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 .
Status of the Claims
Claims 1, 3, 6, and 9 are currently pending.
Claim 9 is new.
Claims 1 is currently amended.
Claims 2, 5, and 8 are currently cancelled.
Claims 4 and 7 were previously cancelled.
Response to Amendments
Applicant’s amendments filed on 23 June 2026 are acknowledged.
Claim Objections
Applicant’s amendments to claim 1 are sufficient to overcome the
objections of the claim. The claim has been amended to correct the typographical mistakes. The objections are withdrawn.
Claim Rejections - 35 USC § 102
Applicant’s cancellation of claim 8 is sufficient to overcome the rejection of claim 8 under 35 U.S.C. 102(a)(1) as being anticipated by Qingcai et al. (CN105582926, published 18 May 2016, hereinafter Qingcai ‘926). The rejection is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s cancellation of claims and the amendment to claim 1 adding a specific Pd/C catalyst not specifically taught by Qingcai is sufficient to overcome the rejections of:
Claims 1-3 and 5 under 35 U.S.C. 103 as being unpatentable over Qingcai et al. (CN105582926, published 18 May 2016, hereinafter Qingcai ‘926); and,
Claims 1-3, 5, and 6 under 35 U.S.C. 103 as being unpatentable over Qingcai et al. (CN105582926, published 18 May 2016, hereinafter Qingcai ‘926), as applied to the 35 USC 103 rejection of claims 1-3 and 5 above, in further view of Chen et al., (“High-Throughput Microporous Tube-in-Tube Microreactor as Novel Gas–Liquid Contactor: Mass Transfer Study”, published January 2011, AIChE Journal, Vol. 57, No. 1, Pgs. 239-249, hereinafter Chen).
The above rejections are withdrawn.
Due solely to the amendment to claim 1, new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed on 23 June 2026 have been fully considered but they are either moot or not persuasive.
Applicant’s argue that Qingcai and Chen do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are either moot or not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 23 June 2026 with respect to Qingcai have been considered but are moot because the new ground of rejection does not rely on Qingcai applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to Applicant’s arguments on pages 6-7 of the remarks filed on 23 June 2026 that “[b]y simply controlling the TPA concentration and utilizing a conventional Pd/C catalyst, the claimed method unexpectedly achieves a remarkably high trans-isomer rate of 60 wt% or more in the resulting CHDA” and “the method of claim 1 surprisingly achieves a high trans-isomer rate (60 wt% or more) without an additional isomerization step, even when using the conventional Pd/C catalyst, by strictly controlling the TPA concentration within the claimed range of 12 to 22 wt%”.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious, see Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In addition, “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP 716.02(d).
Instant application claim 1 states “wherein the terephthalic acid is included in a content of 12 to 22 wt%” and “wherein the hydrogenation catalyst comprises palladium(Pd), which is supported on a carbon carrier, wherein the method is performed without an isomerization reaction step, and wherein the 1,4-cyclohexane dicarboxylic acid comprises 60_wt% or more of trans isomers”. Applicant’s argue, as stated above, the combination of the TPA concentration and the Pd/C catalyst “surprisingly achieves a high trans-isomer rate (60 wt% or more) without an additional isomerization step”; however, Applicant’s have not provided a proper comparison to the closest prior art and have not established test points inside and outside the claimed range of the combination of the TPA concentration and the Pd/C catalyst in order to support the argument of surprising and unexpected results, see MPEP 716.02(e).
The instant specification is relied upon for any comparison tests/examples, specifically Table 1. Examples 1-4 detail 12-22 wt% TPA with a Pd/C catalyst all with a trans CHDA content of above 60 wt%. Comparative Example 1 details 0.6 wt% TPA with a Pd/C catalyst with a trans CHDA content of 38 wt%. Comparative Example 2 details, as calculated by the examiner, 76.2 wt% TPA with a Pd/C catalyst, where the hydrogenation reaction could not be performed. The instant specification does not provide a comparison to the closest prior art and tests using a differing catalyst and tests closer yet outside the high wt% TPC range of 22 wt%, where hydrogenation can be performed, in order to support the argument of surprising and unexpected results relating to the high trans-isomer rate (60 wt% or more) without an additional isomerization step by applying the combination of the TPA concentration and the Pd/C catalyst, see MPEP 716.02(e).
