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 .
Claims 1-19 are pending.
Claims 8-15 stands withdrawn pursuant to 37 CFR 1.142(b).
Claims 1-7, 16-19 are pending and examined on the merits.
Applicant’s remarks filed on 5/4/2026 in response to the Non-Final Rejection mailed on 2/5/2026 have been fully considered and are deemed persuasive to overcome at least one of the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Priority
Acknowledgement is made of this national stage entry of PCT/EP2022/064529 of Non-provisional Application No. 18/570,018, filed on 5/30/2022, which claims foreign priority under 35 U.S.C. 119(a)-(d) to European Patent Application No. EP21180241.8, filing date 6/18/2021. The certified copy has been filed in the present application on 12/13/2023.
It is noted, however, that applicant has not filed a certified copy of the English translation as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/28/2026 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Withdrawn Rejections
The provisional rejection of claims 1-7, 16-19 on the grounds of nonstatutory double patenting as being unpatentable over claims 1, 4, 8, 10, 14 of U.S. Patent Application 18570395 is withdrawn in view of the instant application claimed mixture of n-nonanoic esters of xylitol, sorbitol being distinctly different from the art claimed anhydro sugar alcohol N-nonanoic acid ester.
Maintained 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 (i.e., changing from AIA to pre-AIA ) 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)(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.
The rejection of claims 1-7, 16-19 under 35 U.S.C. 102(a)(2) as being anticipated by ‘411 (WO 2020116411, Date of Filing: 2019-12-03, cited on IDS dated 12/13/2023) {herein ‘411} is maintained.
Claims 1-4, 16-19 are drawn to a mixture of n-nonanoic esters of xylitol, sorbitol or erythritol, comprising: at least two of the esters which differ with regard to at least one esterification position of at least one nonanoyl radical in the xylitol, sorbitol or erythritol, with the proviso that n-nonanoic esters of erythritol with an average level of esterification of greater than 3.2 are excluded.
Claims 5-7 are drawn to a mixed composition comprising the mixture of n- nonanoic esters according to Claim 1, wherein said composition comprises less than 25% by weight, of free n-nonanoic acid, where the percentages by weight are based on the sum total of all n- nonanoic esters of xylitol, sorbitol and erythritol and n-nonanoic acid.
With respect to claim 1, ‘411 teaches a composition (composition B) comprising n-nonanoic acid, xylitol and sorbitol (pages 1, para 2; page 2, para 2; page 3, para 5). It is known by those of ordinary skill in the art that mixing a polyol with n-nonanoic acid produces polyol esters. As such, absent evidence otherwise, it is the Examiner’s position that a composition comprising n-nonanoic acid, xylitol and sorbitol would necessarily produce a mixture (composition) of n-nonanoic esters of xylitol and sorbitol. Since said composition does not include erythritol, it is the Examiner’s position that it would necessarily exclude n-nonanoic esters of erythritol with an average level of esterification of greater than 3.2. Additionally, absent evidence otherwise, it is the Examiner’s position that at least one esterification position of at least one nonanoyl radical in the xylitol and sorbitol would be different based on the chemical structures of the sugar alcohols. It is commonly known in the art that both xylitol (5 carbons with 5 hydroxyl groups) and sorbitol (6 carbon with 6 hydroxyl groups) possess different numbers of hydroxyl groups and carbon chain lengths, which leads to distinct regioselectivity.
With respect to claim 2, since the art teaches the structure of a mixture of n-nonanoic esters of xylitol and sorbitol, it is the Examiners position that the composition would necessarily comprise at least two regioisomers of the mono-n- nonanoic ester.
With respect to claim 3, since the art teaches the structure of a mixture of n-nonanoic esters of xylitol and sorbitol, it is the Examiners position that the composition would necessarily comprise mono-n-nonanoic ester and di-n- nonanoic ester.
With respect to claim 4, since the art teaches the structure of a mixture of n-nonanoic esters of xylitol and sorbitol, it is the Examiners position that the composition would necessarily have an average level of esterification of 1.0 to 4.0.
