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 .
Status of the Application
Claims 1-3 and 214-230 are pending.
Amendment necessitated new rejection as set forth below.
Newly submitted claim 230 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The inventions are independent or distinct, each from the other because:
Inventions are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different processes, such as any process of any composition having a gaseous and a condensed phase, for instance a distillation unit.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 230 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 1-3 and 214-229 are under current examination.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 214, 217, 219, 226-228 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Grant (US 4123561).
Grant discloses production of isomerized hop, same as product of the instant claims comprising cyclopentadiene IIa with R1b hydroxy, R2b oxo, using same reactant, hop extract (Humulus lupulus extract) comprising same reactant cyclohexadiene Ia with R2a hydroxy and R1a oxo, coming from same natural source with R3=OH, R4-R7=H, OH or C1-C11 hydrocarbon, wherein reactant extract with methanol treated with solid alkali or alkaline earth metal at temperature 70-90C (boiling point of methanol is ~65C, thus the reactant mixture (with surface -area-to-vol ratio) having product is an vapor phase (with surface -area-to-vol ratio expected to more than the reactant mixture because of heat and increase in vol due to heat) and fed through a conduit and cooled (equivalent to heat sink) (i.e. condensed phase with product, i.e., distillate with product) and suspended with CO2 gas, i.e., gas phase at temperature effective to affect the conversion (entire patent and figures).
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With regard to limitation “the ring contraction is a first-order chemical reaction”-Since the cited prior art teachers same chemical reaction as in the instant claims, the chemical reaction of the cited prior art is expected to be a 1st order chemical reaction whether or not realized by the cited prior art.
Since the cited prior art reads on all the limitations of the instant claims 1-3, 214, 217, 219, 226-228, these claims are anticipated.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3 and 214-229 are rejected under 35 U.S.C. 103 as being unpatentable over Grant (US 4123561).
Determining the scope and contents of the prior art
Grant discloses production of isomerized hop, same as product of the instant claims comprising cyclopentadiene IIa with R1b hydroxy, R2b oxo, using same reactant, hop extract (Humulus lupulus extract) comprising same reactant cyclohexadiene Ia with R2a hydroxy and R1a oxo, coming from same natural source with R3=OH, R4-R7=H, OH or C1-C11 hydrocarbon, wherein reactant extract with methanol treated with solid alkali or alkaline earth metal at temperature 70-90C (boiling point of methanol is ~65C, thus the reactant mixture (with surface -area-to-vol ratio) having product is an vapor phase (with surface -area-to-vol ratio expected to more than the reactant mixture because of heat and increase in vol due to heat) and fed through a conduit and cooled (equivalent to heat sink) (i.e. condensed phase with product, i.e., distillate with product) and suspended with CO2 gas, i.e., gas phase at temperature effective to affect the conversion (entire patent and figures).
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With regard to limitation “the ring contraction is a first-order chemical reaction”-Since the cited prior art teachers same chemical reaction as in the instant claims, the chemical reaction of the cited prior art is expected to be a 1st order chemical reaction whether or not realized by the cited prior art.
Ascertaining the differences between the prior art and the claims at issue
Grant teaches applicants process of making same product starting from same reactant and steps using condensed phase and gas phase but fails to teach surface area/vol of the condensed phase; providing sufficient energy of less than 100KW/g for less than 60 seconds to perform ring contraction.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference of surface area/vol of the condensed phase- Grant teaches applicants process of making same product starting from same reactant and steps using condensed phase and gas phase. Thus, with the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art that condensed phase with any surface area/vol ratio may result same product as the cited prior art teaches formation of same product.
With regards to the above difference of providing sufficient energy of less than 100KW/g for less than 60 seconds to perform ring contraction- Grant teaches applicants process of making same product through ring contraction starting from same reactant and steps using condensed phase and gas phase. Thus, the energy provided by the cited prior is also sufficient and expected to be same as in Grant’s process whether or not recognized by the cited prior art. Further, a person of ordinary skill in the art would have optimized the energy to obtain desired yield of the product.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Grant discloses production of isomerized hop, same as product of the instant claims comprising cyclopentadiene IIa with R1b hydroxy, R2b oxo, using same reactant, hop extract (Humulus lupulus extract) comprising same reactant cyclohexadiene Ia with R2a hydroxy and R1a oxo, coming from same natural source with R3=OH, R4-R7=H, OH or C1-C11 hydrocarbon, wherein reactant extract with methanol treated with solid alkali or alkaline earth metal at temperature 70-90C (boiling point of methanol is ~65C, thus the reactant mixture (with surface -area-to-vol ratio) having product is an vapor phase (with surface -area-to-vol ratio expected to more than the reactant mixture because of heat and increase in vol due to heat) and fed through a conduit and cooled (equivalent to heat sink) (i.e. condensed phase with product, i.e., distillate with product) and suspended with CO2 gas, i.e., gas phase at temperature effective to affect the conversion.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the condensed phase of surface area/vol of the cited prior art may form product whether or not such ratio is measured by the cited prior art and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success.
Response to Arguments
Applicants’ remarks and amendment, filed on 07/28/2026, have been fully considered but not found persuasive.
Applicants’ argument is moot in view of new rejection as set forth above.
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.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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