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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09 March 2026 has been entered.
Status of the Claims
Claims 1, 3, 4, 6-10, and 12-17 are pending.
Claims 18 and 19 are new.
Claim 1 is amended.
Claim 5 is currently cancelled.
Claims 2 and 11 were previously cancelled.
Priority
This application is a 371 of PCT/FR2020/051682 which claims the benefit of FR 1911005 with an effective filing date of 04 October 2019 as reflected in the filing receipt mailed on 19 October 2023.
Response to Amendments
Applicant’s amendments filed 09 March 2026 are acknowledged.
Claim Rejections - 35 USC § 102
Applicant’s amendment to claim 1 adding the reactant molar ratio of claim 5 to claim 1 not taught by Mashkina is sufficient to overcome the rejection of claims 1, 4, 6, 7, 12, 13, 15, and 16 under 35 U.S.C. 102(a)(1) as being anticipated by Mashkina (“Heterogeneous catalytic synthesis of alkanethiols and dialkyl sulfides from alcohols and hydrogen sulfide”, 1995, Russian Chemical Reviews, Vol. 64, No. 12, Pgs. 1131-1147). Due to the amendment to claim 1, the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 adding the reactant molar ratio of claim 5 to claim 1 not taught by Mashkina and cancellation of claim 5 is sufficient to overcome the rejections of:
Claims 3, 5, and 8-10 under 35 U.S.C. 103 as being unpatentable over Mashkina (“Heterogeneous catalytic synthesis of alkanethiols and dialkyl sulfides from alcohols and hydrogen sulfide”, 1995, Russian Chemical Reviews, Vol. 64, No. 12, Pgs. 1131-1147), as applied to claims 1, 4, 6, 7, 12, 13, 15, and 16 in the 35 USC 102 rejection above, in view of Pichai et al. (US20170342028, hereinafter Pichai); and,
Claims 14 and 17 under 35 U.S.C. 103 as being unpatentable over Mashkina (“Heterogeneous catalytic synthesis of alkanethiols and dialkyl sulfides from alcohols and hydrogen sulfide”, 1995, Russian Chemical Reviews, Vol. 64, No. 12, Pgs. 1131-1147), as applied to claims 1, 4, 6, 7, 12, 13, 15, and 16 in the 35 USC 102 rejection above, in view of Vishwanathan et al. (“Surface properties and catalytic activity of TiO2–ZrO2 mixed oxides in dehydration of methanol to dimethyl ether”, July 2004, Catalysis Letters, Vol. 96, Nos. 1-2, Pgs. 23-28, hereinafter Vishwanathan).
Due to the amendment to claim 1 not taught by Mashkina and the cancellation of claim 5, the above 35 USC 103 rejections are withdrawn and a new ground(s) of rejection is/are provided below.
Double Patenting
Applicant’s amendment to claim 1 limiting the catalysts to TiO2 and/or ZrO2 not including Al2O3 not taught by Salembier and the cancellation of claim 5 are sufficient to overcome the rejections of:
Claims 1, 3-10, and 12-17 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-9 of copending Application No. 18/566,958 to Salembier et al. (hereinafter Salembier) in view of Vishwanathan et al. (“Surface properties and catalytic activity of TiO2–ZrO2 mixed oxides in dehydration of methanol to dimethyl ether”, July 2004, Catalysis Letters, Vol. 96, Nos. 1-2, Pgs. 23-28, hereinafter Vishwanathan).
Due to the amendment to claim 1 and the cancellation of claim 5, the rejection is withdrawn.
Applicant’s amendments to claim 1 limiting the catalysts to TiO2 and/or ZrO2 not including Al2O3 and adding the reactant molar ratio of claim 5 to claim 1 is taught by Fremy and are not sufficient to overcome the rejections of:
Claims 1, 5, and 7-10 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 8 of copending Application No. 18/567,183 to Fremy et al. (hereinafter Fremy) (reference application);
Claims 3, 4, 6, 12, 13, 15, 16 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/567,183 to Fremy et al. (hereinafter Fremy) in view of Mashkina (“Heterogeneous catalytic synthesis of alkanethiols and dialkyl sulfides from alcohols and hydrogen sulfide”, 1995, Russian Chemical Reviews, Vol. 64, No. 12, Pgs. 1131-1147); and,
Claims 14 and 17 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/567,183 to Fremy et al. (hereinafter Fremy) in view of Vishwanathan et al. (“Surface properties and catalytic activity of TiO2–ZrO2 mixed oxides in dehydration of methanol to dimethyl ether”, July 2004, Catalysis Letters, Vol. 96, Nos. 1-2, Pgs. 23-28, hereinafter Vishwanathan).
The rejection is maintained and is modified due to the amendment to claim 1, cancellation of claim 5, and the addition of new claims 18 and 19. Maintained, modified, and new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 09 March 2026 have been fully considered but they are not persuasive.
