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 .
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.
Claims 17-18 are 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 term “high” in claim claims 17 and 18 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claim(s) 1, 6-8, 10-15, 20-21 is/are rejected under 35 U.S.C. 102(a) (1) as being anticipated by United States Patent Application Publication No. 2012/0276606 (OKABAYASHI).
Claim 1
OKABAYASHI provide recombinant microorganisms efficiently producing optically active 1,3-butanediol (i.e., a synonym for 1,3-butylene glycol). (R) and (S)-1,3-butanediol are produced [0023]. Given the 1,3-butanediol is also bio-based as required by the claims, the 1,3-butanediol naturally does not comprise the compounds as recited in (a)-(e) of claim 1 and the compounds of claim 15. In addition, the 1,3-butanediol would also not be perceived through taste (neutral or not bitter taste). Moreover, applicant lacks the facilities to test compounds with ultra-high performance liquid chromatography. Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Claims 6-8
In [0024], (R) or (S)-1,3-butanediol are produced [0023].
Claims 10, 11,
1,3-butanediol would naturally comprise a neutral taste and lack bitterness as the taste of a compound is inherent to the compound, especially given the 1,3-butanediol of OKABAYASHI is also bio-derived [0023].
Claim 12
1,3-butanediol can be obtained in water (i.e., a pharmaceutically acceptable carrier) [0159].
Claim 13
1,3-butanediol would naturally comprise a neutral taste and lack bitterness as the taste of a compound is inherent to the compound, especially given the 1,3-butanediol of OKABAYASHI is also bio-derived [0023].
Claim 14
1,3-Butanediol is useful as a solvent [0002]
Claim 15
1,3-butanediol would naturally not comprise the compounds as recited in claim 15, especially given the 1,3-butanediol of OKABAYASHI is also bio-derived [0023].
Claims 20 and 21
1,3-butanediol can be obtained/produced in water (i.e., a liquid) [0159]. OKABAYASHI also teaches the ,3-butanediol can be purified (i.e., isolated) [0160].
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.
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2012/0276606 (OKABAYASHI) .
OKABAYASHI provide recombinant microorganisms that efficiently produce optically active 1,3-butanediol. R)- or (S)-1,3-butanediol [0023].
It would have been obvious to one skilled in the art to provide a combination of (R) and (S)-1,3-butanediol, as OKABAYASHI teaches both can be produced.
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over OKABAYASHI as applied to claim 12 above, and further in view of United States Patent Application Publication No. 2017/0303574 (LUO).
OKABAYASHI provides recombinant microorganisms that efficiently produce optically active 1,3-butanediol [0023] but is silent as to using 1,3-butanediol in beverages such as high energy drinks.
LUO teaches that 1,3-butylene glycol (i.e., 1,3-butanediol) can be used as a solvent for dissolving sweeteners [0397] in energy drinks [0126] in an amount of 0.001 to 50% [0397].
It would have been obvious to one skilled in the art use 1,3-butylene glycol as a solvent and in an energy drink, as LUO teaches 1,3-butylene glycol can be used as a solvent for dissolving sweetener.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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