DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 May. 2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 17 and 34 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Izawa et al. WO 2013/008686 published 17 Jan. 2013 and filed Jul. 3 2012 as translated by US 2014/0187740) and further in view of Okuyama US 5,981,810 (hereafter Okuyama), Cvengros et al. “Evaporator with wiped film as the reboiler of the vacuum rectifying column” Separation and Purification Technology 15 (1999) 95-100 published in 1999 (hereafter Cvengros), Ernst US 4,383,895 (hereafter Ernst), Clark et al. US 2011/0003355 (hereafter Clark), and Utsunomiya et al. JP6186901 published 30 Aug. 2017 and filed 5 Jun. 2012 as translated by US 2015/0087038 (hereafter Utsunomiya).
Regarding claim 17, Izawa teaches a system for purifying (distillation, ¶26) bioderived 1,4-BDO (fermentation of 1,4BG, ¶24) comprising a first distillation column (¶26).
Izawa does not teach
a microfiltration unit that achieves removal of cellular material from fermentation broth comprising bioderived 1,4-BDO and cellular material;
a nanofiltration unit and an anion exchange unit that achieves: separation of salts, removal of color, desalination, and/or removal of retentate from said fermentation broth comprising said bioderived 1,4-BDO;
a first distillation column receiving a crude bioderived 1,4-BDO mixture comprising a mixture of 1,4-BDO that is about 50% to 90% 1,4-BDO and about 50% to 1% water with one or more impurities that are derived from the fermentation broth and generating a first stream of materials with boiling points lower than 1,4-BDO and a bioderived 1,4-BDO containing product stream;
a second distillation column receiving the bioderived 1,4-BDO-containing product stream at a feed point and generating a first stream of materials with boiling points higher than 1,4-BDO, a second stream of materials with boiling points lower than 1,4-BDO, and a purified bioderived 1,4-BDO product from a side-draw;
a wiped-film evaporator receiving the first stream of materials with boiling points higher than 1,4-BDO and generating a distillate, wherein the distillate is fed to the second distillation column; and
further comprising a hydrogenation reactor constructed to treat the purified bioderived 1,4-BDO product generated by the second distillation column.
Clark teaches a system (Fig 16) for purifying (¶132) bioderived (fermentation in Fig 16) 1,4-BDO (¶132) comprising
a microfiltration unit that achieves removal of cellular material from fermentation broth comprising bioderived 1,4-BDO and cellular material (¶132 where the system includes filtration such as the ultrafiltration of ¶134; where microfiltration is used to reduce membrane fouling as taught in ¶69, ¶75);
a nanofiltration unit (¶134-135) and an anionic exchange unit (¶6, ¶79-81) that achieves: separation of salts, removal of color, desalination, and/or removal of retentate from said fermentation broth comprising said bioderived 1,4-BDO (¶134-135, ¶6, ¶79-81);
a first distillation column (Distillation #1); and
a second distillation column (Distillation #2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the purification (¶26) of Izawa by incorporating the microfiltration (Clark ¶132-135, ¶69, ¶75), nanofiltration (Clark ¶134-135), and anion exchange (¶6, ¶79-81) in order to separate the product from other components in the culture (¶132-135, such as solids and salts) and reduce membrane fouling (¶69, ¶75).
Utsunomiya teaches for purifying bioderived 1,4-BDO (abstract) comprising an anion exchange unit (¶126-127) to remove retentate and salts (¶212).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the purification (¶26) of Izawa by incorporating the nanofiltration unit (120) and anion exchange unit (130) of Utsunomiya order to separate the product from salts (¶38, ¶178).
Okuyama teaches a system for purifying bioderived 1,4-BDO (Okuyama: abstract) comprising:
a first distillation (202 in Fig 2) column receiving a crude bioderived 1,4-BDO mixture (from reactor 201) and generating a first stream of materials with boiling points lower than 1,4-BDO (low-boiling point substances shown in Fig 2) and a bioderived 1,4-BDO-containing product stream (stream to tower 203 in Fig 2);
a second distillation column (203 in Fig 2) receiving the bioderived 1,4-BDO-containing product stream at a feed point and generating a first stream of materials with boiling points higher than 1,4-BDO (bottoms of column 203 in Fig 2), a second stream of materials with boiling points lower than 1,4-BDO (tops of column 203), and a purified bioderived 1,4-BDO product (stream to reactor 205 in Fig 2) from a side-draw (as shown in Fig 2);
a separator (Okuyama: 204 in Fig 2) receiving the first stream of materials with boiling points higher than 1,4-BDO (Okuyama: as shown in Fig 2) and generating a distillate (Okuyama: tops from separator 204 in Fig 2), wherein the distillate is fed to the second distillation column (Okuyama: as shown in Fig 2);
further comprising a hydrogenation reactor (Okuyama: 205 in Fig 2) constructed to treat the purified bioderived 1,4-BDO product generated by the second distillation column (Okyama: as shown in Fig 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the distillation (¶26) of Izawa by incorporating the first distillation column (202 in Fig 2), second distillation column (203 in Fig 2), separator (Okuyama: 204 in Fig 2), and hydrogenation reactor (Okuyama: 205 in Fig 2) of Okuyama in order to purify the product (Izawa ¶26, Okuyama col 2 lines 1-14).