Applicant’s argue that Mashkina, Pichai, and Vishwanathan do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are not persuasive for the reasons set forth in the new, maintained, and modified grounds of rejection below and the response to arguments below.
In response to application’s arguments on pages 6-7 of the remarks filed on 09 March 2026 that “[a] person of ordinary skill in the art would not have a rationale (even less with a reasonable expectation of success) for modifying Mashkina as indicated by the Examiner based on the teaching of Pichai without also employing an alumina catalyst” at low temperatures and “a person of ordinary skill in the art would not have a reasonable expectation that the feed concentration of hydrogen sulfide and dimethyl sulfide of Pichai, which is based on an alumina catalyst, would provide the same or even similar results if applied to the very different ZrO2 and/or TiO2 catalyst(s) of the present application, such that there would be a rationale to modify Mashkina to conform to the Pichai feed concentrations”.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145. “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).”, see MPEP 2141.01(a).
Patents and published prior art are part of the literature of the prior art relevant for all they contain, see MPEP 2123.
In this case, Mashkina is in the known prior art field of “catalysis of reactions of alcohols with hydrogen sulfides, which yield alkanethiols and dialkyl sulfides”, see Abstract. Mashkina teaches a variety of differing catalysts, such as Al2O3 alone, ZrO2 alone, and TiO2 alone, may be used to convert dialkyl sulfides to alkanethiols with differing selectivity, conversions, and yields, see Pg. 1132, II.-1. Metal oxides and sulfides, specifically Table 1, and page 9 of the previous office action dated 07 October 2025 (hereinafter POA). Mashkina also teaches “[a]lkaline aluminium oxide catalysts are more stable in the reaction involving the conversion of alcohols into thiols than the unpromoted Al2O3”, see Pg. 1144, Col. 1, Last Full Para., “the selectivity in the formation of methanethiol on the alkali-modified aluminium oxide is 1.2 times higher than on the unpromoted Al2O3, while the selectivity with respect to dimethyl sulfide is lower by a factor of 2.4”, see Pg. 1137, Col. 1, First Para., and the conversion and selectivity differs amongst the differing catalysts, with TiO2 having the overall equal to or second best results as compared to Al2O3 regarding the conversion of methanol, the selectivity in the formation of dimethyl sulfide, and selectivity with respect to methanethiol, see below and Pg. 1132, Col. 2, Table 1.
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Therefore, Mashkina specifically teaches the selection of a TiO2 catalyst is at least equal to or better than the selection of a promoted or unpromoted Al2O3 catalyst for the conversion of methanol, the selectivity in the formation of dimethyl sulfide, and selectivity with respect to methanethiol.
Pichai is in the known prior art field of “a process for the continuous production of methyl mercaptan via the catalytic conversion of dimethyl sulfide”, see Abstract. Pichai is not applied to teach the catalyst. As stated above, Mashkina thoroughly teaches the use of TiO2 alone, ZrO2 alone, unpromoted Al2O3, and promoted Al2O3. As detailed on pages 11-12 of the POA, Pichai is applied to teach the catalytic reaction process, reaction conditions, and the reactor. Pichai also teaches a reaction temperature range “of about 200° C. to less than 300° C” in reactor 1, see Paras. [0029]-[0030]; Fig. 5, and of “about 250° C. to about 400° C., preferably about 260° C. to about 360° C.” in reactor 2, see Paras. [0034];[0049]-[0050]; Fig. 5, which is within the instant claim 4 temperature range of 100° C to 500° C.
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the TiO2 catalysis reaction of alcohols with hydrogen sulfides, which yield alkanethiols and dialkyl sulfides of Mashkina by applying the known technique of suitable reactors and process conditions as taught by Pichai with a reasonable predictability of success for the purpose of the continuous catalytic production of methyl mercaptan via the efficient catalytic conversion of dimethyl sulfide, see Pichai, Paras. [0002]-[0005];[0028]; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Mashkina and Pichai both teach the catalytic production of methyl mercaptan via the efficient catalytic conversion of dimethyl sulfide, a person of ordinary skill in the art has good reason to modify Mashkina by relying upon Pichai before the effective filing date of the claimed invention for knowledge generally available within the catalytic production of methyl mercaptan art regarding the catalytic reaction process, reaction conditions, and the reactor, see MPEP 2143 B & G and 2141, for the benefit of the continuous catalytic production of methyl mercaptan via the efficient catalytic conversion of dimethyl sulfide, see Pichai, Paras. [0002]-[0005];[0028]; and, MPEP 2141 and 2143 I. B-D.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applicant’s argument on page 7 of the remarks filed on 09 March 2026 that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper, see In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971) and MPEP 2145 X.A. In this case, as stated above, the examiner has relied upon the known prior art of the through teachings of the selection of differing catalysts of Mashkina and the catalytic reaction process, reaction conditions, and the reactor teachings of Pichai. Pichai is not applied to teach the catalysts.
