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 1-20 are pending and examined on the merits.
Priority
Acknowledgement is made of this national stage entry of PCT/US2022/074076 filed on 7/22/2022, which claims domestic priority to U.S. provisional application 62/224,553, filed on 7/22/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/18/2024 and 3/4/2025 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.
Drawings
The Drawings filed on 1/18/2024 are acknowledged and accepted by the examiner.
Claim Rejections - 35 USC § 112- Scope of Enablement
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.
Claim 1 is 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 a molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst and a chemical catalyst under conditions suitable to produce a value-added chemical, it does not reasonably provide enablement for all biocatalysts and a chemical catalysts for the production of value-added chemicals. 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/or use the invention commensurate in scope with these claims.
The test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue.” In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). Factors to be considered in determining whether undue experimentation is required are summarized in In re Wands (858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)) as follows: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. See MPEP § 2164.01(a). The Factors considered to be most relevant to the instant rejection are addressed in detail below.
(A)The breadth of the claims:
Claim 1 is drawn to a molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst and a chemical catalyst under conditions suitable to produce a value-added chemical. The structure of the a molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst and a chemical catalyst under conditions suitable to produce a value-added chemical are a large number of biocatalysts and chemical catalysts.
B) The nature of the invention; C) The state of the prior art; (D) The level of one of ordinary skill; and (E) The level of predictability in the art: As noted above, the scope of the claimed variants of guanine oxidase are unlimited. The structure of the claimed molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst and a chemical catalyst under conditions suitable to produce a value-added chemical are a large number of chemicals.
In this regard, it is noted that the reference of Guajardo et al. (2021, molecules, Examiner cited) discloses in recent decades, industrial processes using biocatalysts have boosted, with major applications devoted to the development of (highly valuable) pharmaceutical products. This has been motivated by the advantageous properties of enzymes, such as enantio-, regio- and chemo selectivity, together with the fact that the high market value of the products makes the application of the biocatalysts profitable (page 1, para 1).
(F) The amount of direction provided by the inventor and (G) The existence of working examples: The specification discloses the following working examples of biocatalysts and chemical catalysts (i.e. biocatalysts (n alcohol oxidase (AOX), an alditol oxidase (AIDO), a copper- radical oxidase (CRO), a glycerol oxidase (GIyOX), or combinations thereof), chemical catalyst (hydrochloric acid, sulfuric acid, formic acid, sodium hydroxide and urea), value-added chemicals (comprises: glucaric acid, L-ascorbic acid, succinic acid, 2,5-furan dicarboxylic acid, 2,5-furan dicarboxylic acid dimethyl ester, propylene glycol, lactic acid, acrylic acid, propanol, acetoin, 2,3-butanediol, 1,3-butadiene, 2-butanone, glycolic acid, glycerol, dihydroxyacetone). Other than the above disclosed species, there is no prior-art or disclosed teaching as to the large number of biocatalysts, chemical catalysts to produce a value-added chemical. Other than these working examples, the specification fails to disclose any other working examples of a biocatalyst and chemical catalyst for the production of a value-added chemical.
In view of the overly broad scope of the claims, the lack of guidance and working examples provided in the specification, the high level of unpredictability, and the state of the prior art, undue experimentation would be necessary for a skilled artisan to make and use the entire scope of the claimed invention. Applicants have not provided sufficient guidance to enable one of ordinary skill in the art to make and use the claimed invention in a manner reasonably correlated with the scope of the claims. The scope of the claims must bear a reasonable correlation with the scope of enablement (In re Fisher, 166 USPQ 19 24 (CCPA 1970)). Without sufficient guidance, determination of having the desired biological characteristics is unpredictable and the experimentation left to those skilled in the art is unnecessarily, and improperly, extensive and undue. See In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988).
Claim Rejections - 35 USC § 112(b)
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, 8, 18 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.
Regarding claim 1, the recitation of the phrase ‘value-added chemical’ is indefinite because it is unclear what the scope of the phrase is intended to encompass structurally. It is unclear what the phrase ‘value-added chemical’ is intended to encompass. It is unclear from the claims and specification what the phrase ‘value-added chemical’ is referring to structurally and functionally as it is not clearly defined. Accordingly, the metes and bounds upon which patent protection is sought cannot be ascertained from this phrase. Appropriate correction is suggested.
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)(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.
Claims 1, 8-16, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fraaije et al (WO 2019212351 A2, Date Published: 07 November 2019, Examiner cited) {herein Fraaije}.
