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 .
DETAILED ACTION
Claims 1-9, 11 and 13-16 of S. Wershofen, et al., US 17/783,367 (06/08/2022) are pending, under examination on merits and are rejected.
Withdrawal of Office Action Finality
A request for continued examination of US 17/783,367 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/13/2025 has been entered.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See, MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III).
Interpretation of Claim term “di- and polyisocyanates of the diphenylmethane series” and “di- and polyisocyanates of the diphenylmethane series”
The independent claim 1 recites the limitation of:
1. . . di- and polyamines of the diphenylmethane series . . . di- and polyisocyanates of the diphenylmethane series . . . .
Neither the specification nor the claim provide a chemical/structural definition for the claimed “di- and polyamines of the diphenylmethane series” nor the claimed “di- and polyisocyanates of the diphenylmethane series”.
The following passage is the most relevant specification disclosure:
Aromatic di- and polyisocyanates are important and versatile raw materials for polyurethane chemistry. In addition to tolylene diisocyanate, the di- and polyisocyanates of the diphenylmethane series (henceforth referred to collectively as MDI) are of particular industrial interest. In all production processes relevant on a large industrial scale, MDI is obtained by phosgenation of the corresponding di- and polyamines of the diphenylmethane series (henceforth referred to collectively as MDA). MDA in turn is prepared by acid-catalyzed reaction of aniline and formaldehyde.
Specification at page 4, line 14-19 (emphasis added). Knauf teaches that the preparation of di- and polyamines of the diphenylmethane series (MDA) by reacting aniline with formaldehyde in the presence of acidic catalysts is well known; di- and polyamines of the diphenylmethane series mean amines and mixtures of amines of the following type:
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Where n is a natural number ≥ 2. See T. Knauf, et al, US 9416094 B2 (2016)(“Knauf”) at col. 1, line 30-44.
In view of the foregoing and consistent with the specification, the terms “di- and polyisocyanates of the diphenylmethane series” and “di- and polyisocyanates of the diphenylmethane series” are broadly and reasonably interpreted as having the structures respectively as indicated below:
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Claim Rejections - 35 USC § 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Claim 13 is rejected under 35 U.S.C. 112(b) as indefinite because there is insufficient antecedent basis for this claim as claim 13 is depending on a canceled claim.
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.
Note: the 103 rejection is modified according to claim amendment.
Claims 1-9, 11 and 13-16 are rejected under 35 USC § 103 Rejection over J. Trujillo Vilaboy, et al, WO2009077795A1(2009)(“Trujillo”) in view of R. Yamamoto, et al. US 4193932(1980)(“Yamamoto”) and N. Kantarci, et al. 40(7) Process Biochemistry, 2263-2283 (2005)(“ Kantarci”).
J. Trujillo Vilaboy, et al, WO2009077795A1 (2009)(“Trujillo”)
Trujillo teaches a process for preparing mixtures of diphenylmethane diisocyanates and polyphenylpolymethylene polyisocyanates, known as PMDI, having a higher Hunter Lab colour (L) number by reaction of the corresponding mixtures of diphenylmethanediamines and polyphenylpolymethylenepolyamines, known as PMDA, with phosgene in the presence of at least one inert organic solvent. Trujillo at page 1, line 5-10, emphasis added..
Trujillo teaches that PMDI (diphenylmethane diisocyanates and polyphenylpolymethylene polyisocyanates) is an industrially important isocyanate for producing rigid polyurethane foams which are preferably used as insulation material in the building industry, as insulating foam in the refrigeration appliance industry and as sandwich panel construction material. Trujillo at page 1, line 12-15.
Trujillo teaches working examples for his method, such as Working Examples 1-2 as follows:
Examples 1 and 2
The bulk sample from phosgenation reaction containing about 16 % (m/m) MMDI + PMDI, o-DCB as solvent, solved phosgene, halogen-containing impurities and HCl (composition shown in Table 1) was introduced into a packed column where the majority of the solved gases (HCl and phosgene) and a part of o-DCB was removed by stripping with an inert gas at a temperature at 145 °C.
The bottoms product of this column containing about 85 to 90 % (m/m) PMDI+MMDI and about 10 to 15 % (m/m) o-DCB was introduced into a flash tank operating at a temperature specified in Table 1 under vacuum, where the remaining phosgene and the majority of the solvent were removed, and chlorine- and bromine-containing impurities were broken down and the breakdown products of the chlorinated impurities, notably HCl and phosgene, were stripped out from the MMDI + PMDI mixture, along with any remaining solvent (dechlorination). Acidity and hydrolysable chlorine levels of the PMDI mixture were monitored and the thermal treatment was continued until the acidity and hydrolysable chlorine levels of the PMDI mixture were reduced to the levels specified in Table 1.