For the reasons indicated above, applicant’s above argument is not persuasive.
Double Patenting
Applicant’s arguments on pages 7-8 of the remarks filed on 09 March 2026 that the provisional double patenting rejections should be held in abeyance until allowed claims have been considered is acknowledged; however, a request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form, see 37 CFR 1.111(b) and MPEP 714.02. Therefore, applicant’s above arguments are not persuasive for the reasons set forth in the response to arguments above and in the new grounds of rejection below.
As stated above, the rejection of claims 1, 3-10, and 12-17 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-9 of copending Application No. 18/566,958 to Salembier et al. (hereinafter Salembier) is withdrawn.
New Rejections Based on the RCE and Amendments to the Claims in the reply filed on 09 March 2026
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 is missing a conjunction between step E) and step F). The conjunction between the steps is interpreted to be “and”.
Appropriate correction is 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, 3, 4, 6-10, 12, 13, 15, 16, 18, and 19 are newly rejected under 35 U.S.C. 103 as being unpatentable over Mashkina (“Heterogeneous catalytic synthesis of alkanethiols and dialkyl sulfides from alcohols and hydrogen sulfide”, published 1995, Russian Chemical Reviews, Vol. 64, No. 12, Pgs. 1131-1147) in view of Pichai et al. (US20170342028, published 30 November 2017, hereinafter Pichai).
Mashkina is in the known prior art field of “catalysis of reactions of alcohols with hydrogen sulfides, which yield alkanethiols and dialkyl sulfides”, see Abstract. Mashkina teaches a variety of differing catalysts, such as Al2O3 alone, ZrO2 alone, and TiO2 alone, may be used to convert dialkyl sulfides to alkanethiols with differing selectivity, conversions, and yields, see Pg. 1132, II.-1. Metal oxides and sulfides, specifically Table 1. Mashkina also teaches “[a]lkaline aluminium oxide catalysts are more stable in the reaction involving the conversion of alcohols into thiols than the unpromoted Al2O3”, see Pg. 1144, Col. 1, Last Full Para., “the selectivity in the formation of methanethiol on the alkali-modified aluminium oxide is 1.2 times higher than on the unpromoted Al2O3, while the selectivity with respect to dimethyl sulfide is lower by a factor of 2.4”, see Pg. 1137, Col. 1, First Para., and the conversion and selectivity differs amongst the differing catalysts, with TiO2 having the overall equal to or second best results as compared to Al2O3 regarding the conversion of methanol, the selectivity in the formation of dimethyl sulfide, and selectivity with respect to methanethiol, see below and Pg. 1132, Col. 2, Table 1.
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Therefore, Mashkina specifically teaches the selection of a TiO2 catalyst is at least equal to or better than the selection of a promoted or unpromoted Al2O3 catalyst for the conversion of methanol, the selectivity in the formation of dimethyl sulfide, and selectivity with respect to methanethiol.
Regarding the limitations of instant application claims 1, 4, 6, 12, 13, 18, and 19, Mashkina teaches the conversion of alcohol, such as methanol, upon contact with hydrogen sulfide, H2S, to dimethyl sulfide, (CH3)2S, which converts to methyl mercaptan, 2 CH3SH, via contact with the hydrogen sulfide and methanol, CH3OH, where the reaction of alcohols with hydrogen sulfide is accelerated, albeit to different extents, under only TiO2 or only ZrO2 catalytic conditions at a temperature of 360 ◦C, see Pg. 1132, II.-1. Metal oxides and sulfides, specifically Table 1. The reaction of methanol with hydrogen sulfide results in the following reactions, specifically to produce methyl mercaptan, 2 CH3SH, and dimethyl sulfide, (CH3)2S, the dimethyl sulfide further reacts in the reversible reaction where methyl mercaptan, 2 CH3SH, is further produced by the reaction of dimethyl sulfide, (CH3)2S, with hydrogen sulfide, H2S, see Pg. 1138, III. The mechanism of conversion of alcohols into thiols by hydrogen sulfide, Col. 1-Col. 2, Second Para. and the below reaction schemes
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. The Table 1 catalyst of ZrO2 only and the Table 1 catalyst of TiO2 only, convert methanol and hydrogen sulfide to dimethyl sulfide and the dimethyl sulfide and hydrogen sulfide are further converted to methyl mercaptan, see Pg. 1132, II.-1. Metal oxides and sulfides, Table 1; Pg. 1138, III. The mechanism of conversion of alcohols into thiols by hydrogen sulfide, Col. 1-Col. 2, Second Para., meeting:
The sulfhydrolysis process of reacting dimethyl sulfide and hydrogen sulfide to obtain a mercaptan and the TiO2 only or ZrO2 only catalyst without alkali metal oxide and Al2O3 in instant application claim 1;
Within the reaction temperature range in instant application claim 4;
The specific dimethyl sulfide in instant application claim 6;
The catalyst consisting of only TiO2 in instant application claim 12;
The catalyst consisting of only ZrO2 in instant application claim 13; and,
The catalysts does not contain a promoter or phosphorus in instant application claim 18 and in instant application claim 19.
