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 .
Status of Claims
Claims 1 – 17 are pending.
Claims 1 – 11 are rejected.
Claims 12 – 17 are objected
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 365(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/348,509, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claim 13 references a machine learning model in lines 3 – 4. However, there is no support for a machine learning model in the prior application. Accordingly, claim 13 is not entitled to the benefit of the prior application.
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 – 11 of the instant application, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No.12/006,281 (‘281). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the instantly claimed invention a method for co-producing a xylitol and a caramel pigment, comprising: step 1: transporting a raw material of a xylose mother liquid in a raw material tank to a filter through a pipeline for filtering impurities to obtain a filtered raw material of the xylose mother liquid, and transporting the filtered raw material of the xylose mother liquid to a nanofiltration membrane device for a decolorizing process to obtain a decolorized xylose mother liquid; step 2: transporting the decolorized xylose mother liquid to a first ion exchange device for a desalting process to obtain an ion exchange liquid; and step 3: transporting the ion exchange liquid to a chromatographic separation device for a chromatographic separation process, and obtaining an extracted liquid and a raffinate liquid after the chromatographic separation process, wherein a xylose component content in the extracted liquid is higher than a xylose component content in the raffinate liquid; performing a refined hydrogenation process on the extracted liquid through a refined hydrogenation assembly to obtain a crystal xylitol with a purity over 99%, and performing a browning reaction process on the raffinate liquid through a browning reaction assembly to obtain the caramel pigment.
Claim 1 of ‘281 discloses a method for co-producing a xylitol and a caramel pigment by utilizing a xylose mother liquid, comprising following steps: step one, transporting a raw material of the xylose mother liquid in a raw material tank to a filter via a pipeline for filtering impurities to obtain a filtered raw material of the xylose mother liquid, and transporting the filtered raw material of the xylose mother liquid to a nanofiltration membrane device for a decolorizing process to obtained a decolorized xylose mother liquid; step two, transporting the decolorized xylose mother liquid to a first ion exchange device for a desalting process to obtain an ion exchange liquid; step three, transporting the ion exchange liquid to a chromatographic separation device for a chromatographic separation process and obtaining an extracted liquid and a raffinate liquid after the chromatographic separation process, wherein a xylose component content of the extracted liquid is higher than a xylose component content of the raffinate liquid, performing a refined hydrogenation process on the extracted liquid by a refined hydrogenation assembly to obtain a crystal xylitol with a purity over 99%, and performing a browning reaction process on the raffinate liquid by a browning reaction assembly to obtain the caramel pigment. Additionally, claim 1 of ‘281 includes additional processing steps and conditions for steps one, two and three.
Some of the additional steps of claim 1 of ‘281 are discloses in dependent claims 2 – 11 of the instantly claimed invention. However, they are not identical to ‘281 such that they amount of statutory doubling patenting.
The difference between ‘281 and the instantly claimed invention is that it does not teach the invention with particularity so as to amount to statutory double patenting as being the “same invention”. The term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). To be an identical invention (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990)).
However, based on the above, the recited claims of the instant application and those of ‘281 are not mutually exclusive and thus not patentably distinct since the process of the instant invention encompasses the process of ‘281.
Allowable Subject Matter
Claims 12 – 17 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.
The following is a statement of reasons for the indication of allowable subject matter: CN109503676A (Zhejiang Huakang Pharmaceutical Co Ltd.) ("Zhejiang") is the closest prior art. Zhejiang discloses a kind of method that xylitol and mixing molasses are prepared from xylose mother liquid, include: pretreatment adding calcium hydroxide solution in xylose mother liquid, pH to 8.5-9.0 is passed through carbon dioxide, pH to 6.6--7.0 handles removal part calcium ion through cation exchange resin; Chromatographic isolation: extracting solution and raffinate are obtained ; Decolorization filtering; ion-exchange purification; Evaporation itis 75-85% that the purified extracting solution of ion-exchange, which is concentrated in vacuo to amount of dry matter percent concentration, and raffinate is concentrated in vacuo to amount of dry matter percent concentration 55-75%, obtains mixing molasses finished product; Crystallization; Centrifugation, drying; Dissolution plus hydrogen; Purification: xylitol crystal is obtained. Xylose mother liquid of the present invention is pre- processed through calcian hydroxide and carbon dioxide, and simple and easy, effect is obvious, removes impurity reduces the viscosity of xylose mother liquid, improves the rate of filtration. The various monosaccharide components of xylose mother hand are all utilized, and promote the added value of xylose mother liquid.
However, the pretreatment process of Zhejiang requires the uses of calcium hydroxide and carbon dioxide which forms colloidal substances which have to be removed by diatomite aided filter; and then passed through a cation exchange resin to remove calcium ion. The pretreatment process of the instantly claimed invention does not include the use of calcium hydroxide and carbon dioxide. The pretreatment process of the instantly claimed invention first transports the raw xylose mother liquid to a filter for filtering impurities and then to a nanofiltration membrane for discolorizing.
Specifically, Zhejiang does not disclose transporting a raw material of xylose mother liquid through a nanofiltration membrane device for decolorization and does not disclose browning of a raffinate liquid obtained from chromatographic separation to produce the caramel pigment; under the specific process sequences and conditions. Wherein the decolorized xylose mother liquid was transported to a first ion exchange device for a desalting process to obtain an ion exchange liquid; and the ion exchange liquid was subjected to chromatographic separation device for obtaining an extraction liquid and the raffinate liquid. Additionally, Zhejiang does not include the use of a browning reaction assembly that includes a detection device configured to detect a sample of raffinate liquid obtained by the chromatographic separation device before preparing the caramel pigment to obtain main ingredient content data of the raffinate liquid.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692