The crude PMDI mixture was then introduced into a second flash tank operating at a temperature range of 180 to 220 ºC to reduce the dimer content and to distil out MMDI under vacuum.
The solvent and phosgene contents, acidity and hydrolysable chlorine levels and Hunter Lab colour (L) values of the phosgenation reaction mixture, the temperatures of dechlorination, as well as the solvent and phosgene contents, acidity and hydrolysable chlorine levels of the PMDI obtained at the end of the dechlorination step, and L values of the PMDI product as measured after removal of the MMDI by the second heat treatment are shown in Table 1.
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Trujillo at page 13-14, Examples 1 and 2, emphasis added.
The process of Trujillo Examples 1 and 2 comprises:
(i). reaction of the corresponding mixtures of diphenylmethanediamines and polyphenylpolymethylenepolyamines, known as PMDA, with phosgene in the presence of at least one inert organic solvent which is o-DCB to obtain a mixture of MMDI + PMDI, solved phosgene, halogen-containing impurities and HCl; which meets the claim limitation of the instant claim 1:
Claim 1 . . . (I) reacting di- and polyamines of the diphenylmethane series with phosgene in the presence of a solvent in a phosgenation reactor to obtain (a) a first gaseous product stream containing hydrogen chloride and phosgene and (b) a first liquid product stream containing di- and polyisocyanates of the diphenylmethane series, phosgene and solvent.
(ii). Removing of the majority of the solved gases (HCl and phosgene) and a part of o-DCB from the product containing about 85 to 90 % (m/m) PMDI+MMDI and about 10 to 15 % (m/m) o-DCB; which meets the claim limitation of the instant claim 1:
(III) separating phosgene from the first liquid product stream
(iii). Separating the majority of the solvent from the MMDI + PMDI mixture, along with any remaining solvent (dechlorination), which meets the claim limitation of the instant claim 1:
(IV) separating solvent from the third liquid product stream to obtain (a) a fourth gaseous product stream containing solvent and (b) a fourth liquid product stream containing diisocyanates of the diphenylmethane series, wherein the separation of the solvent is not followed by an inert gas treatment of the fourth liquid product stream.
Difference Between Trujillo and the Claims
The Trujillo process differs from the instant claim 1 in that Trujillo does not teach the claim 1 limitations of :
Claim 1 . . . wherein the process further comprises a treatment with gaseous hydrogen chloride that is distinct from step (III) in which:
(VII) (a) the first liquid product stream obtained in step (I) is treated with a gaseous hydrogen chloride stream and then supplied directly to step (II) or step (III),
(b) the first reaction mixture formed in the reactor for carbamoyl chloride cleavage from step (II) is treated with a gaseous hydrogen chloride stream,
(c) the second liquid product stream obtained in step (II) is treated with a gaseous hydrogen chloride stream and then supplied directly to step (III),
(d) the second reaction mixture formed in the dephosgenation apparatus from step (III) is treated with a gaseous hydrogen chloride stream
or
(e) the third liquid product stream obtained in step (III) is treated with a gaseous hydrogen chloride stream and then supplied directly to step (IV),
wherein the treatment with the gaseous hydrogen chloride stream of(VII)is performed in a single stage in a bubble column or in a tray column, wherein a contact time of the gaseous hydrogen chloride stream with the liquid product stream to be treated or the reaction mixture to be treated in the range from 1 min to 25 min is established, and
the treatment with the gaseous hydrogen chloride stream in step (VII) is performed at a temperature of the product stream to be treated or of the product mixture to be treated in the range from 70°C to 135°C and at a temperature of the hydrogen chloride gas stream employed in the range from 20°C to 135°C.
R. Yamamoto, et al.US 4193932 (1980) (“Yamamoto”)
Yamamoto teaches that:
While a number of processes for preparing organic isocyanates are known, one of the commonly used processes comprises reacting an appropriate amine with phosgene in the presence of an inert organic solvent to form an isocyanate, degassing the reaction mixture, recovering the solvent, and purifying the reaction product as required. The isocyanate thus obtained, especially a crude one, is contaminated with impurities including acid substances and hydrolyzable chlorine-containing substances. Since such impurities exercise a remarkably adverse effect on the reactivity of the isocyanate in the manufacture of polyurethanes, it is very important to remove or minimize them.