In addition, the instant application claim 1 scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure, see MPEP 2111.04. In this case, the “wherein” clauses drawn to the stabilizer and/or binder and the reactant mole ratio do not appear to provide “meaning and purpose to the manipulative steps”, see MPEP 2111.04.
Regarding the limitations of instant application claims 7, 15, and 16, Mashkina teaches the Table 1 catalyst of ZrO2 only and the Table 1 catalyst of TiO2 only, convert methanol and hydrogen sulfide to dimethyl sulfide and the dimethyl sulfide and hydrogen sulfide are further converted to methyl mercaptan, see Pg. 1132, II.-1. Metal oxides and sulfides, Table 1; Pg. 1138, III. The mechanism of conversion of alcohols into thiols by hydrogen sulfide, Col. 1-Col. 2, Second Para., meeting:
The process in instant application claim 7, in instant application claim 15, and in instant application claim 16.
Mashkina does not teach:
The instant application claim 1 limitation of wherein the H2S/dialkyl sulfide mole ratio is between 0.1/1 and 50/1; and,
The limitations of instant application claims 3 and 8-10.
As stated above, Mashkina teaches the use of TiO2 alone, ZrO2 alone, unpromoted Al2O3, and promoted Al2O3 based upon the desired conversion of methanol, selectivity in the formation of dimethyl sulfide, and selectivity with respect to methanethiol.
Pichai is in the known prior art field of “a process for the continuous production of methyl mercaptan via the catalytic conversion of dimethyl sulfide”, see Abstract. Pichai is not applied to teach the catalyst. Pichai is applied to teach the catalytic reaction process, reaction conditions, and the reactor.
Regarding the limitations of instant application claims 1 and 3, Pichai teaches a sulfhydrolysis process for producing methyl mercaptan, the process comprising reacting an influent gas stream comprising clean hydrogen sulfide and recycled dimethyl sulfide, DMS, in a reactor at a temperature range “of about 200° C. to less than 300° C” in reactor 1, see Paras. [0029]-[0030]; Fig. 5, and of “about 250° C. to about 400° C., preferably about 260° C. to about 360° C.” in reactor 2, see Paras. [0034];[0049]-[0050]; Fig. 5, to produce an effluent gas stream comprising methyl mercaptan, dimethyl sulfide, and hydrogen sulfide, where the influent gas stream comprises clean hydrogen sulfide and recycled dimethyl sulfide at a molar ratio of at least 20:1, see Claims 1-4, 18; Paras. [0003];[0021]-[0036]. The catalyst is disposed in each reactor in one catalytic zone in an adiabatic reactor with a single catalyst stage, see Claims 1, 3, 18; Paras. [0028]-[0029];[0049], and exposed to a H2S:DMS molar feed ratio of 20:1, 25:1, 30:1, 35:1, 40:1, 45:1, 50:1, 55:1, 60:1, or higher, see Claims 1, 18; Paras. [0026];[0043]-[0044], meeting:
Within the H2S:DMS molar ratio range in instant application claim 1; and,
The reactor with one catalytic zone in instant application claim 3.
Regarding the limitations of instant application claims 8 and 9, Pichai teaches a cyclic process where methyl mercaptan is produced from the reaction of the H2S with DMS, dimethyl sulfide, and DMS is produced from the reaction of clean methanol with H2S in reactor 2, see Paras. [0003]-[0004];[0021]-[0026];[0035]-[0036];[0045], Fig. 5. A clean hydrogen sulfide stream along with recycled reactants inlet streams, such as dimethyl sulfide, recycled hydrogen sulfide, recycled methanol, and/or recycled dimethyl ether, are continuously withdrawn from reactor 2 containing a catalysts as an outlet stream containing methyl mercaptan, water, hydrogen sulfide, dimethyl sulfide, dimethyl ether and methanol that are separated in the product separation stage, then recycled back to reactor 1 containing a catalyst, i.e., the instantly claimed sulfhydrolysis process reactors, see Paras. [0021]-[0029];[0036];[0045];[0061]-[0063] and Fig. 5. The reactor 1 outlet stream comprising predominantly methyl mercaptan, hydrogen sulfide, and dimethyl sulfide is introduced into reactor 2, see Para. [0034], Fig. 5. Specifically, as detailed in Fig. 5:
A stream of recycled MeOH, fresh MeOH stream 7, effluent H2S, and recycled H2S enter reactor 2 for catalytic reaction, meeting step A) in instant application claim 8;
The outlet stream 8 of reactor 2 comprises H2S, DMS, H2O, DME, dimethyl ether, and MeSH, methyl mercaptan, meeting step B) in instant application claim 8;
The outlet stream 8 from reactor 2 is separated into stream 9 MeSH, stream 10 H2O, a MeOH separated recycle stream, a H2S and DME separated recycle stream, and a DMS separated recycle stream, meeting step C) in instant application claim 8;
Fresh H2S, the separated H2S and DME stream, and the separated DMS stream enter reactor 1 for catalytic reaction, meeting step D) in instant application claim 8;
The reaction outlet effluent from the catalytic reactor 1 comprises H2S, DMS, H2O, and MeSH, meeting step E) in instant application claim 8;
H2S is recycled throughout the process to and from both reactors and from the separation step, meeting step E) and step F) recycle in instant application claim 8 and in instant application claim 9; and,
The reactor 1 outlet stream is fed into reactor 2, meeting the recycle in instant application claim 9.
