. For example, it is unclear whether mixtures of different starting material compounds are used as starting material.
The solvent is also indicated with a property without an upper limit. It is not a breadth issue, but rather a 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 defines 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, in 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.
Response to Applicants Remarks filed 07/22/2026.
Applicants’ arguments are not persuasive.
Applicant argues that breadth is not ‘indefinite’.
Amendments address part of the issues raised.
In the context of critical process parameters such as stoichiometry of H2 consumed in the hydrogenation,
presence or absence of,
other functionalities such as OH or COO-alkyl functions,
absence of structural identity of the target,
the structural makeup of the starting tricarboxylic acid is an essential matter for the interpretation and comprehensive patent search.
Consider for example, the term ‘lactone’.
It is unclear whether three, four, five, six or seven membered lactone product is intended here.
It is also unclear what reaction condition or conditions that prevents the reduction of all the three carboxylic acid groups (to make polyols as in the disclosure of US Application No. 18555120).
Similarly, the phrase
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is confusing as to whether there are multiple starting 6C tricarboxylic acid is present as starting material.
Further, the language
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is also confusing because it is unclear whether the total the total number of carbon atom of 6, includes carbon atom that could be from the alky group making up the ester part of the tricarboxylic acid, such as
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and formula isomers thereof.
All the above has total 6C (having ester and anhydride groups) as limited by the base claim.
As to the ‘Solvent’, Applicant is vague about MPEP requirement with regards to boundaries of component. Applicant is encouraged to point out, with numbers/chapter, relevant Examination guidelines. In this regard, the indicated MPEP 2164.08(b) relates to enablement. The issue here is 112-b (vague and indefinite)
With regards to Reagent and Stoichiometry, Applicant argues that these are matters of enablement and that Examiner has not asserted a problem. Process parameters such as temperature, time, stoichiometry is necessary whether the unreacted third carboxylic acid group is reduced to CH2OH or not. It is one of commonsense.
Again, reagent and stoichiometry are essential to proper BRI of the claims.
As per In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971), a patent claim must set out and circumscribe a particular area with a reasonable degree of precision and particularity to satisfy the definiteness requirement of 35 U.S.C. § 112.
Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Also see, In re Zletz, 13 USPQ2d 1320,1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Suggestion: See MPEP 1204 Notice of Appeal [R-01.2024].
Also see highlighted lines 9-10 of office action 05/12/2026
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.
Claims 1-10, 17-20 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 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.
Response to Applicants Remarks filed 07/22/2026.
Applicants’ Remarks are not persuasive.
Applicants’ arguments focus on
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The statement that
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contradicts, Applicants statement at the bottom of page 15 onto 16
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(emphasis added by the Examiner).
The observation that
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is as true as the falling:
Other than speculation, there is no working example of lactone from tricarboxylic acid
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Applicants’ speculative mechanistic rationale at page 16,
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overlooks the Verduyckt Table 2, title
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foot note
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As such, the position taken is that there is suggestion to use the only starting material(s) in the disclosure in the instant case and in Verduyckt to make the same product lactone as in the disclosure. Whether the lactone is a side product in Verduyckt (or what is/are the intermediates in the conversion of the only starting materials) is irrelevant to the BRI of the base claim.
Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
Accordingly, the claims do not recite an unobvious distinction over the prior art. Further, a reference is relevant not only for what it expressly teaches, but also for what it would have conveyed to one of ordinary skill in the art. See In re Opprecht, 12 USPQ2d 1235, 1236 (Fed. Cir. 1989); In re Bode, 193 USPQ 12 (CCPA 1976). In light of the foregoing discussion, the Examiner finds that the claimed subject matter as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made, in view of the cited references and the knowledge generally available in the art. Accordingly, the claims are rejected under 35 U.S.C. § 103.
Suggestion: See MPEP 1204 Notice of Appeal [R-01.2024].
Also see highlighted lines 9-10 of office action 05/12/2026
Claim Rejections - 35 USC § 112
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 1-10, 17-20 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 few combinations of the limitations for the process parameters of the claimed method, does not reasonably provide enablement for the multiple combination of the limitations. Enabling disclosure can be acknowledged for three tricarboxylic acids. Enabling disclosure for making lactones from any and all 6C tricarboxylic acids or esters or anhydrides is not found in the specification. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The determination that "undue experimentation" would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the relevant factual considerations.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). These include: (1) breadth of the claims; (2) nature of the invention; (3) state of the prior art; (4) amount of direction provided by the inventor; (5) the level of predictability in the art; (6) the existence of working examples; (7) quantity of experimentation needed to make or use the invention based on the content of the disclosure; and (8) relative skill in the art.