Cvengros teaches where distillation columns (Cvengros: page 95 col 2 lines 1-8) may employ wiped-film evaporation as a reboiler in order to concentrate the distillate (Cvengros: page 96 lines 30-47) minimize residence time (Cvengros: page 96 col 1 lines1-17) and reduce thermal degredation (Cvengros: page 95 col 2 lines 18-24). The reboiler returns the vapor from the reboiler to the distillation column (Cvengros: where the tube 7 in Fig 1 is both a reflux inlet and a vapor outlet).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the separator of the Okuyama (204 in Fig 2) combination by incorporating the wiped film evaporator of Cvengros (as shown above) in order to reduce thermal degredation (Cvengros: page 95 col 2 lines 18-24; Ernst: col 2 lines 14-23) and concentrate the distillate (Cvengros: page 96 lines 30-47; Ernst: col 2 lines 23-27). The combination would result in a wiped-film evaporator receiving the first stream of materials with boiling points higher than 1,4-BDO and generating a distillate, wherein the distillate is fed to the second distillation column.
Additionally, where the first distillation column receives a crude bioderived 1,4-BDO mixture and generates a first stream of materials with boiling points lower than 1,4-BDO and a bioderived 1,4-BDO-containing product stream; where the second distillation column receives the bioderived 1,4-BDO-containing product stream and generates a first stream of materials with boiling points higher than 1,4-BDO, a second stream of materials with boiling points lower than 1,4-BDO, and a purified bioderived 1,4-BDO product; and where the wiped-film evaporator receives the first stream of materials with boiling points higher than 1,4-BDO and generates a distillate are methods of using the apparatus which do not patentably distinguish the claimed invention over the prior art. The structure of the Izawa/Okuyama/Cvengros apparatus would be fully capable of performing the functional limitations because the claimed functions do not require modifying the structure of the Izawa/Okuyama/Cvengros apparatus. See MPEP §2114, §2115, and §2173.05(g).
MPEP §2115 recites ““[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material.” The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).” MPEP §2115 recites “Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to input bioderived 1,4-BDO into the distillation tower 202 in order to purify bioderived 1,4-BDO, where the structure of the of the distillation system of Izawa/Okuyama/Cvengros would be fully capable of distilling the bioderived 1,4-BDO from the impurities.
Wherein the crude 1,4-BDO mixture comprises a mixture of 1,4-BDO that is about 50% to 90% 1,4-BDO and 50% to 1 % water with one more other impurities that are derived from the fermentation broth is a method of using the apparatus and the material worked upon by the apparatus. Because the prior art teaches the structure of the claimed invention, one of ordinary skill in the art would know that the prior art would be fully capable of being used in accordance with claim 17. See MPEP §2114, §2115, §2173.05(g). Izawa further teaches where the 1,4-BDO can be obtained by fermentation (¶24), where such a crude mixture would be within the expected bounds of a fermentation crude.
Regarding claim 34, Izawa in view of Okuyama, Ernst, Clark, and Cvengros teaches all the limitations of claim 17.
Wherein the purified bioderived 1,4-BDO product has no or less than 0.01 percent 2-methyl-3-buten-l-ol, and/or no or less than 0.01 percent 1,6- hexanediol, and/or less than 0.04 percent butanoic acid, propyl ester and/or less than 0.04 percent 2-( 4-hydroxybutoxy) tetrahydrofuran is a method of using the system.
The system of claim 17 as taught by Izawa in view of Okuyama, Ernst, Clark, and Cvengros would be fully capable of performing the functional limitation. See MPEP §§ 2114, 2115, and 2173.05(g).
