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 the Claims
Claims 1-20 are pending. Claims 10-18 are withdrawn. Claims 1-9 and 19-20 are rejected.
Information Disclosure Statements
The Information Disclosure Statements (IDS’s) submitted on 7/18/2024, 7/23/2024, and 8/31/2026 were considered by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9 and 19-20) in the reply filed on 8/17/2026 is acknowledged.
Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 is 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.
Claim 7 recites the limitation "the stream comprising a racemic mixture of L-lactide and D-lactide" in line 2. There is insufficient antecedent basis for this limitation in the claim. Examiner recommends changing dependency of claim 7 from claim 1 to claim 2. Examiner is examining claim 7 as though it depends from claim 2 in the interest of compact prosecution.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 8 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Benson et al. (WO2010105143-disclosed on 7/18/2024 IDS).
Regarding instant claims 1 and 8, Benson et al. teach a process for producing a polymerizable lactide stream which includes (see claim 1):
forming a low molecular weight poly(lactic acid) [embraces “lactic acid oligomers”] (may be done batch-wise, see p. 26, line 4), which is then depolymerized;
the formation of a crude lactide that includes meso-lactide, S,S-lactide [L-lactide] and R,R lactide [D-lactide];
separating meso-lactide from the crude lactide such that a meso-lactide-enriched stream is formed in which the mole fraction of meso-lactide is at least 0.8 [embraces at least 50 wt. % meso] and a purified S,S- and R,R-lactide stream is formed;
recycling the meso-lactide stream and converting it to a mixture of S,S-, meso- and R,R-lactide [embraces instant product stream].
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) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benson et al. (WO2010105143-disclosed on 7/18/2024 IDS),
**The 102 rejection supra over Benson et al. (WO2010105143) over claims 1 and 8 are incorporated herein by reference.
Regarding instant claim 5, Benson et al. additionally teach the inclusion of lactic acid oligomers having a degree of polymerization of up to about 6 (see p. 14, lines 6-7). Benson et al. fails to disclose polymerization determined by titration however one of ordinary skill in the art would have arrived at this method of determination as routine experimentation. Additionally, “up to about 6” overlaps with the instant degree of polymerization of from 2 to 80. “In the case where the claimed ranges ’overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP 2144.05(I).
Regarding instant claim 6, Benson et al. teach the following in claim 15, wherein the mole fractions of S,S lactide plus R,R lactide overlap with the instant percentages of 40 to 90% by weight (i.e. mole fraction of S,S lactide may be 0.50 when R,R lactide is 0.05, which corresponds to 55%) :
PNG
media_image1.png
131
546
media_image1.png
Greyscale
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP 2144.05(I).
Claim(s) 2, 3, 4, 7, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benson et al. (WO2010105143-disclosed on 7/18/2024 IDS), and further in view of Benson et al. (US20140031566-disclosed on 7/23/2024 IDS).
**The 102 rejection supra over Benson et al. (WO2010105143) over claims 1 and 8 are incorporated herein by reference.
Benson et al. (WO2010105143) fail to disclose a process further comprising separating the product stream in one or more steps to form a stream comprising a racemic mixture of L-lactide and D-lactide and a second stream comprising meso-lactide.
Benson et al. (US20140031566) teach a process for recovering lactic acid from a starting lactide composition (see claim 1), which includes a melt crystallization step (see claim 19). The process further comprises separating racemized lactide mixture (with S,S, R,R, and meso-lactide) to obtain a product enriched in S,S-lactide and R,R-lactide, which has minimal impurities (see claims 16-18). Benson et al. (US20140031566) additionally teach that it is usually necessary to separate meso-lactide from the rest of the lactide stream to control polymerization, crystallization, and impurities (see para. [0010-0011]). Also, “The separated meso-lactide stream contains lactic acid equivalents, which are valuable if they can be recovered” (see para. [0012]).
Regarding instant claims 2-3 and 19, it would have been obvious to a skilled artisan to arrive at two streams by (melt) crystallization, one with a racemic mixture of L-lactide and D-lactide and a second stream comprising meso-lactide prior to the effective filing date of the claimed invention. While the prior art does not specifically teach a racemic mixture, it teaches a product stream enriched in S,S-lactide and R,R-lactide, which has minimal impurities. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. See MPEP 2144.05(IIA). The difference between a racemic mixture vs. a stream enriched with both enantiomers is a result of routine experimentation to one of skill in the art. Regarding instant claim 4, a skilled artisan would have been motivated to recycle the meso-lactide stream to the step of separating the crude lactide stream with a reasonable expectation of success. The prior art described the value of the meso-lactide stream in the explanation supra. Regarding instant claim 7, the prior art teaches minimal impurities where a skilled artisan would expect that low concentrations of instantly claimed free acid with a reasonable expectation of success.
Claim(s) 9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benson et al. (WO2010105143-disclosed on 7/18/2024 IDS), in view of Hagen et al. (WO2010020370).
**The 102 rejection supra over Benson et al. (WO2010105143) over claims 1 and 8 are incorporated herein by reference.
Benson et al. (WO2010105143) do not disclose the storage of meso-lactide in an inert atmosphere (N2) at a temperature from 50 to 80C for a predetermined amount of time.
Hagan et al. disclose a process for storage of compounds in the liquid state with the following structure:
PNG
media_image2.png
106
491
media_image2.png
Greyscale
(which embraces the instant meso-lactide) in an inert environment, such as nitrogen, at a temperature of 40 to 150 C (see claims 1-5). These storage conditions are used to avoid degradation reactions (see English translation, p. 1).
Regarding instant claims 9 and 20, it would have been obvious to one of skill in the art to store the meso-lactide in an inert atmosphere, such as N2, for a predetermined amount of time at 50 to 80C. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. See MPEP 2144.05(IIA). A skilled artisan would have been motivated to store meso-lactide in such conditions to avoid degradation and the formation of unwanted impurities. Additionally, regarding the “30 minutes to 12 hours” of instant claim 20, this is not a required limitation because of the linker “or” within the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 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, Amy Clark can be reached at 571-272-1310. 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.
/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
Prosecution Insights