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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-7 are currently under examination. Claim 8 is withdrawn from consideration. Claims 1-4 and 7 are amended. Claim 8 is newly added.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/27/2026 has been entered.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 1-7 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (EP 0649851 A1) with respect to claims 1-7 is amended as set forth below.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Lee et al. as applied to claim 1 above, and further in view of Booker et al. (US 4,503, 255) with respect to claim 7 is amended as set forth below.
New grounds of rejection is set forth below.
Amended & New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
For this case, claim 7 contains subject matter “the source of the non-hydrolyzable triorganophosphorous compound added in step (b) is an alternatively-sourced a second untreated spent catalyst fluid obtained from a different hydroformylation reaction process than the first spent catalyst fluid, wherein the alternatively-sourced second untreated spent catalyst fluid comprises triorganophosphine.” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(b) for the reasons set forth above.
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 2-3 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.
Claim 2 recites the limitation "the first fluid" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Appropriated corrections are required.
Claim 3 recites the limitation "the second fluid" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Appropriated corrections are required.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (EP 0649851 A1).
Regarding claim 1, Lee et al. teach a process for preparation a spent Rh catalyst (Group 8 transition metal) comprising
obtaining a spent hydroformylation reaction medium from a hydroformylation process containing the deactivated rhodium catalyst which is determined as having no further commercial value, was distilled to obtain the concentrated distillation residue having a rhodium concentration of about 20,000 ppm;
aerating the obtained concentrated distillation residue;
converting all of triphenylphosphine (a non-hydrolyzable ligand) in the aerated concentrated distillation residue to triphenylphosphine oxide (the instant claimed a hydrolyzable organophosphorus ligand). The resulting aerated rhodium-containing distillation residue contains Rh and hydrolyzable organophosphorus ligand of P(OPh)3 which corresponds to the instant claimed first spent catalyst fluid with no non-hydrolyzable ligand of PPh3. Therefore, the non-hydrolyzable triorganophosphorus compound per mole of Rh is <0.1 mol as the instant claim 1 (a).
And then, a non-hydrolyzable triorganophosphorus compound of triphenylphosphine PPh3 is added to the aerated rhodium-containing distillation residue prior storing or shipping to form a treated spent catalyst fluid (the instant claimed second spent catalyst fluid) as the instant claim 1 step (b) (page 7 and Example 1).
Regarding claims 2, and 5-6, the spent catalyst medium taught by Lee et al. is concentrated to recover aldehyde prior to addition of the organophosphorus compound (e.g., Ph3P) as the instant claim (pages 3-4).
Regarding claim 3, as discussed above, the spent catalyst medium taught by Lee et al. is concentrated to recover aldehyde prior to addition of the organophosphorus compound (e.g., Ph3P) as the instant claim (pages 3-4).
Although Lee et al. do not specifically the same order of concentrating to recover aldehyde product after the addition of the organophosphorus compound as per applicant claim 3, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP section 2144.04(C).
Regarding claim 4, Lee et al. teach treating the spent catalyst medium with triorganophosphorus compound in an amount of 4 times that of the total rhodium moles in the distillation residue which is compassed in the instant claimed ranges (claim 12).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. as applied to claim 1 above, and further in view of Booker et al. (US 4,503, 255).
Regarding claim 7, although Lee et al. do not specific for recovering re-usable triphenylphosphine from the hydroformylation of olefins as per applicant claim 7, Booker et al. teach a process for recovering Ph3P from spent Rh catalyst system. The process spent catalyst fluid obtained from a different hydroformylation reaction process than the first spent catalyst fluid, wherein the second untreated spent catalyst fluid comprises triorganophosphine (Title, Abstract, col.1, line 59-col.4, line 19, claims 1-9).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the process for recovering Ph3P taught by Booker et al. in the process taught by Lee et al. to obtain the invention as specified in the claim 7, motivated by the fact that reuse triphenylphosphine is not only reduce costs but also reduce the pollution problem (col. 1, lines 5-24).
Since both of Lee et al and Booker et al. teach recovering and reuse the catalyst components from spent Rh catalysts in the hydroformylation of olefins, one would have a reasonable expectation of success.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments with respect to claims 1-7 filed on 04/06/2026 have been considered but are moot in view of the amended and new grounds of rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1738
/YUN QIAN/Primary Examiner, Art Unit 1738
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