All the factors have been considered with the most relevant factors discussed below:
All the factors have been considered with the most relevant factors discussed below:
Direction, guidance and working example for the catalytic formation of the lactones from a 6C tricarboxylic acid is present in the speciation for the starting materials citric acid, aconitic acid and isocitric acid (all linear tricarboxylic acid) to make 5-membered lactone.
There is no disclosure with respect to any and all 6C containing tricarboxylic acid or esters, anhydride such as
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There is no enabling disclosure for
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As such the scope of the base claim with vague recitation of
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is wide that finds little support in the specification. These are only example. For instance, conceivable substitution of the CH containing above pictured structures, replacing the H in CH, with other non-C containing groups would make 6C carbon starting materials as per definition expand the scope even further.
The scope of the claimed method (which depends on the catalytic activity) ,
with respect to catalyst defined in generic term as
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finds little support in the specification as the disclosure is limited to two catalyst. See Table 1-3. Catalyzed reaction is generally considered unpredictable merely from the chemical nature of the catalyst. Corona Co. v. Dover; (USSC 1928) 276 US 358, 369. The catalytic action cannot be forecast by its chemical composition, for such action is not understood and is not known except by actual test, Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 368-369 (1928). Catalytic effects are not ordinarily predictable with certainty. In re Doumani et al. (CCPA 1960) 281 F2d 215, 126 USPQ 408. According to U.S. District Court District of Connecticut held in Mobil v. Grace 180 USPQ 418 that “there is an inherent mystery surrounding the unpredictability of the performance of catalysts...” 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. Further, where patentability is predicated upon a catalytic phenomenon, which are usually unpredictable, generic claims must be supported by sufficient examples to be persuasive of its broad operability. In re Grant (CCPA 1962) 304 F2d 676, 134 USPQ 248. It is well known that there is an initial period during the development of any new technology when the "cause and effect" of even a small change in catalyst composition or process conditions is unpredictable. During that period, virtually everything novel is patentably unobvious because the consequence of the change in composition or procedure which imparts novelty to the claimed subject matter cannot be predicted.
Unpredictable nature of organic chemical reactions is art acknowledged, for example by Dorwald, Side Reactions in Organic Synthesis, 2005, Wiley: VCH, Weinheim pg. IX of Preface pg. 1-15. At page 9, Dorwald teaches that “Even the most experienced chemist will not be able to foresee all potential pitfalls of a synthesis, specially so if multifunctional, structurally complex intermediates must be prepared. The close proximity or conformational fixation of functional groups in a large molecule can alter their reactivity to such an extent that even simple chemical transformations can no longer be performed…... Small structural variations of polyfunctional substrates might, therefore, bring about an unforeseeable change in reactivity. The instantly recited starting material and product are multifunctional (containing groups susceptible to reactions with the indicated reagent as per disclosure) compounds.
There is a substantial gap between what is taught in the specification and what is being claimed. For these reasons, one skilled in the art would be faced with undue amount of research. The specification lacks disclosure sufficient to make and use the invention, in predictable manner, commensurate with the scope of the claims.
“A conclusion of Iack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. ln re Wright, 999 F.2d 1557,1562, 27 USPQ 2d 1510, 1513 (Fed. Cir. 1993).'' That conclusion is clearly justified here. See MPEP 2164.01(a). Thus, undue experimentation would be required to make and use Applicants' invention.
MPEP 2164.05(a): When the best efforts have failed to achieve a goal, it is reasonable for the PTO to require evidence that such a goal has been accomplished, In re Ferens, 163 USPQ 609. Patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable. Tossing out the mere germ of an idea does not constitute enabling disclosure. The failure of skilled scientists to achieve a goal is substantial evidence that achieving such a goal is beyond the skill of practitioners in that art, Genentech vs. Novo Nordisk, 42 USPQ2nd 1001, 1006.
Genentech Inc. v. Novo Nordisk A/S (CA FC) 42 USPQ2d 1001, states “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “[p]atent protection is granted in return.
Suggestion: See MPEP 1204 Notice of Appeal [R-01.2024].
Also see highlighted lines 9-10 of office action 05/12/2026
THIS ACTION IS MADE FINAL. 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 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.
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.
/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625
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