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 .
This is in response to the Amendment dated December 17, 2025. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 12-13 (method) and 14-15 (product) drawn to an invention nonelected without traverse in the reply filed on August 15, 2025.
Claim Rejections - 35 USC § 112
Claims 5-8 have been 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.
The rejection of claims 5-8 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
Claim(s) 1-4 and 9-11 stand rejected under 35 U.S.C. 103 as being unpatentable over St. John (US Patent No. 4,341,608) in view of Liu et al. (“Efficient Electrochemical Production of Glucaric Acid and H2 via Glucose Electrolysis,” Nature Communications (2020 Jan 14), Vol. 11, No. 1, pp. 1-11).
Regarding claim 1, St. John teaches a method of producing glucaric acid by electrochemical treatment, the method comprising:
(a) providing a reactor (= electrolytic cell 5) including a first electrode of a first electrode-containing region (= anode zone 7 with anode 13) and a second electrode of a second electrode-containing region (= cathode zone 9 with cathode 11) separated by an electrolyte membrane (= the anode and cathode zones being separated by ion porous separator 12) [col. 2, lines 60-63], adding a glucose (= glucose, a preferred monosaccharide) [col. 4, line 18] mixture to any one region of the first or second electrode-containing regions of the reactor (= oxidizable biomass product selected from the group consisting of monosaccharides, lignins and mixtures thereof are added to anode zone 7 by biomass product feed 18) [col. 3, lines 9-12], and adding an electrolyte solution to both the first (= fresh electrolyte is then recycled back to anode zone 7 through conduits 35 and 36 with provision for electrolyte makeup through conduit 33) [col. 3, lines 29-31] and second electrode-containing regions (= electrolyte makeup for cathode zone 9 is provided by electrolyte makeup conduit 39) [col. 3, lines 43-45]; and
(b) oxidizing the glucose mixture (= the oxidation of glucose) [col. 5, line 24] by applying a voltage between the first electrode and the second electrode in the reactor subjected to step
(a) [= an electrical potential is maintained across an anode in an anode zone and a cathode in a
cathode zone of an electrolytic cell] (col. 2, lines 1-3),
wherein the first or second electrode in the one region to which the glucose mixture is added includes a catalyst containing tantalum (= many suitable metallic electrode materials known to the art may be used in the process of this invention such as platinized platinum, platinum-tungsten, platinum-tantalum and well known Raney alloys) [col. 4, lines 50-53].
The method of St. John differs from the instant invention because St. John does not disclose producing glucaric acid.
St. John teaches that:
Another feature of this invention is the production of useful products by the oxidation of oxidizable biomass products, such as, for example, the production of acids, such as gluconic acid from the oxidation of glucose and other oxidized products. These products may be isolated and marketed as useful products (col. 5, lines 21-26).
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because St. John teaches the electrolysis process conditions that can be used in order to make glucaric acid.
Similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
Furthermore, Liu teaches the electrochemical oxidation of glucose to glucaric acid (GRA)
[page 4, Fig. 3]. The other oxidized products other than gluconic acid (GNA) produced from the
electrochemical oxidation of glucose is glucaric acid (GRA).
Regarding claim 2, the method of St. John differs from the instant invention because St.
John does not disclose wherein the glucose mixture in step (a) is an aqueous solution comprising D-glucose.
St. John teaches that glucose, a preferred monosaccharide, may be readily derived from biomasses (col. 4, lines 18-19).
Liu teaches that glucose, one of the most abundant biomass-based compounds, can be converted into various commodity chemicals like 5-hydroxymethylfurfural, sorbitol, gluconic acid (GNA), and glucaric acid (GRA)2,7,8 (page 2, left column, lines 3-6).
PNG
media_image1.png
142
175
media_image1.png
Greyscale
(page 4, Fig. 3).
The invention as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because glucose having the formula:
PNG
media_image1.png
142
175
media_image1.png
Greyscale
is a monosaccharide derived from biomass.
Regarding claim 3, St. John teaches wherein a molar concentration of glucose in the
glucose mixture in step (a) is in a range of 0.05 M to 0.1 M (= suitable concentration of oxidizable biomass product monosaccharides in the electrolyte of the anode zone is about 0.1 to 2.0 Molar) [col. 4, lines 24-26].