Claims 17 and 34 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Clark et al. US 2011/0003355 (hereafter Clark) and further in view of Okuyama US 5,981,810 (hereafter Okuyama) and, Ernst US 4,383,895 (hereafter Ernst), Cvengros et al. “Evaporator with wiped film as the reboiler of the vacuum rectifying column” Separation and Purification Technology 15 (1999) 95-100 published in 1999 (hereafter Cvengros).
Regarding claim 17, Clark teaches a system (Fig 16) for purifying (¶132) bioderived (fermentation in Fig 16) 1,4-BDO (¶132) comprising
a microfiltration unit that achieves removal of cellular material from fermentation broth comprising bioderived 1,4-BDO and cellular material (¶132 where the system includes filtration such as the ultrafiltration of ¶134; where microfiltration is used to reduce membrane fouling as taught in ¶69, ¶75);
a nanofiltration unit (¶134-135) and an anionic exchange unit (¶6, ¶79-81) that achieves: separation of salts, removal of color, desalination, and/or removal of retentate from said fermentation broth comprising said bioderived 1,4-BDO (¶134-135, ¶6, ¶79-81);
a first distillation column (Distillation #1); and
a second distillation column (Distillation #2).
Clark does not teach
a first distillation column receiving a crude bioderived 1,4-BDO mixture comprising a mixture of 1,4-BDO that is about 50% to 90% 1,4-BDO and about 50% to 1% water with one or more impurities that are derived from the fermentation broth and generating a first stream of materials with boiling points lower than 1,4-BDO and a bioderived 1,4-BDO containing product stream;
a second distillation column receiving the bioderived 1,4-BDO-containing product stream at a feed point and generating a first stream of materials with boiling points higher than 1,4-BDO, a second stream of materials with boiling points lower than 1,4-BDO, and a purified bioderived 1,4-BDO product from a side-draw;
a wiped-film evaporator receiving the first stream of materials with boiling points higher than 1,4-BDO and generating a distillate, wherein the distillate is fed to the second distillation column; and
further comprising a hydrogenation reactor constructed to treat the purified bioderived 1,4-BDO product generated by the second distillation column.
Okuyama teaches a system for purifying bioderived 1,4-BDO (Okuyama: abstract) comprising:
a first distillation (202 in Fig 2) column receiving a crude bioderived 1,4-BDO mixture (from reactor 201) and generating a first stream of materials with boiling points lower than 1,4-BDO (low-boiling point substances shown in Fig 2) and a bioderived 1,4-BDO-containing product stream (stream to tower 203 in Fig 2);
a second distillation column (203 in Fig 2) receiving the bioderived 1,4-BDO-containing product stream at a feed point and generating a first stream of materials with boiling points higher than 1,4-BDO (bottoms of column 203 in Fig 2), a second stream of materials with boiling points lower than 1,4-BDO (tops of column 203), and a purified bioderived 1,4-BDO product (stream to reactor 205 in Fig 2) from a side-draw (as shown in Fig 2);
a separator (Okuyama: 204 in Fig 2) receiving the first stream of materials with boiling points higher than 1,4-BDO (Okuyama: as shown in Fig 2) and generating a distillate (Okuyama: tops from separator 204 in Fig 2), wherein the distillate is fed to the second distillation column (Okuyama: as shown in Fig 2);
further comprising a hydrogenation reactor (Okuyama: 205 in Fig 2) constructed to treat the purified bioderived 1,4-BDO product generated by the second distillation column (Okyama: as shown in Fig 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the distillation (¶26) of Izawa by incorporating the first distillation column (202 in Fig 2), second distillation column (203 in Fig 2), separator (Okuyama: 204 in Fig 2), and hydrogenation reactor (Okuyama: 205 in Fig 2) of Okuyama in order to purify the product (Izawa ¶26, Okuyama col 2 lines 1-14).
Cvengros teaches where distillation columns (Cvengros: page 95 col 2 lines 1-8) may employ wiped-film evaporation as a reboiler in order to concentrate the distillate (Cvengros: page 96 lines 30-47) minimize residence time (Cvengros: page 96 col 1 lines1-17) and reduce thermal degredation (Cvengros: page 95 col 2 lines 18-24). The reboiler returns the vapor from the reboiler to the distillation column (Cvengros: where the tube 7 in Fig 1 is both a reflux inlet and a vapor outlet).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the separator of the Okuyama (204 in Fig 2) combination by incorporating the wiped film evaporator of Cvengros (as shown above) in order to reduce thermal degredation (Cvengros: page 95 col 2 lines 18-24; Ernst: col 2 lines 14-23) and concentrate the distillate (Cvengros: page 96 lines 30-47; Ernst: col 2 lines 23-27). The combination would result in a wiped-film evaporator receiving the first stream of materials with boiling points higher than 1,4-BDO and generating a distillate, wherein the distillate is fed to the second distillation column.