With respect to claim 5, ‘411 teaches a composition B comprising n-nonanoic acid, xylitol and sorbitol (pages 1, para 2; page 2, para 2; page 3, para 5). It is known by those of ordinary skill in the art that mixing polyol with n-nonanoic acid produces polyol esters. As such, absent evidence otherwise, it is the Examiner’s position that a composition comprising n-nonanoic acid, xylitol and sorbitol would necessarily produce s mixture of n-nonanoic esters of xylitol, sorbitol. Since said composition does not include erythritol, it is the Examiner’s position that it would necessarily exclude n-nonanoic esters of erythritol with an average level of esterification of greater than 3.2. Additionally, absent evidence otherwise, it is the Examiner’s position that at least one esterification position of at least one nonanoyl radical in the xylitol and sorbitol would be different based on the chemical structures of the sugar alcohols. It is commonly known in the art that both xylitol (5 carbons with 5 hydroxyl groups) and sorbitol (6 carbons with 6 hydroxyl groups) possess different numbers of hydroxyl groups and carbon chain lengths, which leads to distinct regioselectivity. Since the art teaches the structure a mixed composition comprising the mixture of n- nonanoic esters, it is the Examiners position that the composition would necessarily have less than 25% by weight, of free n-nonanoic acid, where the percentages by weight are based on the sum total of all n- nonanoic esters of xylitol, sorbitol and erythritol and n-nonanoic acid.
With respect to claim 6, since the art teaches the structure a mixed composition comprising the mixture of n- nonanoic esters, it is the Examiners position that the composition would necessarily have 0.05% by weight to 40% by weight, of free xylitol, sorbitol and/or erythritol, where the percentages by weight are based on the sum total of all n-nonanoic esters of xylitol, sorbitol and erythritol and all xylitol, sorbitol and erythritol.
With respect to claim 7, since the art teaches the structure a mixed composition comprising the mixture of n- nonanoic esters, it is the Examiners position that the composition would necessarily have 0.1% by weight to 60% by weight of at least one solvent.
With respect to claim 16, since the art teaches the structure of a mixture of n-nonanoic esters of xylitol and sorbitol, it is the Examiners position that mixture of n-nonanoic esters would necessarily comprise mono-n-nonanoic ester, di-n-nonanoic ester, and tri-n-nonanoic ester.
With respect to claim 17, since the art teaches the structure of a mixture of n-nonanoic esters of xylitol and sorbitol, it is the Examiners position that mixture of n-nonanoic esters would necessarily comprise an average level of esterification of 1.0 to 3.
With respect to claim 18, since the art teaches the structure of a mixture of n-nonanoic esters of xylitol and sorbitol, it is the Examiners position that mixture of n-nonanoic esters would necessarily comprise an average level of esterification of 1.1 to 2.7.
With respect to claim 19, since the art teaches the structure of a mixture of n-nonanoic esters of xylitol and sorbitol, it is the Examiners position that mixture of n-nonanoic esters would necessarily comprise an average level of esterification of 1.3 to 2.6.
For the reasons stated herein, the teachings of ‘411 anticipate claims 1-7, 16-19.
RESPONSE TO REMARKS: Beginning on p. 2 of Applicant’s remarks, Applicants in summary contends that the invention taught by ‘411 differs from the instant application because Component A is not disclosed or taught as either xylitol or sorbitol. Applicant contends that there is also no single embodiment or enabling disclosure in Denda of any mixture of specifically n-nonanoic esters, or n-nonanoic esters of even just erythritol. Applicant contends that if the polyol is erythritol, the present proviso of excluding an average level of esterification of greater than 3.2 is not met..
This argument is found to be not persuasive. Examiner contends that the product taught by ‘411 being comprised of an esterified product of component A and component B does not require the claimed ‘erythritol.’ Examiner contends that ‘411 teaches component A is comprised of Dipentaerythritol, erythritol, or sorbitan’ (page 2, para 2). Emphasis in the term ‘or.’ As such, Examiner contends that component A can be limited to include sorbitan (not include erythritol), of which would necessarily exclude n-nonanoic esters of erythritol with an average level of esterification of greater than 3.2 since, as recited in the instant application claim 1.
Conclusion
Status of Claims
Claims 1-7, 16-19 are pending.
Claims 8-15 stands withdrawn pursuant to 37 CFR 1.142(b).
Claims 1-7, 16-19 are rejected.
No claims are in condition for allowance.
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 ERICA NICOLE JONES-FOSTER whose telephone number is (571)270-0360. The examiner can normally be reached mf 7:30a - 4:30p.
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, Manjunath Rao can be reached at 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA NICOLE JONES-FOSTER/ Examiner, Art Unit 1656
/MANJUNATH N RAO/ Supervisory Patent Examiner, Art Unit 1656 (nr)
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