Regarding the limitations of instant application claim 10, Pichai teaches a cyclic process where clean methanol is introduced into reactor 2, and H2S, DMS, H2O, and MeSH are introduced into reactor 2 from reactor 1, then MeSH, H2O, H2S, DME, and DMS leave reactor 2 and are separated, collected, and/or recycled back to reactor 1 the sulfhydrolysis process reactor and/or reactor 2, see Fig. 5 and Paras. [0021]-[0029];[0036];[0048];[0062]-[0063]. Specifically, as detailed in Fig. 5:
A stream of recycled MeOH, fresh MeOH stream 7, effluent H2S, recycled H2S, and effluent MeSH enter reactor 2 for catalytic reaction, meeting step a) in instant application claim 10;
The outlet stream 8 of reactor 2 comprises H2S, DMS, H2O, DME, and MeSH, meeting step b) in instant application claim 10;
The outlet stream 8 from reactor 2 is separated into stream 9 MeSH, stream 10 H2O, a MeOH stream, a H2S and DME stream, and a DMS stream, meeting step c) in instant application claim 10;
Fresh H2S, the separated H2S and DME stream, and the separated DMS stream enter reactor 1 for catalytic reaction, meeting step d) in instant application claim 10;
The reaction outlet effluent from the catalytic reactor 1 comprises H2S, DMS, H2O, and MeSH, meeting step e) in instant application claim 10;
The reactor 1 outlet stream is fed into reactor 2, meeting step f) in instant application claim 10;
Stream 9 is separated and recovered MeSH, meeting step g) in instant application claim 10; and,
H2S is recycled throughout the process to and from both reactors and from the separation step, meeting step h) in instant application claim 10.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the catalytic reaction process, reaction conditions, and the reactor of Mashkina to rearrange the mercaptan production method by including additional recycle lines and only one catalytic zone, see MPEP 2144.04 VI., to adjust the reactant concentrations, see MPEP 2144.05 II., and to use the mercaptan recycle line production process, concentrations, and reactants as taught by Pichai with a reasonable predictability of success for the purpose of the continuous production of methyl mercaptan via the efficient catalytic conversion of dimethyl sulfide, see Pichai, Paras. [0002]-[0005];[0028].
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the TiO2 catalysis reaction of alcohols with hydrogen sulfides, which yield alkanethiols and dialkyl sulfides of Mashkina by applying the known technique of suitable reactors and process conditions as taught by Pichai with a reasonable predictability of success for the purpose of the continuous catalytic production of methyl mercaptan via the efficient catalytic conversion of dimethyl sulfide, see Pichai, Paras. [0002]-[0005];[0028]; and, MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Mashkina and Pichai both teach the catalytic production of methyl mercaptan via the efficient catalytic conversion of dimethyl sulfide, a person of ordinary skill in the art has good reason to modify Mashkina by relying upon Pichai before the effective filing date of the claimed invention for knowledge generally available within the catalytic production of methyl mercaptan art regarding the catalytic reaction process, reaction conditions, and the reactor, see MPEP 2143 B & G and 2141, for the benefit of the continuous catalytic production of methyl mercaptan via the efficient catalytic conversion of dimethyl sulfide, see Pichai, Paras. [0002]-[0005];[0028]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as recycle lines, only one reactor, and reactant concentrations, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Selection of a known material, such as metal oxide sulfhydrolysis catalyst with the optimal conversion of methanol, selectivity in the formation of dimethyl sulfide, and selectivity with respect to methanethiol, i.e., TiO2 or ZrO2, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claims 1, 3, 4, 6-10, and 12-19 are newly rejected under 35 U.S.C. 103 as being unpatentable over Mashkina (“Heterogeneous catalytic synthesis of alkanethiols and dialkyl sulfides from alcohols and hydrogen sulfide”, published 1995, Russian Chemical Reviews, Vol. 64, No. 12, Pgs. 1131-1147) in view of Pichai et al. (US20170342028, published 30 November 2017, hereinafter Pichai), as applied to claims 1, 3, 4, 6-10, 12, 13, 15, 16, 18, and 19 in the 35 USC 103 rejection above, and in further view of Vishwanathan et al. (“Surface properties and catalytic activity of TiO2–ZrO2 mixed oxides in dehydration of methanol to dimethyl ether”, published July 2004, Catalysis Letters, Vol. 96, Nos. 1-2, Pgs. 23-28, hereinafter Vishwanathan).
