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 .
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.
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Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of U.S. Patent No. 11,987,852. Although the claims at issue are not identical, they are not patentably distinct from each other because the terminology of the instant claims is fully encompassed in the narrower claims of patent ‘852, as detailed in the following claim-by-claim comparison:
1. A method for crystallizing a compound sugar solution of xylose and sucrose (‘852, claim 1, “Abstract”), comprising:
(a) evaporating a mixed solution containing sucrose and xylose to obtain an evaporated mixed solution (‘852, claim 1, clauses (a) and (b));
b) adjusting a temperature to a range of 70° C.-75° C., adding an organic solvent to the evaporated mixed solution, adding sucrose seed crystals, and continuing stirring to obtain a solution, wherein a mass of the sucrose seed crystals accounts for 0.5%-2% of a mass of the sucrose, and a particle diameter of the sucrose seed crystals is 60 mesh or 80 mesh (‘852, claim 1, clause (c));
(c) when seed crystals grow in the solution, dropping the temperature to a range of 40° C.-60° C. at a rate of 10° C./h to obtain the compound sugar solution (‘852, claim 1, clause (d)); and
(d) centrifuging the compound sugar solution, and drying a centrifuged solid to obtain a finished product of compound sugar crystals of the xylose and the sucrose (‘852, claim 1, clause (e)).
2. The method of claim 1, wherein the evaporating a mixed solution containing sucrose and xylose to obtain an evaporated mixed solution in operation (a) comprises:
evaporating the mixed solution containing the sucrose and the xylose under a pressure condition of 50 mbar-200 mbar controlled by a vacuum evaporation device (‘852, claim 1, clause (b)); and
stopping evaporation to obtain the evaporated mixed solution until a Brix value of the mixed solution reaches a range of 78 Brix-81 Brix (‘852, claim 7, “introducing” clause).
3. The method of claim 1, wherein a volume ratio of the evaporated mixed solution to the organic solvent in operation (b) is in a range of 1:1-3:1 (‘852, claim 3).
4. The method of claim 3, wherein the organic solvent is food-grade isopropanol solution or ethanol solution (‘852, claim 1, part (c)).
5. The method of claim 1, wherein a rate of adding the organic solvent in operation (b) is 1-2 drops/s (‘852, claim 4).
6. The method of claim 1, wherein a time for the continuing stirring in the operation (b) is in a range of 1 h-4 h (‘852, claim 5).
7. The method of claim 1, wherein a mass percentage of the xylose in the finished product of the compound sugar crystals in operation (d) is in a range of 0.1%-5% (‘852, claim 6).
8. The method of claim 1, wherein the mixed solution containing the sucrose and the xylose is obtained before operation (a), comprising: weighing sucrose crystals and xylose crystals, mixing weighted sucrose crystals and weighted xylose crystals to obtain a mixture consisting of the sucrose crystals and the xylose crystals, adding deionized water to the mixture consisting of the sucrose crystals and the xylose crystals, stirring and dissolving at a temperature in a range of 75° C.-80° C. to obtain the mixed solution containing the sucrose and the xylose (‘852, claim 1, part (a) and claim 7, “weighing” clause).
9. The method of claim 1, wherein operation (c) comprises: dropping the temperature to a range of 40° C.-60° C. at a rate of 10° C./h, and then stirring for 6 h to obtain the compound sugar solution (‘852, claim 7, clause beginning “when the small crystal seeds grow”).
10. The method of claim 1, wherein a temperature for drying the centrifuged solid in operation (d) is in a range of 40° C.-60° C (‘852, claim 1, part (e)).
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 1, in part b) it is unclear whether “obtain a solution” concerns the same or another solution, than the solution recited as “the evaporated mixed solution”;
in part c) “the solution” lacks antecedent basis as it is unclear which of the solutions recited in part b) of the claim is being referred to, it is unclear whether “when seed crystals grow” refers back to the “mass of the sucrose seed crystals” that were recited in part b) of the claim, and “the compound sugar solution” also lacks antecedent basis (the same solution in which the seed crystals grow?);
in part c) the recitation “when seed crystals grow…” renders parts c) and d) as being indefinite, since it is unclear whether growth of the seed crystals, and subsequent obtaining of sugar solution, followed by centrifuging and drying are positively recitations which are required limitations; and
in part d) it is unclear whether “drying a centrifuged solid” refers back to the preceding recitation of “centrifuging” .
In claim 2, “stopping evaporation…until a Brix value…reaches” is confusing or non-idiomatic, (amending the phrase to read “continuing…until” is suggested).