Claims 1, 8-16, 20 are drawn to a molecular manufacturing process comprising: contacting a platform molecule with (i) a biocatalyst and (ii) a chemical catalyst under conditions suitable to produce a value-added chemical.
With respect to claims 1, 8-16, 20, Fraaije teaches a method wherein glycerol and/or ethanol (platform chemical) is converted into value-added products by (bio)catalysts (page 3, lines 9; page 11, lines 21-25) such as mutant AOX (alcohol oxidase), a biocatalyst (page 11, lines 32) and HCl (chemical catalyst) (page 12, lines 15-16; page 23, table 2). As such, absent evidence otherwise, it is the Examiner’s position that the product obtained by the teachings of Fraaije would necessarily result in the same product as claimed (a value-added chemical). Fraaije further teaches the conversion of ethanol via PcAOX (Phanerochaete chrysosporium alcohol oxidase) into value-added chemicals (page 3, lines 9-10). Since the art teaches the structure of the molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst (AOX) and a chemical catalyst (oxidase), it is the Examiners position that the molecular manufacturing process would necessarily produce (result in): “the value-added chemical comprise propylene glycol” (claim 9), “the value-added chemical comprises lactic acid” (claim 10), “the value-added chemical comprises acrylic acid” (claim 11), “the value-added chemical comprises propanol” (claim 12), “the value-added chemical comprises acetoin” (claim 13), “the value-added chemical comprises 2,3-butanediol” (claim 14), “the value-added chemical comprises 1,3-butadiene” (claim 15), “the value-added chemical comprises 2-butanone” (claim 16), “the value-added chemical comprises dihydroxyacetone” (claim 20). As such, absent evidence otherwise, it is the Examiner’s position that, Fraaije anticipates said limitations as Fraaije teaches the platform chemical (ethanol and/or glycerol), a biocatalyst and a chemical catalyst, which are the required limitations of the active steps of the method claims.
For the reasons stated herein, the teachings of Fraaije anticipate claims 1, 8-16, 20.
Claims 1-7, 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chappell (2013, Dissertation: The University of Leeds, School of Molecular and Cellular Biology, Examiner cited) {herein Chappell}.
Claims 1-7, 17-20 are drawn to a molecular manufacturing process comprising: contacting a platform molecule with (i) a biocatalyst and (ii) a chemical catalyst under conditions suitable to produce a value-added chemical.
With respect to claims 1-7, 17-20, Chappell teaches a method wherein a platform molecule (glycerol) (page 43, para 1) is converted into a value-added product such as lactic acid (table 1.3) by contact with a biocatalyst in the form on galactose oxidase (fig 1.8) and a chemical catalyst in the form of a transition metal ion (page 22, para 1). Chappell further teaches that the oxidation of glycerol can lead to a variety of different products with a range of potential uses (page 43, para 1). In addition, Chappell teaches a method wherein glucose and ethylene glycol are substrates (platform molecules) of GO (Galactose oxidase) (biocatalyst) (table 1.1) and a chemical catalyst in the form of a transition metal ion (page 22, para 1) for the synthesis of chemicals for various industries including pharmaceuticals, food and agriculture as well as in the manufacture of specialist and commodity chemicals (page 3, para 2). Absent evidence otherwise, it is the Examiner’s position that ethylene glycol comprises ethylene as it is known by those of ordinary skill in the art that ethylene glycol is derived from ethylene. As such, it is the Examiner’s position that the platform chemical ethylene glycol, taught by Chappell, inherently comprises ethylene, as recited in the instant application claim 18. Since the art teaches the structure of the a molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst and a chemical catalyst, it is the Examiners position that the molecular manufacturing process would necessarily produce: “the value-added chemical comprises glucaric acid” (claim 2), “the value-added chemical comprises L-ascorbic acid” (claim 4), “the value-added chemical comprises succinic acid” (claim 5), “the value-added chemical comprises 2,5-furan dicarboxylic acid” (claim 6), “the value-added chemical comprises 2,5-furan dicarboxylic acid dimethyl ester” (claim 7), “the value-added chemical comprises glycolic acid” (claim 17), “the value-added chemical comprises glycerol” (claim 19), ” the value-added chemical comprises dihydroxyacetone” (claim 20). As such, absent evidence otherwise, it is the Examiner’s position that the value-added chemicals recited in claims 2-7, 17, 19-20 of the instant application would be necessarily produced by the method taught by Chappell as Chappell teaches the platform chemical (glucose) (page 44, para 4), a biocatalyst (fig 1.8) and a chemical catalyst (page 22, para 1) which are the required limitations of the active steps of the method claims.
