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 .
Detailed Action
This application is a continuation of US application 17/406386, now US patent 11932890, filed August 19, 2021, which is a continuation of US application 16/218518, now US patent 11098334, filed December 13, 2018, which claims benefit of provisional applications 62/733729, filed September 20, 2018, and 62/598685, filed December 14, 2017. Claims 18-39 are pending in this application and examined on the merits herein. Applicant’s preliminary amendment submitted May 23, 2024, is acknowledged wherein claims 1-17 are canceled and new claims 18-39 are introduced.
Claim Rejections - 35 USC § 102
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 18-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Behabtu et al. (PCT international publication WO2017/079595. (Reference included with PTO-892)
Claim 18 is directed to an ester or ether derivative of a polysaccharide which is a dextran backbone comprising alpha-1,6-linkages and one or more alpha-1,3-linked side chains. Behabtu et al. describes a polysaccharide having the same backbone and side chains. (p. 2 lines 8-13, see also abstract and figure 1) This graft copolymer has the same structural features described in present claim 18. Furthermore Behabtu et al. describes linkage analysis of such a polymer by methylation followed by hydrolysis. (p. 63 line 15 – p. 64 line 18) This methylated polysaccharide wound be an ether derivative of the polysaccharide, anticipating present claim 18.
Regarding claim 19, the backbones pictured in figure 1 of Behabtu contain 100% alpha-1,6 linkages, p. 14 lines 18-20 describe a main chain containing 100% alpha-1,6 linkages, and p. 20 lines 8-10 describe long chains of 100% alpha-1,6 linkages.
Regarding claims 20-22, the backbone dextran has a molecular weight of at least about 100000 Daltons (p. 14 lines 5-6) which would amount to a DP of about 617. Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 26-28, p. 25 lines 25-28 of Behabtu describe the graft polymer as having a large number, such as 4-6, side chains. Regarding claims 29-32, p. 25 lines 12-24 describes the size of the side chains as being greater than 1620 Da, which is a Dp of 10 or more, and p. 34 line 30 describes 100% alpha-1,3 linkages.
Regarding claim 33, a methyl derivative is an ether derivative. Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides described by Behabtu could theoretically be used for these purposes.
Therefore Behabtu anticipates the present claims.
Claims 18-30, 33, and 35-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bashari et al. (Reference included with PTO-892)
Claim 18 is directed to an ester or ether derivative of a polysaccharide which is a dextran backbone comprising alpha-1,6-linkages and one or more alpha-1,3-linked side chains. Claim 33 specifies that this polymer is an ether derivative.
Bashari et al. discloses dextran extracted from sugarcane juice. (p. 246 right column last paragraph, p. 247 section 2.3) The dextran was then methylated for GC-MS analysis. (p. 247 section 2.7.3) The methylated polysaccharide is considered to be an ether derivative according to claims 18 and 34. Regarding the further structural features recited in claim 18, the methylation and NMR analysis of the structure leads the authors to conclude that the dextran contains a main backbone of alpha-1,6 linked dextran with alpha-1,3 linked glucose residues as side chains. (p. 253 figure 6A) Since the side chains are only single glucose residues, they contain one single alpha-1,3 linkage, or 100% 1,3 linkages, thereby anticipating claims 18 and 19.
Regarding claims 20-22 the Mw is about 1.75x106, which is a total degree of polymerization of about 10802. Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 26-30, the dextran is described as comprising 94.32% alpha-1,6 backbone bonds and 4.37% side chain branch points. (figure 6A) Given a total DP of 10802, there would be hundreds of side chains.
Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides described by Bashari could theoretically be used for these purposes.
Therefore Bashari anticipates the present claims.
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 18-20, 23-25, 29, 31, 33, and 35-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, and 6-8 of U.S. Patent No. 12624126. (Cited in PTO-892, herein referred to as ‘126) Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘126 anticipate the present claims.
Specifically, claim 1 of ‘126 claims a graft copolymer ether having a dextran backbone and at least one alpha-1,3 glucan side chains having at least 30% alpha-1,3 glucan linkages. Dependent claim 3 further specifies that the side chains comprise at least 90% alpha-1,3 linkages, thereby anticipating present claims 18, 29, and 33.
Regarding present claim 31, claim 4 of ‘126 specifies that the length of the side chains is at least 15. Regarding claim 20, claim 8 of ‘126 specifies that the molecular weight of the dextran backbone is about 5000. This is equivalent to about 30 saccharide units, thereby anticipating present claim 20.
Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides claimed by ‘126 could theoretically be used for these purposes.
Regarding present claim 19, claim 7 of ‘126 specifies that the dextran contains at least 90% alpha-1,6 linkages. While this is less than 100%, one of ordinary skill in the art would have seen it as suggesting any value between 90-100%, thereby rendering claim 19 obvious.
Claims 18-25, 33, and 35-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 20 of U.S. Patent No. 11987694. (Cited in PTO-892, herein referred to as ‘694) Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘694 anticipate the present claims.
Specifically, claim 1 of ‘694 claims a graft copolymer ether having a dextran backbone and at least one alpha-1,3 glucan side chains having at least 95% alpha-1,3 glucan linkages, thereby anticipating present claims 18, 29, and 33.