In addition, it is well known that supplying zero to no reactant to a reactor will yield zero to no desired product. Comparing Example 1 with 12 wt% TPA with a trans CHDA content of 66 wt% to Comparative Example 1 with 0.6 wt% TPA with a trans CHDA content of 38 wt%. It appears 20 times the amount of TPA is used in Example 1 than in Comparative Example 1 for only a 28% increase in the trans CHDA content. This appears to indicate lower amounts of between 0.6-12 wt% TPA may be used to achieve the instantly claimed high trans-isomer rate of greater than 60 wt%.
For all of the reasons indicated above, Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on page 6 of the remarks filed on 23 June 2026 that “QINCHAI states that when a 5 wt% TPA solution is hydrogenated using a 0.5 wt% Pd/C catalyst at high temperatures (e.g., 260*C to 270*C), the selectivity of CHDA decreases significantly, and a considerable amount of decarboxylation by-products are generated” and “see paragraph [0007] and [0092] of QINCHAI”. Qingcai does not state the above regarding the % TPA solution, % Pd/C, and the high temperature range, and the translation applied in the previous office action dated 23 March 2026 (hereinafter POA) does not have a paragraph [0092] of Qingcai.
For the reasons indicated above, Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on page 7 of the remarks filed on 23 June 2026 that “CHEN relates to a “microporous tube-in-tube microreactor,” which operates on a completely different scale and mechanism compared to the conventional reactor of QINCHAI. Combining the specific interfacial area of a microreactor from CHEN with the process of QINCHAI is based on impermissible hindsight.”
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. Only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made has been applied to determine obviousness.
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).
In this case, Chen is not applied to teach a microporous tube-in-tube microreactor. As stated on pages 13-16 of the POA, “Chen is in the known prior art field of gas-liquid contacting reactors, such as “gas–liquid catalytic hydrogenation” reactors, see Abstract; Pg. 240, Col. 1, Second Full Para.”, “where “Table 1 gives a comparison of the liquid side volumetric mass transfer coefficient kLα and the measured interfacial area α of the MTMCR with those of other typical gas–liquid contactors used in the laboratories and industries reported”, such as a stirred tank reactor at 75 to 170 m2/m3, see Pg. 247, Col. 1, Comparison of liquid side volumetric mass transfer coefficient and interfacial area in different gas–liquid reactors, Table 1”. Chen is applied to teach hydrogenation gas–liquid reactors, such as a stirred tank reactor at 75 to 170 m2/m3.
A 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. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the stirring conditions of a hydrogenation reactor by applying the known technique of the bubble generation interfacial area for hydrogen gas liquid contact teachings of Chen with a reasonable predictability of maintaining optimal gas-liquid mass transfer rates by determining the correct proportion of raw material and hydrogen contact needed while limiting the formation of resultant isomers and by-products, see Chen, Pg. 240, Col. 1, Second Full Para.-Last Para.; Pg. 247, Col. 1, Table 1; and MPEP 2143 I. B-D.
For all of the reasons indicated above, Applicant’s above arguments are not persuasive.
In the Spirit of Compact Prosecution
While the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
New Rejections Based on the Amendments to the Claims filed on
23 June 2026
Claim Objections
Claim 1 is newly objected to because of the following informalities:
Claim 1, line 12 states “palladium(Pd)”, which appears to include a typographical mistake. The claim is interpreted to state “palladium (Pd)”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is newly rejection and claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Endou et al. (US20050014973, published 20 January 2005, hereinafter Endou).
Endou is in the known prior art of processes for producing “crude CHDA obtained by hydrogenating the benzene ring of either TPA or a derivative thereof”, see Paras. [0050]-[0063], where “trans-1,4-cyclohexanedicarboxylic acid (hereinafter referred to as t-CHDA)”, “the crude CHDA is crude CHDA obtained by hydrogenating terephthalic acid (hereinafter referred to as TPA) in a liquid phase in the presence of a hydrogenation catalyst”, and “in the crude CHDA, the proportion of the trans isomer to the CHDA, t/(c+t), is 0.5 or higher”, where the higher the trans content in the crude CHDA the higher the trans content in the next isomerization step if further isomerization is desired, see Claims 1, 6, and 7; Paras. [0002];[0064]-[0066].