Mashkina teaches the claim 17 limitations of the TiO2 and ZrO2 catalytic conversion of methanol leads to the formation of dimethyl ether, (CH3)2(O) and water, the (CH3)2(O) reacts with H2S to produce methyl mercaptan, CH3SH, the CH3SH reacts with (CH3)2(O) to produce dimethyl sulfide, (CH3)2S, then the dimethyl sulfide further reacts in the reversible reaction where methyl mercaptan, 2 CH3SH, is further produced by the reaction of dimethyl sulfide, (CH3)2S, with H2S, see Pg. 1138, III. The mechanism of conversion of alcohols into thiols by hydrogen sulfide, Col. 1-Col. 2, Second Para. and the above reaction schemes, Pg. 1132, II.-1. Metal oxides and sulfides, specifically Table 1, TiO2 and ZrO2. The Table 1 catalyst of ZrO2 only and the Table 1 catalyst of TiO2 only, convert methanol and hydrogen sulfide to dimethyl sulfide and the dimethyl sulfide and hydrogen sulfide are further converted to methyl mercaptan, see Pg. 1132, II.-1. Metal oxides and sulfides, Table 1; Pg. 1138, III. The mechanism of conversion of alcohols into thiols by hydrogen sulfide, Col. 1-Col. 2, Second Para., meeting most of the process in instant application claim 17.
Mashkina also teaches water blocks the surface of the catalyst leading to a reduced activity of the catalyst, see Pgs. 1142-1143, 5. Kinetics and “the composition of the catalysts exerts a considerable influence on the rate of the interaction of alcohols with hydrogen sulfide and on the mode of the reaction. By varying the type of the acid-base centres and their numbers on the surface, it is possible to obtain an active and selective catalyst for the formation of the thiol”, see Pg. 1137, Col. 2, Last Para.
Mashkina does not teach the consisting of ZrO2 and TiO2 catalyst in instant application claims 14 and 17.
Vishwanathan is in the known prior art field of TiO2–ZrO2 mixed oxides acid–base properties with varying molar ratios of TiO2 to ZrO2 and relates to the problem to be solved of the conversion of methanol over oxides to form dimethyl ether where water is one of the products of the reaction, see Abstract, All of Pg. 23 and reaction scheme (1).
Regarding the limitations of instant application claims 14 and 17, Vishwanathan teaches the methanol to dimethyl ether conversion oxide catalysts consist of varying mol % TiO2-ZrO2 catalysts, or a 100 mol % ZrO2 catalyst, or a 100 mol % TiO2 catalyst, see Abstract, All of Pg. 26, Table 1, meeting the specific consisting of only TiO2-ZrO2 catalyst in instant application claim 14 and in instant application claim 17.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the separate TiO2 and ZrO2 catalysts of Mashkina to combine the TiO2-ZrO2 catalyst together as taught by Vishwanathan with a reasonable predictability of success for the purpose of catalytically obtaining dimethyl ether by using a catalyst that shows better performance in terms of activity, higher selectivity, and most importantly stability towards water, see Vishwanathan, All of Pg. 23 and reaction scheme (1).
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of combining the TiO2 and ZrO2 catalysts of Mashkina by applying the known technique of combining the two catalysts with differing molar ratios of TiO2 and ZrO2 as taught by Vishwanathan with a reasonable predictability of success for the purpose of catalytically obtaining dimethyl ether by using a catalyst that shows better performance in terms of activity, higher selectivity, and most importantly stability towards water, see Vishwanathan, All of Pg. 23 and reaction scheme (1); and, MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and both Mashkina and Vishwanathan teach the TiO2 catalyst, the ZrO2 catalysts, and the catalytic production of dimethyl ether leads to the production of water, a person of ordinary skill in the art has good reason to modify Mashkina by relying upon Vishwanathan before the effective filing date of the claimed invention for knowledge generally available within the catalytic production of dimethyl ether art regarding the production of dimethyl ether in a TiO2-ZrO2 catalytic process for the further production of a mercaptan, see MPEP 2143 B & G and 2141, for the benefit of using a catalyst that shows better performance in terms of activity, higher selectivity, and most importantly stability towards water, see Vishwanathan, All of Pg. 23, reaction scheme (1); and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as metal oxide sulfhydrolysis catalyst with the optimal conversion of methanol, selectivity in the formation of dimethyl sulfide, and selectivity with respect to methanethiol, i.e., TiO2 and ZrO2, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, ““[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted)”, see MPEP 2144.06.