Yamamoto at col. 1, line 17-29, emphasis added.
Yamamoto teaches an improved process for preparing organic isocyanates which process enables one to minimize the acid substances and hydrolyzable chlorine-containing substances included in the reaction product of an organic amine with phosgene through a treatment of the reaction product with hydrogen chloride gas in the presence of an organic solvent. Yamamoto at col. 2, line 26-32; and line 62-64. Emphasis added.
Yamamoto teaches that:
In order to pass hydrogen chloride gas through the reaction product of an organic amine with phosgene, any of the various methods well known in the art can be used. It is preferable, however, that the reaction product is introduced into a packed column where it is heated and brought into contact with hydrogen chloride gas being supplied in counterflow therewith. The hydrogen chloride gas may be used in combination with an inert gas such as nitrogen gas, though it is not necessary in ordinary cases. The time required for the treatment depends on the temperature at which the treatment is carried out. Preferably, the treatment is carried out at a temperature of from 140° to 230° C. for a period of from 0.5 to 5 hours. The total amount of hydrogen chloride gas which is used in the above treatment is preferably from 0.5 to 100 I per 1.0 Kg of the solution of the reaction product in the inert organic solvent. At temperatures higher than the boiling point of the inert organic solvent used or the isocyanate formed, the treatment is carried out under pressure.
Yamamoto at col. 3, line 5-24. Emphasis added.
In a plant for the manufacture of organic isocyanates, hydrogen chloride gas is generated in large quantities(because hydrogen chloride is formed in an amount of 2 moles per equivalent of amine groups). This hydrogen chloride gas contains unreacted phosgene, which can be recovered by absorbing it in a solvent. The hydrogen chloride gas thus freed of unreacted phosgene, which still contains trace amounts of phosgene and solvent, may be directly used in the process of the invention. The use of such hydrogen chloride gas permits the phosgene dissolved in the reaction product to be driven away, resulting in a higher recovery of phosgene and a higher degree of utilization of hydrogen chloride gas. This makes the process of the invention very suitable for industrial purposes.
Yamamoto at col. 3, line 25-39. Emphasis added.
Thus, Yamamoto fairly teaches one ordinary skill that the hydrogen chloride gas used for the treatment of the crude isocyanate product can be a hydrogen chloride gas recovered from the by-product formed during the manufacture of organic isocyanates and the recovered hydrogen chloride gas is freed of or contain trace amounts of phosgene.
Yamamoto teaches that the method is most preferably to the preparation of polymethylene polyphenyl polyisocyanate. Yamamoto at col. 3, line 59-60.
N. Kantarci, et al. 40(7) Process Biochemistry, 2263-2283 (2005)(“ Kantarci”)
Kantarci reviews on bubble columns and teaches that:
Bubble columns are intensively used as multiphase contactors and reactors in chemical, biochemical and petrochemical industries. They provide several advantages during operation and maintenance such as high heat and mass transfer rates, compactness and low operating and maintenance costs.
Kantarci at abstract.
Obviousness Rational of the Claims
It would have been prima facie obvious for one skilled artisan to arrive at the instantly claimed invention based on the teachings from Trujillo, Yamamoto and Kantarci with a reasonable expectation of success before the effective filing date of the claimed invention.
Claim 1-3 and 16 are obvious because one ordinary skill seeking preparation of polymethylene polyphenyl polyisocyanate for producing rigid polyurethane foams is motivated modify the Trujillo process by treatment of the Trujillo product mixture from the step (i) with gaseous hydrogen chloride stream as taught by Yamamoto. One ordinary skill is motivated to do so with a reasonable expectation of success because:
(a). Trujillo teaches that PMDI is an industrially important isocyanate for producing rigid polyurethane foams which are preferably used as insulation material in the building industry, as insulating foam in the refrigeration appliance industry and as sandwich panel construction material. Trujillo at page 1, line 12-15;
(b). Yamamoto teaches that PMDI crude product made from amine and phosgene is contaminated with impurities including acid substances and hydrolyzable chlorine-containing substances; and such impurities exercise a remarkably adverse effect on the reactivity of the isocyanate in the manufacture of polyurethanes;
(c). Yamamoto teaches that treatment of the PMDI crude product made from amine and phosgene with hydrogen chloride gas in the presence of an organic solvent enables one to minimize the acid substances and hydrolyzable chlorine-containing substances included in the reaction product.
