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 .
CONTINUING DATA
This application is a 371 of PCT/EP2022/078401 10/12/2022
FOREIGN APPLICATIONS
FRANCE 2110845 10/13/2021
Claims 1-14 are pending.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/700,526 (reference application).
Reference claims 2-3 recite the same limitations as current claims 2-3.
Reference claim 4 differs from current claim 4 because the basic agent can be sodium carbonate or sodium hydrogen carbonate, while current claim 4 requires sodium carbonate.
Reference claim 9 recites the same limitations as current claim 5.
Reference claim 1 recites that the pre-neutralization step obtains a reaction medium for which 5% dispersion of the reaction medium in water has a pH of between 3.5 and 5.5, and the neutralization step rests in a pH of 5.5-7.5. Reference claim 5 recites that the pre-neutralization is carried out with NaOH or KOH. The combination of reference claims 1 and 5 includes the limitations of current claim 6.
Reference claim 7 recites the same limitations as current claim 7.
Reference claim 8 recites the same limitations as current claim 8.
Reference claim 10 recites the same limitations as current claim 9.
Reference claim 11 recites the same limitations as current claim 10.
Reference claim 12 recites the same limitations as current claim 11.
Reference claim 13 recites the same limitations as current claim 12.
Reference claim 14 recites the same limitations as current claim 13.
Reference claim 15 recites the same limitations as current claim 14.
The reference claims anticipate the current claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 and 7-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/700,569 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a method which differs from the current claim 1 because it requires neutralization before removing the reducing sugar, while the current claims require removing the reducing sugar and then neutralizing. See claim 1. Current claim 1 does not include the pre-neutralizing step.
Reference claims 2-3 recite the same limitations as current claims 2-3.
Reference claim 4 differs from current claim 4 because the basic agent can be sodium carbonate or sodium hydrogen carbonate, while current claim 4 requires sodium carbonate.
Reference claim 8 recites that the aqueous solution of Ab comprises 10-40% of Ab, which encompasses the limitation of current claim 5.
Reference claim 6 recites the same limitations as current claim 7.
Reference claim 7 recites the same limitations as current claim 8.
Reference claim 9 recites the same limitations as current claim 9.
Reference claims 10-11 recite the same limitations as current claims 10-11.
Reference claims 12-14 recite the same limitations as current claims 12-14.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to modify the reference application by reversing the order of steps b) and c). MPEP 2144 states that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. The examiner did not find evidence of unexpected results regarding the order of steps.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Liu (JP S 47-24532, machine translation) is representative of the closest prior art. Liu teaches methods which differ from the claimed method because they do not include removal of reducing sugar, they include removal of R-OH which cause the amount of R-OH in the product to be negligible, and they do not result in a color of less than or equal to 1.5 VCS. Example 6 results in a product which contains reducing sugars and only 0.8 % of R-OH. The color is yellowish-brown, which corresponds to a color greater than 1.5 VCS (1.0 VCS corresponding to white, 1.5-2.0 VCS slightly yellowish, 3.0 to 5.0 yellow/amber, and above 5.0 deep yellow to brown). Liu does not suggest omitting the step of removing R-OH or how that step impacts color.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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, Scarlett Goon can be reached at 571-270-5241. 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.
/LAYLA D BERRY/Primary Examiner, Art Unit 1693
Prosecution Insights