Double Patenting
For clarity between the new, modified, and maintained rejections, the specific new and modified rejections are in italics.
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 1 and 7-10 stand provisionally rejected in modified form and claims 18 and 19 are newly rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 8 of copending Application No. 18/567,183 to Fremy et al. (hereinafter Fremy) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, the claims of Fremy recite a sulfhydrolysis process (Claim 1), wherein a dialkyl sulfide is reacted with hydrogen sulfide (H2S) in the presence ZrO2 and/or TiO2 as catalyst(s), to obtain at least one mercaptan (Claims 1 and 7), wherein said catalyst(s) consists essentially of TiO2 and/or ZrO2 and does not comprise any alkali metal oxide (Claim 7; See Pgs. 8-9 of Fremy specification, non-promoted is 0% wt. alkali metal oxide), wherein the H2S/dialkyl sulfide mole ratio is between 0.1/1 and 50/1 (Claim 8).
Regarding claim 7, the claims of Fremy recite a process for preparing mercaptan(s) (Claim 1), comprising:
- preparing mercaptan(s) and dialkyl sulfide(s) from at least one alcohol and H2S (Claim 1), and
- reacting said dialkyl sulfide(s) produced with H2S according to the sulfhydrolysis process as defined in claim 1, to obtain said mercaptan(s) (Claims 1 and 7).
Regarding claim 8, the claims of Fremy recite comprising:
A) introducing a stream comprising H2S and a stream comprising at least one alcohol into a first reactor (Claim 1);
B) reacting the two streams to obtain an outlet stream comprising at least one mercaptan, at least one dialkyl sulfide and optionally H2S (Claim 1);
C) separating the outlet stream obtained from step B) into:
- a stream comprising the mercaptan(s),
- a stream comprising the dialkyl sulfide(s), and
- optionally a stream comprising H2S (Claim 1);
D) introducing the stream comprising the dialkyl sulfide(s) into a second reactor with a stream of H2S (Claim 1);
E) reacting the two streams according to the sulfhydrolysis process to obtain an outlet stream comprising said mercaptan(s) and optionally H2S (Claim 1);
F) optionally recycling the stream of H2S obtained from step C) into step A) (optionally not included).
Regarding claim 9, the claims of Fremy recite wherein the outlet stream from the second reactor of step E) is recycled into the first reactor of step A) (Claim 1).
Regarding claim 10, the claims of Fremy recite comprising:
a) introducing a stream comprising a mercaptan and H2S (Claim 1, step G stream F4 goes back to step A) and a stream comprising an alcohol into a first reactor (Claim 1);
b) reacting the two streams to obtain an outlet stream comprising the mercaptan, a dialkyl sulphide and optionally H2S (Claim 1);
c) separating the outlet stream obtained from step b) into:
- a stream comprising the mercaptan;
- a stream comprising the dialkyl sulphide; and
- optionally a stream comprising H2S (Claim 1);
d) introducing the stream comprising the dialkyl sulphide into a second reactor with a stream of H2S (Claim 1);
e) reacting the two streams according to the sulfhydrolysis process to obtain an outlet stream comprising the mercaptan and H2S (Claim 1);
f) introducing the outlet stream obtained from step e) into the reactor of step a) (Claims 1 and 9);
g) optionally recovering the stream comprising the mercaptan obtained from step c) (optionally not included); and
h) optionally recycling the stream of H2S obtained from step c) into step a) (optionally not included).
Regarding claims 18 and 19, the claims of Fremy recite the catalysts is selected from non-promoted ZrO2 and TiO2 and does not contain phosphorus (Claim 7; See Pgs. 8-9 of Fremy specification, non-promoted is 0% wt. alkali metal oxide).
Claims 3, 4, 6, 12, 13, 15, and 16 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/567,183 to Fremy et al. (hereinafter Fremy) in view of Mashkina (“Heterogeneous catalytic synthesis of alkanethiols and dialkyl sulfides from alcohols and hydrogen sulfide”, 1995, Russian Chemical Reviews, Vol. 64, No. 12, Pgs. 1131-1147).
This is a provisional nonstatutory double patenting rejection.
The claims of Fremy do not recite the limitations of instant application claims 3, 4, 6, 12, 13, 15, and 16.