In claim 4, absence of the term “a” preceding “food-grade…solution” makes the recitation ambiguous as to whether plural solutions are excluded, and whether only a single solution is being claimed.
In claim 8, it is unclear whether “mixing weighted sucrose crystals and weighted xylose crystals” refers to the same crystals which are recited in previous and subsequent clauses regarding weighing and obtaining a mixture of sucrose and xylose crystals; and
in the “stirring and dissolving” clause, it is unclear what materials are being stirred and dissolved (the sucrose and xylose crystals?).
Allowable Subject Matter
Claims 1-10 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action.
Independent claim 1 would distinguish and be non-obvious over all of the prior art in view of recitation of “A method for crystallizing a compound sugar solution of xylose and sucrose, comprising:
(a) evaporating a mixed solution containing sucrose and xylose to obtain an evaporated mixed solution;
b) adjusting a temperature to a range of 70° C.-75° C., adding an organic solvent to the evaporated mixed solution, adding sucrose seed crystals, and continuing stirring to obtain a solution, wherein a mass of the sucrose seed crystals accounts for 0.5%-2% of a mass of the sucrose, and a particle diameter of the sucrose seed crystals is 60 mesh or 80 mesh;
(c) when seed crystals grow in the solution, dropping the temperature to a range of 40° C.-60° C. at a rate of 10° C./h to obtain the compound sugar solution; and
(d) centrifuging the compound sugar solution, and drying a centrifuged solid to obtain a finished product of compound sugar crystals of the xylose and the sucrose, all taught or suggested by the prior art as follows, in view of the recited order of steps comprising:
recitation in part b) of the claim of:
adjusting a temperature to a range of 70° C.-75° C., adding an organic solvent to the evaporated mixed solution, and adding seed crystals to obtain a solution as in step b) of claim 1, followed, by recited in part c) of the claim of “then when such seed crystals grow in the solution, dropping the temperature to a range of 40-60 degrees C at a rate of 10 degrees C/hour.
The closest prior art constitutes Oertling PGPUBS Document US 20180206529 and the Escapenet Machine translations of Patent publications CN-1563424 and CN-12568422, which each suggest compound co-crystals of sugar solutions of xylose and sucrose, Such closest prior art cumulatively and generally suggests the claimed steps of evaporation to obtain mixed solution, temperature adjusting, adding organic solvent and sucrose seed crystals while stirring, crystallizing with gradual dropping of temperature, all followed by centrifuging and drying of centrifuged solid to obtain finished product of compound sugar crystals comprising xylose and sucrose.
However, none of Oertling, nor CN publications ‘424 or ‘422 suggest adding of organic solvent together with sucrose seed crystals with temperature adjustment and stirring to obtain a solution and then, when the seed crystals grow in the solution, dropping the temperature to a range of 40-60 degrees C at a rapid rate of 10 degrees C per hour. Oertling teaches away from the claimed order of steps by teaching addition of solvent after the crystallization accompanied by dropping of temperature.
Additional prior art, cited in the accompanying Notice of References cited, includes patents 1,826,441, 3,424,221 and 3,928,062, and US PGPUBS Documents 2004/0231662, 2006/0193958, 2011/0200710, 2016/0037812 and 2016/0206529.
Such additional prior art all concerns formation of sugar solutions having combined crystals of different sugar molecules, alone, or with added salt(s) and generally teach steps of evaporation, forming of a solution, adding solvent and seed crystals, crystallization that is generally conducted at rates slower than instantly claimed, centrifuging and drying.
However such prior art does not provide motivation to produce a sugar solution with compound sugar crystals of a natural sugar molecule such as glucose and/or sucrose with an artificial sugar such as xylitol or xylose, in which organic solvent together with sucrose or other sugar molecule seed crystals, together with temperature adjustment and stirring during and after adding to obtain a solution and then, when the seed crystals grow in the solution, dropping the temperature to a range of 40-60 degrees C at a rapid rate.
Dependent claims 2-10 would distinguish and be non-obvious in view of being respectively dependent from independent claim 1 which is deemed as distinguished and non-obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner Joseph Drodge at his direct government formal facsimile phone number telephone number of 571-272-1140. The examiner can normally be reached on Monday-Friday from approximately 8:00 AM to 1:00PM and 2:30 PM to 5:30 PM.
If attempts to reach the examiner are unsuccessful, the examiner' s supervisor, Benjamin Lebron, of Technology Center Unit 1773, can reached at 571-272-0475.
The telephone number, for official, formal communications, for the examining group where this application is assigned is 571-273-8300.
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JWD
05/29/2026
/JOSEPH W DRODGE/Primary Examiner, Art Unit 1773
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