Regarding the limitations of instant application claims 1 and 9, Endou discloses in the specific express embodiment of the Example 7 hydrogenation reaction where “[a]n aqueous solution containing 20% by weight TPA and 2% by weight 5%-Pd/C (manufactured by N.E. Chemcat) was introduced into an induction stirring type autoclave made of stainless steel. After nitrogen displacement, the contents were heated at a hydrogen pressure of 1 MPa and held for 2 hours at 150° C. and a hydrogen pressure of 5 MPa” aka 50 bar to obtain crude CHDA, see Paras. [0165]-[0166], and after the hydrogenation reaction the crude CHDA reaction product contained at least 78.4% by weight t-CHDA, aka “trans-1,4-cyclohexanedicarboxylic acid (t-CHDA)”, see Abstract; Para. [0166], Example 7, where the “hydrogen pressure in the hydrogenation reaction is generally from 0.2 to 30 MPa”, “the proportion of c-CHDA to t-CHDA in the crude CHDA is not particularly limited”, such as the proportion of t-CHDA in the crude CHDA “is generally 1% by weight or higher, preferably 20% by weight or higher. From the standpoint of production efficiency, t/(c+t) is generally 80% by weight or lower”, i.e., t-CHDA/(cis-CHDA + t-CHDA) in the crude CHDA, see generally Paras. [0050]-[0066], meeting:
The method of preparing trans-1,4-cyclohexanedicarboxylic acid (t-CHDA) by supplying aqueous terephthalic acid aka TPA and the specific hydrogenation catalysts, Pd/C, to a hydrogenation reactor with a stirrer while supplying hydrogen gas and stirring to prepare the t-CHDA in instant application claim 1;
Within the concentration range of TPA in instant application claim 1;
Within the hydrogen pressure in instant application claim 1;
Without isomerization the crude CHDA has a t-CHDA concentration within the range in instant application claim 1; and,
The weight ratio of the catalyst is 2% by weight to 20% by weight TPA which is within the range of the weight ratio in instant application claim 9.
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 and 3 are newly rejected and claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Endou et al. (US20050014973, published 20 January 2005, hereinafter Endou) in view of Dehm et al. (US2888484, patented 26 May 1959, hereinafter Dehm).
Regarding the limitations of instant application claims 1 and 9, Endou discloses in the specific express embodiment of the Example 7 hydrogenation reaction where “[a]n aqueous solution containing 20% by weight TPA and 2% by weight 5%-Pd/C (manufactured by N.E. Chemcat) was introduced into an induction stirring type autoclave made of stainless steel. After nitrogen displacement, the contents were heated at a hydrogen pressure of 1 MPa and held for 2 hours at 150° C. and a hydrogen pressure of 5 MPa” aka 50 bar to obtain crude CHDA, see Paras. [0165]-[0166], and after the hydrogenation reaction the crude CHDA reaction product contained at least 78.4% by weight t-CHDA, aka “trans-1,4-cyclohexanedicarboxylic acid (t-CHDA)”, see Abstract; Para. [0166], Example 7, where the “hydrogen pressure in the hydrogenation reaction is generally from 0.2 to 30 MPa”, “the proportion of c-CHDA to t-CHDA in the crude CHDA is not particularly limited”, such as the proportion of t-CHDA in the crude CHDA “is generally 1% by weight or higher, preferably 20% by weight or higher. From the standpoint of production efficiency, t/(c+t) is generally 80% by weight or lower”, i.e., t-CHDA/(cis-CHDA + t-CHDA) in the crude CHDA, see generally Paras. [0050]-[0066], meeting:
The method of preparing trans-1,4-cyclohexanedicarboxylic acid (t-CHDA) by supplying aqueous terephthalic acid aka TPA and the specific hydrogenation catalysts, Pd/C, to a hydrogenation reactor with a stirrer while supplying hydrogen gas and stirring to prepare the t-CHDA in instant application claim 1;
Within the concentration range of TPA in instant application claim 1;
Within the hydrogen pressure in instant application claim 1;
Without isomerization the crude CHDA has a t-CHDA concentration within the range in instant application claim 1; and,
The weight ratio of the catalyst is 2% by weight to 20% by weight TPA which is within the range of the weight ratio in instant application claim 9.
Endou teaches the known prior art of:“(i) A process comprising hydrogenating TPA in a solvent for TPA at 150 to 300° C. and at least 1,000 p.s.i.g. using a palladium catalyst to obtain crude CHDA, dissolving the crude CHDA in an aqueous alkali solution, and then conducting precipitation with an acid to purify (see patent document 1)”, “[Patent Document 1] U.S. Pat. No. 2,888,484”, where “the CHDA obtained is a mixture of c-CHDA (melting point, 170-171° C.) and t-CHDA (melting point, 312-313° C.)” and “[t]he concentration of t-CHDA, which is the target compound, is as low as about from 20 to 50%, although it depends on reaction conditions”, see Paras. [0004]-[0006];[0010];[0023]-[0024].