Mashkina teaches the conversion of alcohol, such as methanol, upon contact with hydrogen sulfide, H2S, to dimethyl sulfide, (CH3)2S, which converts to methyl mercaptan, 2 CH3SH, via contact with the hydrogen sulfide and methanol, CH3OH, where the reaction of alcohols with hydrogen sulfide is accelerated, albeit to different extents, under only l or only ZrO2 catalytic conditions at a temperature of 360 ◦C, see Pg. 1132, II.-1. Metal oxides and sulfides, specifically Table 1, and the reaction of methanol with hydrogen sulfide results in the following reactions, specifically to produce methyl mercaptan, 2 CH3SH, and dimethyl sulfide, (CH3)2S, the dimethyl sulfide further reacts in the reversible reaction where methyl mercaptan, 2 CH3SH, is further produced by the reaction of dimethyl sulfide, (CH3)2S, with hydrogen sulfide, H2S, see Pg. 1138, III. The mechanism of conversion of alcohols into thiols by hydrogen sulfide, Col. 1-Col. 2, Second Para. and the below reaction schemes
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400
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. Metal oxides and sulfides, specifically Table 1, catalyst of ZrO2 only and catalyst of TiO2 only, see Pg. 1132, II.-1. Metal oxides and sulfides, [deleted] meeting:
Within the reaction temperature range in instant application claim 4;
The specific dimethyl sulfide in instant application claim 6;
The process in instant application claim 15, and in instant application claim 16;
The catalysts consisting of only TiO2 in instant application claim 12; and,
The catalysts consisting of only ZrO2 in instant application claim 13.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the claims of Fremy to rearrange the mercaptan production method to adjust the reactant concentrations and reaction temperature, see MPEP 2144.05 II., and to use the mercaptan production process, concentrations, temperature, catalysts, and reactants as taught by Mashkina with a reasonable predictability of success for the purpose of the production of methyl mercaptan with high selectivity via the efficient catalytic conversion of dimethyl sulfide using a catalyst that does not contain an alkali metal oxide having good water stability, see Mashkina, Pg. 1132, II.-1. Metal oxides and sulfide, Pg. 1137, Col. 2, Last Para., Pgs. 1142-1143, 5. Kinetics.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since both the claims of Fremy and Mashkina teach the production of mercaptan using a catalyst that does not contain an alkali metal oxide, a person of ordinary skill in the art has good reason to produce a mercaptan by pursuing the known options within their technical grasp for the benefit of the production of methyl mercaptan with high selectivity via the efficient catalytic conversion of dimethyl sulfide using a catalyst that does not contain an alkali metal oxide having good water stability, see Mashkina, Pg. 1132, II.-1. Metal oxides and sulfide, Pg. 1137, Col. 2, Last Para., Pgs. 1142-1143, 5. Kinetics and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as reactant concentrations and temperatures “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Selection of a known material, such as metal oxide sulfhydrolysis catalyst and dialkyl sulfide, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claims 14 and 17 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/567,183 to Fremy et al. (hereinafter Fremy) in view of Vishwanathan et al. (“Surface properties and catalytic activity of TiO2–ZrO2 mixed oxides in dehydration of methanol to dimethyl ether”, July 2004, Catalysis Letters, Vol. 96, Nos. 1-2, Pgs. 23-28, hereinafter Vishwanathan).
Regarding claim 14, the claims of Fremy recite a process for preparing mercaptan(s) (Claim 1), comprising:
- preparing mercaptan(s) and dialkyl sulfide(s) from at least one alcohol and H2S (Claim 1), and
- reacting said dialkyl sulfide(s) produced with H2S according to the sulfhydrolysis process as defined in claim 1, to obtain said mercaptan(s) (Claims 1 and 7).
The claims of Fremy do not recite the consisting of ZrO2 and TiO2 catalyst in instant application claims 14 and 17.
Vishwanathan relates to the problem to be solved of the conversion of methanol over oxides to form dimethyl ether where water is one of the products of the reaction, see Abstract, All of Pg. 23 and reaction scheme (1), where the conversion oxide catalysts consist of varying mol % TiO2-ZrO2 catalysts, or a 100 mol % ZrO2 catalyst, or a 100 mol % TiO2 catalyst or a γ-Al2O3 catalyst, see Abstract, All of Pg. 26, Table 1, meeting the specific consisting of only TiO2-ZrO2 catalyst in instant application claim 14 and in instant application claim 17.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the claims of Fremy to use the TiO2-ZrO2 catalyst as taught by Vishwanathan with a reasonable predictability of success for the purpose of catalytically obtaining dimethyl ether by using a catalysts that shows better performance in terms of activity, higher selectivity and most importantly stability towards water, see Vishwanathan, All of Pg. 23 and reaction scheme (1).
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since both the claims of Fremy and Vishwanathan teach the TiO2 catalyst and the ZrO2 catalysts, a person of ordinary skill in the art has good reason to produce dimethyl ether in a TiO2-ZrO2 catalytic process for the further production of a mercaptan by pursuing the known options within their technical grasp for the benefit of using a catalysts that shows better performance in terms of activity, higher selectivity and most importantly stability towards water, see Vishwanathan, All of Pg. 23, reaction scheme (1), and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as metal oxide sulfhydrolysis catalyst, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699