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 .
Non-Final Rejection
The Status of Claims:
Claims 1-11 are pending.
Claims 1-7 are rejected.
Claims 8-11 are withdrawn from consideration.
DETAILED ACTION
1. Claims 1-7 are under consideration in this Office Action.
Priority
2. It is noted that this application is a 371 of PCT/CN2022/098617 06/14/2022, which has a foreign priority document, CHINA CN202110675326.4 06/18/2021.
Drawings
3. The drawings filed on 12/13/23 are accepted by the examiner.
IDS
4. the IDS filed on 12/13/23 & 6/04/26 were reviewed by the examiner.
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.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-7) on 6/03/26 is acknowledged. Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected group II, there being no allowable generic or linking claim.
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 1-7 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.
In claim 1, the phrase “a straight/branched chain alcohol, acid or ester containing 18-30 carbons and at least one hydroxyl group “ is recited. This expressions can be vague and indefinite because the claim does not explain what else the straight/branched chain alcohol, acid or ester can contain besides at least one hydroxyl group in the claim. The examiner recommends to put the other specific groups for the “ straight/branched chain alcohol, acid or ester”.
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 2 and 4 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 stannous octoate, stannous chloride , zinc oxide , antimony trioxide, zinc acetylacetone, does not reasonably provide enablement for any catalyst generally. The specification does not enable any skilled process chemist to make the invention commensurate in scope with these claims. “The factors to be considered [in making an enablement rejection] have been summarized as the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in that art, the predictability or unpredictability of the art and the breadth of the claims”, In re Rainer, 146 USPQ 218 (1965); In re Colianni, 195 USPQ 150, Ex parte Formal, 230 USPQ 546. The three issues here are the lack of guidance in the specification, the limited working examples, and the unpredictability of the catalytic arts.
a) Determining if methyl glycolate would react with an alcohol(ROH) under any conditions, it would require an esterification(trans) process with a variety of any catalysts generally to produce glycolide , a small quantity of experimentation. b) The direction concerning the various " catalysts generally ". c) There are 11 working examples of using stannous octoate, stannous chloride , zinc oxide , antimony trioxide, zinc acetylacetone as for representing any " catalyst ", pages 9-15. d) The nature of the invention is chemical synthesis to make the glycolide. This requires chemical catalysis.
f) The artisan using Applicants' invention to prepare the claimed compound would be a process chemist or pilot plant operator with a BS degree in chemistry and several years of experience. As suggested by Applicants in the parent application, he would know how to use " stannous octoate, stannous chloride , zinc oxide , antimony trioxide, zinc acetylacetone iron (III) acetyacetonate with esterification reactions but be unaware of any other catalyst to use.
g) Chemical reactions are well-known to be unpredictable, In re Marzocchi, 169 USPQ 367, In re Fisher, 166 USPQ 18. Additionally, catalytic processes, such as are present here, are inherently unpredictable. The U.S. District Court District of Connecticut held in MOBIL OIL CORPORATION v. W.R. GRACE & COMPANY, 180 USPQ 418 that “there is an inherent mystery surrounding the unpredictability of the performance of catalysts; a mystery which is generally recognized and acknowledged by chemists in the cracking art. This is one more reason why the presumption of patent validity "should not be disregarded especially in a case of this sort where the intricate questions of [bio]chemistry involved are peculiarly within the particular competence of the experts of the Patent Office.” Merck & Co. v. Olin Mathieson Chemical Corp., 253 F.2d 156, 164, 116 USPQ 484, 490 (4th Cir. 1958)". "The catalytic action can not 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). Also see, Application of Grant, 304 F.2d 676, 679, 134 USPQ 248, 250-251 (CCPA 1962); Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176, 181, 148 USPQ 522, 525-526 (2d Cir. 1966), cert. denied 385 U.S. 821, 151 USPQ 757 (1966); Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 268, 152 USPQ 446, 450-451 (2d Cir. 1967); Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 132-133, 118 USPQ 122, 128-129."
h) The breadth of the claims includes the presently unknown list of catalysts embraced by limitation " a catalyst” generally. Thus, the breadth of the claims is moderate.
Conclusion
Claims 1-7 are rejected.
Claims 8-11 are withdrawn from consideration.
` Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached 8:00-5:00.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 6/19/2026
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