One ordinary skilled artisan is motivated conduct the hydrogen chloride gas treatment at a temperature of 140°C with a hydrogen chloride gas stream of 140°C. [a] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP2144.05.I. Herein, the claimed 135° C is merely close with the prior art 140°C, therefore, a prima facie case of obviousness exists.
One ordinary skilled artisan is motivated to do so with a reasonable expectation of success because Yamamoto teaches that the treatment is preferably carried out at a temperature of from 140° to 230° C.
Regarding the claimed time of treatment, one ordinary skilled artisan is motivated to optimize the time of treatment into the claimed ranges based on the total amount of crude product, the flow rate of hydrogen chloride gas and efficiency of heat exchange. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Herein, neither prior art nor the specification provides evidence the claimed treating time ranges is critical to the claimed process, rather the specification teaches that:
a contact time of the gaseous hydrogen chloride stream with the product stream to be treated in the range from 1 min to less than 30 min, preferably 1 min to 25 min, particularly preferably 1 min to 20 min, very particularly preferably 2 min to 20 min, exceptionally preferably 4 min to 20 min.
Specification at page 8, line 23-26, emphasis added.
One ordinary skill is further motivated to modify the proposed method by conducting the hydrogen chloride gas treatment in a bubble column with a reasonable expectation of success because:
(a). Yamamoto teaches any of the various methods well known in the art can be used for the treatment; and
(b). Kantarci teaches that bubble columns are intensively used as multiphase contactors and reactors in chemical industries; and they provide several advantages during operation and maintenance such as high heat and mass transfer rates, compactness and low operating and maintenance costs.
Thus, the proposed process meets each and every limitation of claims 1-3 and 16, therefore, claims 1-3 and 16 are obvious. The rational supporting the proposed modification is combining prior art elements according to known methods to yield predictable results. MPEP 2143. I (A)
Claim 4 is obvious because per Table 1 Trujillo teaches that the concentration of phosgene is no detectable in the step (ii), given the claimed range from 0.001 ppm to 1000 ppm is very broad, there is a reasonable expectation that the concentration of phosgene (no detectable ) in the Trujillo product mixture of the step (ii) is 0.001 ppm to 1000 ppm.1
With regards to claims 5-6, Yamamoto teaches:
In a plant for the manufacture of organic isocyanates, hydrogen chloride gas is generated in large quantities(because hydrogen chloride is formed in an amount of 2 moles per equivalent of amine groups). This hydrogen chloride gas contains unreacted phosgene, which can be recovered by absorbing it in a solvent. The hydrogen chloride gas thus freed of unreacted phosgene, which still contains trace amounts of phosgene and solvent, may be directly used in the process of the invention. The use of such hydrogen chloride gas permits the phosgene dissolved in the reaction product to be driven away, resulting in a higher recovery of phosgene and a higher degree of utilization of hydrogen chloride gas.
Yamamoto at col. 3, line 25-39. Emphasis added.
Thus, Yamamoto fairly teaches one ordinary skill (1) to separate the unreacted phosgene with an absorbing solvent from the hydrogen chloride gas stream from the reaction and the hydrogen chloride gas from the treatment of the reaction mixture, (2) the recovered hydrogen chloride gas is freed of or only contains trace amounts of phosgene and can be used to treat the organic isocyanates crude in the next round.
Claim 5 is obvious because one ordinary skill is also motivated to modify the proposed method by using the recovered hydrogen chloride from the reaction and the hydrogen chloride gas from the treatment of the reaction mixture because Yamamoto recovered hydrogen chloride gas is freed of phosgene (0.00%) or only contains trace amounts of phosgene and can be used to treat the organic isocyanates crude in the next round. [a] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP2144.05.I. Herein, the claimed 10 ppm (0.001%) is merely close with the prior art phosgene free (0 %), therefore, a prima facie case of obviousness exists. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP § 2144.04(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Herein, neither prior art nor the specification provides evidence the claimed treating time ranges is critical to the claimed process, rather the specification teaches that:
the gaseous hydrogen chloride stream employed in step (VII) contains phosgene in a mass fraction based on its total mass in the range from 1 ppm to 10 000 ppm, preferably 10 ppm to 10 000 ppm, particularly preferably in the range from 10 ppm to 1000 ppm.
Specification at page 7, line 20-23.
