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 .
Claim Status
Claims 45, 47-52 and 54-92 are pending. Claims 49, 54-88, and 90-92 are withdrawn. Claims 45, 47-48, 50-52, and 89 are under examination. Claims 45, 47-48, 50-52, and 89 are rejected.
Most Recent Filing Receipt, filed 09/05/2024
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Election/Restrictions
Claims 49, 54-88, and 90-92 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed
on 11/14/2024.
Species Election
Applicant elected the “erythriol” (interpreted as erythritol) based compound (4-BHB) without traverse in the reply filed on 11/14/2024.
The erythritol based compound (4-BHB) is seen immediately below.
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A is
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, x is -C(H)(OH)- and y is 4. Erythritol is a sugar alcohol.
Claims 45, 47-48, 50-52 and 89 read on the elected specie.
The scope of species being examined has been widened to encompass the compounds in the below 103 rejections.
Response to Amendments/Arguments
Applicant's amendments and arguments filed 12/31/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified form is herein withdrawn.
Noncompliant Amendments
The amendments to the claims are not in compliance with MPEP 714 II. C. (B), 37 CFR 1.121 (c)(2). The claims were at least not compliant due to the lack of the brackets/strikethroughs and/or underlining.
A non-limiting example of the non-compliant amendments being claim 45.
Current claim 45 last five lines reads as follows.
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Claim 45 last three lines of the previously entered claim set filed 07/01/2025 reads as follows.
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In the interest of stakeholder interaction and compact prosecution, the Examiner is not sending a PTO34 Notice of non-complaint claim amendment at this time but rather alerting Applicant to the issue. If future amendments are found noncompliant, a PTO-324 will be mailed.
Withdrawn Rejections
The 112(b) rejection of claim 52 in the non-final mailed 10/01/2025 is withdrawn. The claim amendments have overcome the rejection. Note: The claim amendments are not in compliance with MPEP 714 II. C. (B), 37 CFR 1.121 (c)(2).
The below modified 103(a) and nonstatutory double patenting rejections
constitute the complete set of rejections and/or objections presently being applied to the instant application.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
Clarke does disclose “that esters of (R)-3-hydroxybutyrate, especially partial esters are less unpalatable than other ketone body ester and assist in providing adequate delivery of the desired ketone bodies to the subject at a sufficiently high
level to provide the desired effects (paragraph 32). Herein, Clarke et al. is pointing to esters of (R)-3-hydroxybutyrate with a preference to partial esters. This citation of Clarke et al. should not be interpreted as a teaching to only utilize partial esters that are not in the beta position.
To say that the entirety of Clarke et al. teaches away from the use of non-partial esters, wherein any multiple esters are not in the beta position is restrictive at best. In fact, Clarke et al. teach “Any ketone body or ketone body ester may be employed in the invention…” (par. 12).
Moreover, as argued in the original rejection page 8 the bitterness of a compound is not predictable (Clarke et al. par. 101) Thus, Clarke et al. is not ruling out specific esters without experimentation.
As argued on page 8 of the original rejection mailed 10/01/2025, “due to the bitterness being unpredictable, the ordinary artisan would have experimented with esterifying the alcohols encompassed by the teachings of Clarke et al. with (R)-3-hydroxybutyrate or any hydroxybutyrate to determine the flavour/bitterness”. Additionally, even if compounds are bitter, Clarke et al. teach construction of an organoleptically acceptable compositions (par. 33). See page 7 of the original rejection mailed 10/01/2025.
From the above, yes Clarke et al. teach preferences of partial esters and multiple esters not in the Beta position. However, the teachings of Clark et al. in its entirety are not limited to the preparation and use of those preferable esters. Thus, hindsight is not being utilized to arrive at the current esters/ketone bodies.
Concerning the argument that having more acetoacetate/BHB per polyol are
favorable for applications wherein a high ratio of acetoacetate/BHB per polyol are desired, appears to be self-evident.
Concerning the double patenting rejection being held in abeyance, this is not interpreted as an argument rebutting the rejection of record.
For the reasons stated above the rejections are modified as set forth below.
Modified Rejections
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.
The factual inquiries for establishing a background for determining obviousness
under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
prior art against the later invention.
Claim(s) 45, 48, 50-52, and 89 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clarke et al. (USPGPub 2015/0164855, Published 06-2015). The modifications to this rejection were necessitated by amendment.
Scope of the Prior Art
Clarke et al. teach examples of the ketone body esters immediately below (Figure 10). Note: in the immediately below structures current variable A is derived from glycerol and x is -C(H)(OH)-.
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Clarke et al. teach “Any ketone body or ketone body ester may be employed in the invention…” (par. 12).