Endou does not specifically teach the reaction condition limitations of instant application claim 3.
Dehn is in the known prior art field of “a catalytic process for the hydrogenation of terephthalic acid to hexahydroterephthalic acid” aka 1,4-cyclohexanedicarboxylic acid, see Col. 1, Lns. 15-29, where the catalyst is “palladium-on-activated charcoal” and the reaction yields 51.8% “of colorless microcrystals, M.P. 306- 308 C.”, i.e., mostly trans-hexahydroterephthalic acid, see Col. 2, Lns. 6-44, and is applied to teach the same.
Regarding the limitations of instant application claim 3, Dehn teaches “[a] process for the production of hexahydroterephthalic acid which comprises subjecting terephthalic acid to the action of hydrogen at an elevated temperature within the range of 150-300 C. and at a pressure of at least 1000 p.s.i.g. in the presence of a palladium catalyst and in the presence of an inert liquid medium in which terephthalic acid is at least partially soluble under reaction conditions”, where “the inert liquid medium comprises water”, see Claims 1-2; Col. 3, Ln. 67-Col. 4, Ln. 72, meeting:
Within the hydrogenation reaction temperature range in instant application claim 3.
In reference to claim 3, 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 hydrogenation reaction temperature of Endou to the temperature range as taught by the prior art referenced in Endou, i.e., Dehm, with a reasonable predictability of success for the purpose of efficiently carrying out “the hydrogenation of terephthalic acid” “under variable reaction conditions”, such as “a temperature of 200 to 300 C. being most preferred as resulting in the most desirable reaction rates” in order “to provide high yields of hexahydroterephthalic acid as a mixture of cis and trans isomers” using a palladium catalyst, see Dehm, Col. 3, Ln. 67-Col. 4, Ln. 39.
A 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. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the hydrogenation reaction temperature of Endou by applying the known technique of the hydrogenation reaction temperature as taught by Dehm with a reasonable predictability of success for the purpose of efficiently carrying out “the hydrogenation of terephthalic acid” “under variable reaction conditions”, such as “a temperature of 200 to 300 C. being most preferred as resulting in the most desirable reaction rates” in order “to provide high yields of hexahydroterephthalic acid as a mixture of cis and trans isomers” using a palladium catalyst, see Dehm, Col. 3, Ln. 67-Col. 4, Ln. 39; 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 Endou and Dehm both teach the hydrogenation of terephthalic acid to trans 1,4-cyclohexanedicarboxylic acid using a Pd/C catalyst in the same industry, a person of ordinary skill in the art has good reason to modify Endou by relying upon Dehm before the effective filing date of the claimed invention for knowledge generally available within the hydrogenation of terephthalic acid to trans 1,4-cyclohexanedicarboxylic acid using a Pd/C catalyst art regarding the hydrogenation temperature, see MPEP 2143 B & G and 2141, for the benefit of efficiently carrying out “the hydrogenation of terephthalic acid” “under variable reaction conditions”, such as “a temperature of 200 to 300 C. being most preferred as resulting in the most desirable reaction rates” in order “to provide high yields of hexahydroterephthalic acid as a mixture of cis and trans isomers” using a palladium catalyst, see Dehm, Col. 3, Ln. 67-Col. 4, Ln. 39; 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, or degree,” such as the hydrogenation temperature, “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.
Claims 1 and 6 are newly rejected under 35 U.S.C. 103 as being unpatentable over Endou et al. (US20050014973, published 20 January 2005, hereinafter Endou) in view of Chen et al., (“High-Throughput Microporous Tube-in-Tube Microreactor as Novel Gas–Liquid Contactor: Mass Transfer Study”, published January 2011, AIChE Journal, Vol. 57, No. 1, Pgs. 239-249, hereinafter Chen).