Claim 6 is obvious because one ordinary skill is motivated to (i) combine hydrogen chloride from the reaction and the hydrogen chloride gas, and (ii). recover the unreacted phosgene with from the combination with a an absorbing solvent as taught by Yamamoto, thus arrive at a method meeting each and every limitation of claim 6, claim 6 is obvious.
Claim 7 is obvious because one ordinary skill is further motivated to optimize the proposed method by adjust the molar ratio between the hydrogen chloride gas stream and the polymethylene polyphenyl polyisocyanate to the claimed ranges as Yamamoto teaches that “The total amount of hydrogen chloride gas which is used in the above treatment is preferably from 0.5 to 100 liter per 1.0 Kg of the solution of the reaction product in the inert organic solvent” See Yamamoto at col. 3, line 18-21. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Herein, neither prior art nor the specification provides evidence the claimed ration between the hydrogen chloride gas stream and the polymethylene polyphenyl polyisocyanate is critical to the claimed process. See the specification at page 14, line 20-24.
Claims 8-9 are obvious because one ordinary skill is motivated to conduct the treatment in countercurrent manner or in concurrent manner. The rational supporting it is the “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. MPEP 2143.I.
Claim 11 is obvious because Per Example 1, Yamamoto teaches hydrogen chloride gas stream treatment is conducted at 170° C which is isothermally. See Yamamoto Example 1.
Claims 14-15 are obvious the Yamamoto Example 1 hydrogen chloride gas stream treatment is conducted at atmospheric pressure.
Applicant’s Argument
The Declaration under 37 CFR 1.132 filed on 11/13/2025 is insufficient to overcome the rejection of 1-9, 11 and 13-16 based upon Yamamoto cited for the 103 rejection made above.
To traverse the 103 rejection as set forth in the last Office action, inventor Anke Hielscher filed Declaration on 11/13/2025 (“Declaration”) to prove that:
(i). a person of ordinary skill in the art would be appraised that contact time could be reduced if temperature were increased or, on the other hand, if temperature were decreased, then contact time would need to be increased; and
(ii) phosgene is not necessarily present in the recovered hydrogen chloride gas in Yamamoto in an amount of 10 to 1000 ppm.
Regarding the time of hydrogen chloride gas treatment, while increasing the temperature could decrease the reaction time, however, the temperature of treatment is not the sole factor that effect of the time of treatment. In addition to the temperature, other factors such as the total amount of crude product, the flow rate of hydrogen chloride gas and efficiency of heat exchange also may have an important effect on the time of treatment. Therefore, one ordinary skilled artisan has a motivation to optimize the time of treatment into the claimed ranges based on his overall condition (temperature, flowrate of the hydrogen chloride gas, the total amount of crude product). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the concentration of phosgene, Examiner agrees that:
the concentration of phosgene in the recovered hydrogen chloride gas of Yamamoto would depend on several particulars related to the described solvent absorption. The particulars include, for example, the temperature at which the solvent absorption is conducted, the pressure at which the solvent absorption is conducted, the separation efficiency of the equipment used for the solvent absorption, and the amount of absorbing solvent employed.
However, given one ordinary skill in the art would be appraised that factors such as the temperature at which the solvent absorption is conducted, the pressure at which the solvent absorption is conducted, the separation efficiency of the equipment used for the solvent absorption, and the amount of absorbing solvent employed are result-effective parameters for the concentration of phosgene in Yamamoto’s recovered hydrogen chloride gas, one ordinary skill in the art has a motivation to optimize these factor to obtain a recovered hydrogen chloride gas which is freed of phosgene. As mentioned in the rejection above that [a] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP2144.05.I. Herein, the claimed 10 ppm (0.001%) is merely close with the prior art phosgene free (0%), therefore, a prima facie case of obviousness exists.
Therefore, the Declaration under 37 CFR 1.132 filed on 11/13/2025 is insufficient to overcome the 103 rejection made above.
Applicant’s argument on the 103 rejection with the Declaration under 37 CFR 1.132 filed on 11/13/2025 has been fully considered but not persuasive for the same reason as given above for the detail discussion of the Declaration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art. Stated differently, when the examiner "has reason to believe" that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the limitation cannot be met by the prior art reference. MPEP 2112(V), see also, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Chudik, 674 F. App'x 1011, 1012 (Fed. Cir. 2017) (both citing In re Swinehart, 439 F.2d 210, 212, 58 C.C.P.A. 1027 (C.C.P.A. 1971)).