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 PCT/US2022/078036, filed October 13, 2022, which claims benefit of provisional application 63/270638, filed October 22, 2021. Claims 1-17 are pending in this application and examined on the merits herein.
Drawings
The drawings are objected to because the combination of low resolution and the small size of the writing in the drawings renders them illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 is pictured as follows:
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It appears that the chemical structure which is present after the first line of the claim is misplaced and is intended to appear between the second and third lines, as this would clearly indicate that it is the formula mentioned in the second line. Appropriate correction is required.
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 1-17 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.
Independent claim 1 is directed to a method described as “controlled synthesizing and chemical recycling of a stereoregular polysaccharide.” The description of the method as involving both synthesis and recycling makes it unclear what the result of the process actually is. In particular, it is unclear whether this claim would be infringed by a method of making a polysaccharide, or whether it also requires that the polysaccharide be immediately recycled back into its component monomers after synthesis. Furthermore if the claim is interpreted as requiring that the polysaccharide be immediately broken back down into its component monomer, the claim is missing the necessary process step defining how this is to be accomplished.
Independent claim 1 further makes reference to “a synergy of a catalyst and an initiator” as a component of the reaction. It is unclear what is meant by this term. For example, it could be intended to refer to a synergistic amount of the two components, a complex of the two components that somehow has a synergistic effect, or some other interpretation.
Dependent claim 12 describes the process as involving high chain end fidelity and excellent molecular weight distribution. These are subjective terms of degree that do not provide one skilled in the art with proper basis to judge whether a particular objective numerical value meets these requirements or not, thereby rendering the claim indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 depends from claim 1, which might be directed to a process of making a polysaccharide. However, claim 17 is directed to the polysaccharide itself, rather than the method of making said polysaccharide. Because claim 17 does not require the specifics of the method of claim 1, it fails to include all the limitations of the base claim. Note that a polysaccharide is an objective chemical structure, and a chemically identical structure could have been made by a different process, for example wherein the catalyst is an enzyme and there is no separate initiator, or a process involving alkylating the free hydroxyls of an already formed 1-6-glucan. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1, 2, 4-12, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ruckel et al. (Non-patent literature reference 21 included with 5/22/2024 PTO-1449)
Independent claim 1 is directed to a process comprising reacting a biomass-derived anhydrosugar having a particular formula with an initiator and a catalyst. As discussed above under 35 USC 112(b) this claim is indefinite. For the sake of the present office action, the claim is being interpreted as if, at a minimum, it is infringed by a method comprising the recited step of reacting the indicated anhydrosugar with any two compounds that could be called an initiator and a catalyst.
Ruckel et al. discloses a process for producing a linear stereoregular polysaccharide by polymerization of 1,6-anhydro-2,3,4-tri-O-alkyl beta-D-glucopyranose monomers. (p. 2233 right column first paragraph) This reaction involves a Lewis acid which acts both as an initiator of the first monomer, (p. 2238 left column) and as a catalyst for subsequent extension of the polymer. (p. 2238 right column) Therefore Ruckel et al. anticipates present claims 1 and 4, as well as 17. Furthermore regarding claims 5 and 6, Ruckel et al. discloses embodiments wherein the Lewis acid catalyst is boron trifluoride diethyl ether. (p. 2234 table I) Regarding claims 7-11, the same table describes embodiments wherein the alkyl group is methyl or ethyl. Regarding claim 12, as discussed previously this claim is indefinite and the scope of high chain end fidelity and excellent molecular weight distribution cannot be objectively determined. Therefore the broadest reasonable interpretation of this claim is interpreted as including the process described by Ruckel. Regarding claim 16, Table I on p. 2234 of Ruckel et al. indicates that some of the resulting polymers had the required molecular weight, when interpreted as number average molecular weight.
Regarding claim 2, Ruckel et al. further describes a process of methanolysis of the resulting polymers using HCl as a catalyst. (p. 2235 right column third paragraph, also table II) One of the degraded components of this reaction is the original monomer 1,6-anhydro-2,3,4-tri-O-methyl-beta-D-glucopyranose, which is the original monomer. Therefore this methanolysis step literally infringes a step of recycling the polymer back to the original monomer using a catalyst.
Claim Rejections - 35 USC § 103
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, 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.
Claims 1, 2, 4-12, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ruckel et al. as applied to the same claims above, and further in view of Zachoval et al. (Reference included with PTO-892)
The disclosure of Ruckel et al. is discussed above. While Ruckel is interpreted as anticipating the present claims, even assuming for the sake of argument that the claims are interpreted in such a way as to require that the reaction include a separate initiator that is not the same Lewis acid as the catalyst, the claimed invention would still be obvious further in view of Zachoval et al.
Zachoval et al. discloses a study of the polymerization of the same monomer 1,6-andydro-tri-O-methyl-beta-D-glucopyranosied and makes reference to Ruckel’s publication. (p. 1165 left column first and second paragraphs) Zachoval et al. further discloses a variation of this reaction using an additional carbonium ion initiator, for example tetracetyl glucosyl bromide. (p. 1165 right column second paragraph, p. 1166 table 1, p. 1168 table II)
It would have been obvious to one of ordinary skill in the art at the time of the invention to perform the polymerization described by Ruckel et al. with a catalyst including an additional initiator such as TAcGBr. One of ordinary skill in the art would have seen this to be obvious because Zachoval suggests using such an initiator in a similar polymerization.
Therefore the invention taken as a whole is prima facie obvious.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA OLSON whose telephone number is (571)272-9051. The examiner can normally be reached M-F 6am-3:00pm.
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/ANDREA OLSON/Primary Examiner, Art Unit 1693 6/3/2026
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