Regarding the limitations of instant application claim 1, Endou discloses in the specific express embodiment of the Example 7 hydrogenation reaction where “[a]n aqueous solution containing 20% by weight TPA and 2% by weight 5%-Pd/C (manufactured by N.E. Chemcat) was introduced into an induction stirring type autoclave made of stainless steel. After nitrogen displacement, the contents were heated at a hydrogen pressure of 1 MPa and held for 2 hours at 150° C. and a hydrogen pressure of 5 MPa” aka 50 bar to obtain crude CHDA, see Paras. [0165]-[0166], and after the hydrogenation reaction the crude CHDA reaction product contained at least 78.4% by weight t-CHDA, aka “trans-1,4-cyclohexanedicarboxylic acid (t-CHDA)”, see Abstract; Para. [0166], Example 7, where the “hydrogen pressure in the hydrogenation reaction is generally from 0.2 to 30 MPa”, “the proportion of c-CHDA to t-CHDA in the crude CHDA is not particularly limited”, such as the proportion of t-CHDA in the crude CHDA “is generally 1% by weight or higher, preferably 20% by weight or higher. From the standpoint of production efficiency, t/(c+t) is generally 80% by weight or lower”, i.e., t-CHDA/(cis-CHDA + t-CHDA) in the crude CHDA, see generally Paras. [0050]-[0066], meeting:
The method of preparing trans-1,4-cyclohexanedicarboxylic acid (t-CHDA) by supplying aqueous terephthalic acid aka TPA and the specific hydrogenation catalysts, Pd/C, to a hydrogenation reactor with a stirrer while supplying hydrogen gas and stirring to prepare the t-CHDA in instant application claim 1;
Within the concentration range of TPA in instant application claim 1;
Within the hydrogen pressure in instant application claim 1; and,
Without isomerization the crude CHDA has a t-CHDA concentration within the range in instant application claim 1.
Endou does not teach the limitations of instant application claim 6.
Chen is in the known prior art field of gas-liquid contacting reactors, such as “gas–liquid catalytic hydrogenation” reactors, see Abstract; Pg. 240, Col. 1, Second Full Para., and is applied to teach the same.
Regarding instant application claim 6, Chen teaches by agitation/stirring “gas–liquid mass transfer rates are greatly increased, which can benefit such applications as gas absorption, gas–liquid catalytic hydrogenation … The gas flowing outward radially through the annular micropores is dispersed into annular gas streams (gas bubbles) and then impinges crosscurrently at high speed with the axial flow of the liquid in the chamber between the inner and outer tubes, thereby it will exhibit enhanced gas–liquid mass transfer efficiency and large throughput capacity”, see Pg. 240, Col. 1, Second Full Para.-Last Para., where “Table 1 gives a comparison of the liquid side volumetric mass transfer coefficient kLα and the measured interfacial area α of the MTMCR with those of other typical gas–liquid contactors used in the laboratories and industries reported”, such as a stirred tank reactor at 75 to 170 m2/m3, see Pg. 247, Col. 1, Comparison of liquid side volumetric mass transfer coefficient and interfacial area in different gas–liquid reactors, Table 1 and below,
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In reference to claim 6, 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 stirring conditions of Endou with the bubble generation interfacial area for hydrogen gas liquid contact teachings of Chen with a reasonable predictability of success for the purpose of maintaining optimal gas-liquid mass transfer rates by determining the correct proportion of raw material and hydrogen contact needed while limiting the formation of resultant isomers and by-products, see Chen, Pg. 240, Col. 1, Second Full Para.-Last Para.; Pg. 247, Col. 1, Table 1.
A 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. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the stirring conditions of Endou by applying the known technique of the bubble generation interfacial area for hydrogen gas liquid contact teachings of Chen with a reasonable predictability of maintaining optimal gas-liquid mass transfer rates by determining the correct proportion of raw material and hydrogen contact needed while limiting the formation of resultant isomers and by-products, see Chen, Pg. 240, Col. 1, Second Full Para.-Last Para.; Pg. 247, Col. 1, Table 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 Endou and Chen both teach hydrogenation reactors in the gas-liquid contact reactor art, a person of ordinary skill in the art has good reason to modify Endou by relying upon Chen before the effective filing date of the claimed invention for knowledge generally available within the hydrogenation reactor art regarding the gas-liquid contact stirring conditions, see MPEP 2143 B & G and 2141, for the benefit of maintaining optimal gas-liquid mass transfer rates by determining the correct proportion of raw material and hydrogen contact needed while limiting the formation of resultant isomers and by-products, see Chen, Pg. 240, Col. 1, Second Full Para.-Last Para.; Pg. 247, Col. 1, Table 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.
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, or degree,” such as stirring/agitation rate, “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.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Y. Lynnette Kelly-O'Neill whose telephone number is (571) 270-3456. The examiner can normally be reached Tuesday-Friday, 8:30 a.m. - 6:30 p.m., EST, with Flex Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Yen-Ye Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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