Additionally, where the first distillation column receives a crude bioderived 1,4-BDO mixture and generates a first stream of materials with boiling points lower than 1,4-BDO and a bioderived 1,4-BDO-containing product stream; where the second distillation column receives the bioderived 1,4-BDO-containing product stream and generates a first stream of materials with boiling points higher than 1,4-BDO, a second stream of materials with boiling points lower than 1,4-BDO, and a purified bioderived 1,4-BDO product; and where the wiped-film evaporator receives the first stream of materials with boiling points higher than 1,4-BDO and generates a distillate are methods of using the apparatus which do not patentably distinguish the claimed invention over the prior art. The structure of the Clark/Okuyama/Cvengros apparatus would be fully capable of performing the functional limitations because the claimed functions do not require modifying the structure of the Clark/Okuyama/Cvengros apparatus. See MPEP §2114, §2115, and §2173.05(g).
MPEP §2115 recites ““[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material.” The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).” MPEP §2115 recites “Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).” It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to input bioderived 1,4-BDO into the distillation tower 202 in order to purify bioderived 1,4-BDO, where the structure of the of the distillation system of Clark/Okuyama/Cvengros would be fully capable of distilling the bioderived 1,4-BDO from the impurities.
Wherein the crude 1,4-BDO mixture comprises a mixture of 1,4-BDO that is about 50% to 90% 1,4-BDO and 50% to 1 % water with one more other impurities that are derived from the fermentation broth is a method of using the apparatus and the material worked upon by the apparatus. Because the prior art teaches the structure of the claimed invention, one of ordinary skill in the art would know that the prior art would be fully capable of being used in accordance with claim 17. See MPEP §2114, §2115, §2173.05(g). Clark further teaches where the 1,4-BDO can be obtained by fermentation (¶132), where such a crude mixture would be within the expected bounds of a fermentation crude.
Regarding claim 34, Clark in view of Okuyama, Ernst, and Cvengros teaches all the limitations of claim 17.
Wherein the purified bioderived 1,4-BDO product has no or less than 0.01 percent 2-methyl-3-buten-l-ol, and/or no or less than 0.01 percent 1,6- hexanediol, and/or less than 0.04 percent butanoic acid, propyl ester and/or less than 0.04 percent 2-( 4-hydroxybutoxy) tetrahydrofuran is a method of using the system.
The system of claim 17 as taught by Clark in view of Okuyama and Cvengros would be fully capable of performing the functional limitation. See MPEP §§ 2114, 2115, and 2173.05(g).
Response to Arguments
The following is a response to Applicant’s arguments filed 18 May. 2026:
Applicant argues that the Izawa process using the claimed crude range would render the system unsatisfactory.
Examiner disagrees. The 99.00% - 99.99% 1,4-BDO of Izawa paragraph 14 is the purified 1,4-BDO product. Izawa teaches "It is possible to obtain the 1,4BG which is contained in the 1,4-butanediol-containing composition of the present invention by production methods which have hitherto been known. For example, there are included ... 1,4BG obtained by means of direct fermentation from a biomass" (Izawa paragraph 24, emphasis added). Thus, the claimed crude 1,4BDO is analogous to the 1,4BG obtained by fermentation of Izawa and the claimed purified 1,4-BDO product is analogous to the 1,4-butanediol-containing composition of Izawa. Thus, the proposed modification would not render the system unsatisfactory.
Further, that Izawa recognized a cost/benefit of both higher and lower final concentrations does not render achieving those concentrations nonobvious. Rather, one of ordinary skill would optimize the concentration for cost and stability depending on the specific system requirements.
Further, Applicant cites Iwaza’s non-limiting embodiments (“preferably sulfonic acid”). Because the preference is one non-limiting embodiment, it is not persuasive to show that Iwaza cannot be combined as detailed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN HOBSON whose telephone number is (571)272-9914. The examiner can normally be reached 9am-5pm.
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, Jennifer Dieterle can be reached at 571-270-7872. 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.
/STEPHEN HOBSON/Examiner, Art Unit 1776
Prosecution Insights