Regarding claim 4, St. John teaches wherein, in step (a), the first electrode is an anode (= anode 13) [col. 2, line 61], the second electrode is a cathode (= cathode 11) [col. 2, line 62], and the anode comprises the catalyst (= many suitable metallic electrode materials known to the art may be used in the process of this invention such as platinized platinum, platinum-tungsten, platinum-tantalum and well known Raney alloys) [col. 4, lines 50-53].
Regarding claim 9, St. John teaches wherein the voltage in step (b) is in a range of 1.2 V to 1.6 V (= this is achieved by the anode zone oxidation of oxidizable biomass product with electrical potentials of less than about 1.5 volts) [col. 4, lines 62-64].
Regarding claim 10, St. John teaches wherein step (b) is performed at a temperature in a range of 15°C to 50°C (= the electrolytic cell may be operated at ambient pressures and preferably at somewhat higher than ambient temperatures to promote the electrochemical oxidation of the organic material) [col. 4, lines 54-57].
The method of St. John differs from the instant invention because St. John does not disclose wherein step (b) is performed for 1 hour to 5 hours.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified step (b) described by St. John with wherein step (b) is performed for 1 hour to 5 hours because St. John teaches that the
electrolysis may be conducted in any manner known to the art so long as oxidizable biomass
product is oxidized in the anode zone (col. 3, lines 49-51). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP § 2144.05).
Regarding claim 11, the method of St. John differs from the instant invention because
St. John does not disclose wherein step (b) is performed for 3 hours or less.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified step (b) described by St. John with wherein step (b) is performed for 3 hours or less because St. John teaches that the
electrolysis may be conducted in any manner known to the art so long as oxidizable biomass product is oxidized in the anode zone (col. 3, lines 49-51). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP § 2144.05).
As to “a production yield of glucaric acid from glucose is 78% or more,” St. John teaches the electrolysis process conditions that can be used in order to make a production yield of glucaric acid from glucose is 78% or more.
Similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 5-8 define over the prior art of record because the prior art does not contain any
language that teaches or suggests the method of claim 4, wherein the catalyst in step (a) comprises a layered double hydroxide doped with tantalum. Therefore, a person skilled in the art would not have been motivated to adopt the above conditions, and a prima facie case of obviousness cannot be established.
Claims 5-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments filed December 17, 2025 have been fully considered but they are not persuasive. The standing prior art rejection has been maintained for the following reasons:
• Applicant states that in other words, the “platinum-tantalum” disclosed in St. John is employed only as a constituent metallic material of the electrode (cathode/anode) itself, and is not used as part of a catalytic composition that promotes the oxidation of glucose as in the instant application. See St. John, claims 40 and 41 (which further define the cathode and anode, respectively, as containing “platinum tantalum”). Accordingly, St. John fails to teach or disclose that “the first or second electrode in the one region to which the glucose mixture is added includes a catalyst containing tantalum,” as recited in claim 1.
In response, the platinum-tantalum disclosed by St. John reads on the catalyst
containing tantalum as presently claimed. Thus, the platinum-tantalum disclosed by St. John is a catalytic composition that promotes the oxidation of glucose because similar materials can reasonably be expected to have similar properties and/or functions.
Furthermore, the Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than that of Applicant’s while still supporting a conclusion of obviousness (MPEP § 2144).
• Applicant states that further, one having ordinary skill in the art would not be motivated to combine the electrode disclosed in St. John and the catalyst disclosed in Liu to arrive at the limitations of claim 1 because the cited references differ in structure, leading to different end results.
• Applicant states that these effects exceed what a person or ordinary skill in the art could reasonably predict from mere substitution of materials or straightforward design modification. Therefore, one having ordinary skill in the art would not be motivated by the teachings of St. John and Liu to disclose the limitations of claim 1.
In response, as rejected in the Examiner’s Office Action (page 5, lines 3-6) St. John already teaches the electrode as presently claimed. Thus, there is no need to combine the electrode disclosed in St. John and the catalyst disclosed in Liu.
Liu is used in the Examiner’s rejection (pages 5-6, bridging paragraph) to teach that electrochemically oxidizing glucose produces glucaric acid (page 4, Fig. 3). Where the other
oxidized products that are produced by the oxidation of glucose of St. John is glucaric acid (GRA).
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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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, Luan Van can be reached at (571) 272-8521. 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.
/EDNA WONG/Primary Examiner, Art Unit 1795