Clarke et al. teach esters of glycerol and (R)-3-hydroxybutyrate (par. 12). Clarke et al. goes on to teach xylitol to be an equivalent polyol to glycerol (par. 12). The equivalence being, the polyols can be utilized in esters of (R)-3-hydroxybuterate.
Xylitol has the following structure.
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Clarke et al. teach the process of esterifying different alcohols with differing degrees of esterification to establish flavours (par. 87-101). Clarke et al. teach the lack of bitterness was not predictable based in a consideration of the large number of variables….” (par. 101). Clarke et al. teach the construction of an organoleptically acceptable composition as follows, “By selecting a certain combination of components
including a ketone body containing a hydroxybutyrate ester and a flavouring, especially a bitter flavouring, an organoleptically acceptable composition which allows ketone to pass into the blood plasma at a desirable level may be obtained and which provide improved muscle power output” (par. 33).
Additionally, Clarke et al. teach the use of sugars when preparing the
compositions (Clarke et al., claim 11).
Ascertaining the Difference
The tri-ester and monoester compounds of the prior art differs from the claimed
compound, in that the triester only has the potential to have three hydroxyl groups and
not the five as xylitol nor the immediately following compound xylitol penta-(R)-3-hydroxybuterate of claim 52.
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Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the xylitol in place of the glycerol to arrive at the xylitol penta-(R)-3-hydroxybuterate as instantly claimed. The ordinary artisan would have done so with an expectation of success because Clarke et
al. teach xylitol to be an equivalent polyol to glycerol.
Additionally, due to the bitterness being unpredictable, the ordinary artisan would have experimented with esterifying the alcohols encompassed by the teachings of Clarke et al. with (R)-3-hydroxybutyrate or any hydroxybutyrate to determine the flavour/bitterness. Upon, fully esterifying xylitol with (R)-3-hydroxybuterate to determine the flavourness/bitterness the ordinary artisan would have arrived at the current invention and the compound xylitol penta-(R)-3-hydroxybuterate of claim 52.
Additionally, even if the compounds prepared by the ordinary were bitter, the
ordinary artisan would have added flavours to the compound to prepare an organoleptically acceptable composition.
Claim(s) 45, 47-48, 50-52, and 89 and the elected specie is/are rejected under 35 U.S.C. 103 as being unpatentable over Clarke et al. (USPGPub 2015/0164855, Published 06-2015) and Ragnat et al. (Erythritol as sweetener-wherefrom and whereto, Applied Microbiology and Biotechnology, 102, pp. 587-595, Published 2018). The modifications to this rejection were necessitated by amendment.
Scope of the Prior Art
The teachings of Clarke et al. are in the above 103 rejection and are incorporated
by reference. Additional teachings are as follows.
Clarke et al. teach xylose to be an equivalent polyol to xylose, the unoxidized xylitol, (par. 12). The equivalence being, that the unoxidized and oxidized versions of a polyol can be utilized in the production of esters of (R)-3-hydroxybuterate. See also ribitol and ribose Clarke et al. (par. 12).
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Clarke et al. goes on to teach erythrose to be an equivalent polyol to the xylose and xylitol (par. 12).
Ascertaining the Difference
Clarke et al. does not teach erythritol.
Secondary Reference
Ragnat et al. teach erythritol, the unoxidized version of erythrose, to be in foods, cosmetics and pharmaceuticals (p. 588 right column).
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Obviousness
It would have been prima facie obvious for an ordinary artisan before the
effective filing date of the claimed invention to have utilized the erythritol in place of the erythrose to arrive at the elected invention erythritol tetra-(R)-3-hydroxybuterate. Note: current variable y in erythritol Tetra-(R)-3-hydroxybuterate is 4 which is equal to the number of hydroxyl groups of the initial organic polyol erythritol.
The ordinary artisan would have done so because Clarke et al. teach erythrose to be an equivalent polyol to the xylose and xylitol and further because Clarke et al. teach unoxidized and oxidized versions of a polyol can be utilized in esters of (R)-3-hydroxybuterate. See ribitol/ribose and xylitol/xylose (par. 12). The ordinary artisan would have chosen erythritol due to the alcohol being in foods, cosmetics and
pharmaceuticals (p. 588 right column).
Moreover, the ordinary artisan would have made the currently elected compound to determine the flavour/bitterness. Upon preparation, the elected compound would have been ascertained by the ordinary artisan. Additionally, the ordinary artisan would have made the elected compound and would have added flavours (e.g. sugars) to prepare an organoleptically acceptable composition.
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 45, 47-48, 50-52, and 89 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 65 of copending Application No. 18/948,612 (Mayerhoeffer et al.). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct
from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, Mayerhoeffer et al. claims a process to prepare the immediately below compounds.
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Upon practicing the invention of Mayerhoeffer et al. the ordinary artisan would
have arrived at the current invention.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
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/B.G.D/Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625