For the reasons stated herein, the teachings of Chappell anticipates claims 1-7, 17-20.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 21-22, 29 of copending Application No. 17/790,923 which are commonly owned and have seven common inventors and filed before the instant application in view of Fraaije et al (WO 2019212351 A2, Date Published: 07 November 2019, Examiner cited) {herein Fraaije} and Chappell (2013, Dissertation: The University of Leeds, School of Molecular and Cellular Biology, Examiner cited) {herein Chappell}.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are drawn a method for the production of dihydroxyacetone (platform molecule) comprising: contacting an input comprising glycerol with an oxidation biocatalyst comprising an alcohol oxidase (biocatalyst) and a finishing catalyst comprising an acid catalyst (chemical catalyst) to form dihydroxyacetone (a value-added chemical). The dependent claims further define the method for producing dihydroxyacetone (a value-added chemical) using a biocatalyst and a chemical catalyst.
The instant application claims 1-20 are not patentably distinct from claims 21-22, 29 of ‘923 because claims 21, 22, 29 of ‘923 recites a method for the production of dihydroxyacetone (platform molecule) comprising: contacting an input comprising glycerol with an oxidation biocatalyst comprising an alcohol oxidase (biocatalyst) and a finishing catalyst comprising an acid catalyst (chemical catalyst) to form dihydroxyacetone (a value-added chemical), which are not patentably distinct from the instant application claims 1-20, in view of Fraaije and Chappell (see below).
However, ‘923 does not recite wherein the platform chemical comprises glucose and the value-added chemical comprises glucaric acid (claim 2). ‘923 does not recite wherein the biocatalyst comprises galactose oxidase and the chemical catalyst comprises a transition metal catalyst (claim 3). ‘923 does not recite wherein the platform chemical comprises glucose and the value-added chemical comprises L-ascorbic acid (claim 4). ‘923 does not recite wherein the platform chemical comprises glucose and the value-added chemical comprises succinic acid (claim 5). ‘923 does not recite wherein the platform chemical comprises glucose and the value-added chemical comprises 2,5-furan dicarboxylic acid (claim 6). ‘923 does not recite wherein the platform chemical comprises glucose and the value-added chemical comprises 2,5-furan dicarboxylic acid dimethyl ester (claim 7). ‘923 does not recite wherein the platform chemical comprises ethanol (claim 8). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises propylene glycol (claim 9). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises lactic acid (claim 10). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises acrylic acid (claim 11). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises propanol (claim 12). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises acetoin (claim 13). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises 2,3-butanediol (claim 14). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises 1,3-butadiene (claim 15). ‘923 does not recite wherein the platform chemical comprises ethanol and the value-added chemical comprises 2-butanone (claim 16). ‘923 does not recite wherein the platform chemical comprises ethylene glycol and the value-added chemical comprises glycolic acid (claim 17). ‘923 does not recite wherein the platform chemical comprises ethylene (claim 18). ‘923 does not recite wherein the platform chemical comprises ethylene glycol and the value-added chemical comprises glycerol (claim 19).
Fraaije teaches a method wherein glycerol and/or ethanol (platform chemical) is converted into value-added products by (bio)catalysts (page 3, lines 9; page 11, lines 21-25) such as mutant AOX (alcohol oxidase), a biocatalyst (page 11, lines 32) and pyruvate-dependent aldolase (catalyst) (page 12, lines 15-16). It is noted that the recitation of “to produce a value-added chemical” is a “product-by-process” claim limitation. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).” As such, absent evidence otherwise, it is the Examiner’s position that the product obtained by the teachings of Fraaije would necessarily result in the same product as claimed (a value-added chemical). Fraaije further teaches the conversion of ethanol via PcAOX (Phanerochaete chrysosporium alcohol oxidase) into value-added chemicals (page 3, lines 9-10). Since the art teaches the structure of the a molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst (AOX) and a chemical catalyst (pyruvate-dependent aldolase), it is the Examiners position that the molecular manufacturing process would necessarily produce (result in): “the value-added chemical comprise propylene glycol” (claim 9), “the value-added chemical comprises lactic acid” (claim 10), “the value-added chemical comprises acrylic acid” (claim 11), “the value-added chemical comprises propanol” (claim 12), “the value-added chemical comprises acetoin” (claim 13), “the value-added chemical comprises 2,3-butanediol” (claim 14), “the value-added chemical comprises 1,3-butadiene” (claim 15), “the value-added chemical comprises 2-butanone” (claim 16), “the value-added chemical comprises dihydroxyacetone” (claim 20). As such, absent evidence otherwise, it is the Examiner’s position that, Fraaije anticipates said limitations as Fraaije teaches the platform chemical (ethanol and/or glycerol), a biocatalyst and a chemical catalyst, which are the required limitations of the active steps of the method claims.