Regarding claims 20-22, claim 1 of ‘694 specifies that the molecular weight of the dextran backbone is about 100000. This is equivalent to about 617 saccharide units, thereby anticipating present claims 20-22.
Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides claimed by ‘126 could theoretically be used for these purposes.
Regarding present claim 19, claim 20 of ‘694 specifies that the dextran contains at least 95% alpha-1,6 linkages. While this is less than 100%, one of ordinary skill in the art would have seen it as suggesting any value between 95-100%, thereby rendering claim 19 obvious.
Claims 18, 20, 21, 23-26, and 29-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 12, and 13 of U.S. Patent No. 11098334. (Cited in PTO-892, herein referred to as ‘334) Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘334 anticipate the present claims.
Specifically, claim 1 of ‘334 claims a graft copolymer ether or ester derivative having a dextran backbone and at least one alpha-1,3 glucan side chains having at least 50% alpha-1,3 glucan linkages, thereby anticipating present claims 18, 33, and 34.
Regarding claims 20-21, claim 5 of ‘334 specifies that the dextran has a DP of 10-200.
Regarding claim 26, claim 12 of ‘334 specifies an embodiment containing two or more alpha-1,3 side chains. Regarding present claims 29-32, claims 6 and 7 of ‘334 disclose the same limitations recited in these claims.
Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides claimed by ‘334 could theoretically be used for these purposes.
Claims 18-21, 23-26, and 29-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10, and 16 of U.S. Patent No. 11932890. (Cited in PTO-892, herein referred to as ‘890) Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘890 anticipate the present claims.
Specifically, claim 1 of ‘890 claims a graft copolymer ether or ester derivative having a dextran backbone and at least one alpha-1,3 glucan side chains having at least 50% alpha-1,3 glucan linkages, thereby anticipating present claims 18, 33, and 34.
Regarding present claim 19, claim 16 of ‘890 claims an embodiment wherein the dextran has 100% alpha-1,6 linkages.
Regarding claims 20-21, claim 2 of ‘890 specifies that the dextran has a DP of 10-200.
Regarding claim 26, claim 5 of ‘890 specifies an embodiment containing two alpha-1,3 side chains. Regarding present claims 29-32, claims 3 and 4 of ‘890 disclose the same limitations recited in these claims.
Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides claimed by ‘890 could theoretically be used for these purposes.
Claims 18-20, 23-25, 29, 31, and 33-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19, 21-23, 25, and 26 of copending Application No. 18/539541 (reference application, US pre-grant publication 2024/0309120, cited in PTO-892, herein referred to as ‘541).
Specifically, claim 19 of ‘541 claims a graft copolymer ether or ester derivative having a dextran backbone and at least one alpha-1,3 glucan side chains having at least 90% alpha-1,3 glucan linkages, thereby anticipating present claims 18, 29, 33, and 34.
Regarding present claim 20, claim 21 of ‘541 specifies that the dextran has a DP of at least 15.
Regarding present claim 19, claim 22 of ‘541 specifies that the dextran contains at least 99% alpha-1,6 linkages. While this is less than 100%, one of ordinary skill in the art would have seen it as suggesting any value between 99-100%, thereby rendering claim 19 obvious.
Regarding present claims 29 and 31, claims 25 and 26 of ‘554 disclose the same limitations recited in these claims.
Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides claimed by ‘890 could theoretically be used for these purposes.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18-25, 29, 31, and 33-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of copending Application No. 19/645520 (reference application, unpublished, cited in PTO-892, herein referred to as ‘520).
Specifically, claim 1 of ‘520 claims a graft copolymer ether or ester having a dextran backbone and at least one alpha-1,3 glucan side chains having at least 30% alpha-1,3 glucan linkages. Dependent claim 3 further specifies that the side chains comprise at least 90% alpha-1,3 linkages, thereby anticipating present claims 18, 29, 33, and 34.
Regarding present claim 31, claim 4 of ‘520 specifies that the length of the side chains is at least 15. Regarding claim 20, claim 7 of ‘126 specifies that the molecular weight of the dextran backbone is at least about 10 million Daltons. This is equivalent to about 61728 saccharide units, thereby anticipating present claims 20-22.
Regarding claims 23-25, these claims ae product-by-process claims that require that the dextran be the product of a dextransucrase enzyme having a particular sequence. In this case, the specific process by which a claimed product is produced is only seen to provide patentable distinction from the same product produced by a different process if the process recited in the present claim would necessarily produce a certain structural feature of the product not seen in the prior art. As there is no evidence that this is the case, these claims are not seen to be patentably differentiated from the dextrans having structural features as recited in present claim 18.
Regarding claims 35-39 these claims merely recite intended uses of the claimed polysaccharides. Since these claims require no further structural features beyond the polysaccharide itself, they are seen to be anticipated as the polysaccharides claimed by ‘520 could theoretically be used for these purposes.
Regarding present claim 19, claim 5 of ‘520 specifies that the dextran contains at least 90% alpha-1,6 linkages. While this is less than 100%, one of ordinary skill in the art would have seen it as suggesting any value between 90-100%, thereby rendering claim 19 obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed in this action.
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/ANDREA OLSON/ Primary Examiner, Art Unit 1693 7/3/2026
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