Chappell teaches a method wherein a platform molecule (glycerol) (page 43, para 1) is converted into a value-added product such as lactic acid (table 1.3) by contact with a biocatalyst in the form on galactose oxidase (fig 1.8) and a chemical catalyst in the form of a transition metal ion (page 22, para 1). Chappell further teaches that the oxidation of glycerol can lead to a variety of different products with a range of potential uses (page 43, para 1). In addition, Chappell teaches a method wherein glucose and ethylene glycol are substrates (platform molecules) of GO (Galactose oxidase) (biocatalyst) (table 1.1) and a chemical catalyst in the form of a transition metal ion (page 22, para 1) for the synthesis of chemicals for various industries including pharmaceuticals, food and agriculture as well as in the manufacture of specialist and commodity chemicals (page 3, para 2). Absent evidence otherwise, it is the Examiner’s position that ethylene glycol comprises ethylene as it is known by those of ordinary skill in the art that ethylene glycol is derived from ethylene. As such, it is the Examiner’s position that the platform chemical ethylene glycol, taught by Chappell, inherently comprises ethylene, as recited in the instant application claim 18. it is noted that the recitation of “to produce a value-added chemical” is a “product-by-process” claim limitation. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).” As such, the product obtained by the teachings of Chappell would necessarily result in the same product as claimed. Since the art teaches the structure of the a molecular manufacturing process comprising: contacting a platform molecule with a biocatalyst and a chemical catalyst, it is the Examiners position that the molecular manufacturing process would necessarily produce: “the value-added chemical comprises glucaric acid” (claim 2), “the value-added chemical comprises L-ascorbic acid” (claim 4), “the value-added chemical comprises succinic acid” (claim 5), “the value-added chemical comprises 2,5-furan dicarboxylic acid” (claim 6), “the value-added chemical comprises 2,5-furan dicarboxylic acid dimethyl ester” (claim 7), “the value-added chemical comprises glycolic acid” (claim 17), “the value-added chemical comprises glycerol” (claim 19), ” the value-added chemical comprises dihydroxyacetone” (claim 20). As such, absent evidence otherwise, it is the Examiner’s position that the value-added chemicals recited in claims 2-7, 17, 19-20 of the instant application would be necessarily produced by the method taught by Chappell as Chappell teaches the platform chemical (glucose) (page 44, para 4), a biocatalyst (fig 1.8) and a chemical catalyst (page 22, para 1) which are the required limitations of the active steps of the method claims.
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to combine the recitations of ‘923 in view of Fraaije and Chappell to include the platform chemicals and products of the instant application claims 2-19 because Fraaije recites a method wherein glycerol and/or ethanol (platform chemical) is converted into value-added products by (bio)catalysts (page 3, lines 9; page 11, lines 21-25) such as mutant AOX (alcohol oxidase), a biocatalyst (page 11, lines 32) and pyruvate-dependent aldolase (catalyst) (page 12, lines 15-16). Whereas, Chappell recites a method wherein a platform molecule (glycerol) (page 43, para 1) is converted into a value-added product such as lactic acid (table 1.3) by contact with a biocatalyst in the form on galactose oxidase (fig 1.8) and a chemical catalyst in the form of a transition metal ion (page 22, para 1).
One of ordinary skill in the art would have had a reasonable expectation of success and a reasonable level of predictability to combine the recitations of ‘923, Fraaije and Chappell because Chappell acknowledges that the oxidation of glycerol can lead to a variety of different products with a range of potential uses (page 43, para 1). While Fraaije acknowledges that glycerol and/or ethanol (platform chemical) along with glucose and ethylene glycol are substrates (platform molecules) of biocatalysts (table 1.1) and chemical catalysts (page 22, para 1) for the synthesis of chemicals for various industries including pharmaceuticals, food and agriculture as well as in the manufacture of specialist and commodity chemicals (page 3, para 2; page 3, lines 9; page 11, lines 21-25). Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Status of claims
Claims 1-20 are pending.
Claims 1-20 are rejected.
No claims are in condition for allowance.
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.
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.
/ERICA NICOLE JONES-FOSTER/Examiner, Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656