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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 22 May 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Status of the Claims
Claims 1-10, 12-18, and 20 are currently pending.
Claims 1 and 7 are currently amended.
Claims 11 and 21 are currently cancelled.
Claim 19 was previously cancelled.
Response to Amendments
Applicant’s amendments filed on 24 July 2026 are acknowledged.
Claim Rejections - 35 USC § 103
Applicant’s cancellation of claim 11 is sufficient to overcome the rejection of claim 11 under 35 U.S.C. 103 as being unpatentable over Otsuka et al. (US20020035287, published 21 March 2002, hereinafter Otsuka ‘287) in view of Poindexter (US5045156, patented 03 September 1991). The rejection is withdrawn.
Applicant’s cancellation of claims 11 and 21, and amendments to claims 1 and 7 increasing the column bottom liquid residence time lower limit to 12 hours or more not taught by Otsuka, Sheely, Ibi, and Prochazka are sufficient to overcome the rejections of:
Claims 1-7, 11-18, and 21 under 35 U.S.C. 103 as being unpatentable over Otsuka et al. (US20020035287, published 21 March 2002, hereinafter Otsuka ‘287) in view of Sheely (US3895050, published 15 July 1975) and in further view of Ibi et al. (US20170217873, published 03 August 2017, hereinafter Ibi); and,
Claims 1-18, 20, and 21 under 35 U.S.C. 103 as being unpatentable over Otsuka et al. (US20020035287, published 21 March 2002, hereinafter Otsuka ‘287) in view of Sheely (US3895050, published 15 July 1975) and in further view of Ibi et al. (US20170217873, published 03 August 2017, hereinafter Ibi), as applied to claims 1-7, 11-18, and 21 in the 35 USC 103 rejection above, in further view of Prochazka et al. (US20110275869, published 10 November 2011, hereinafter Prochazka).
The above rejections are withdrawn. Due to the amendments to claims 1 and 7, and the cancellation of claims 11 and 21, new, modified, and maintained ground(s) of rejection is/are provided below.
Double Patenting
Applicant’s cancellation of claims 11 and 21, and amendments to claims 1 and 7 increasing the column bottom liquid residence time lower limit to 12 hours or more not taught by Otsuka, Sheely, Ibi, and Prochazka are sufficient to overcome the rejections of:
Claims 1-18, 20, and 21 on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 6509490 to Otsuka et al. (hereinafter Otsuka ‘490) in view of Otsuka et al. (JP2002097177, cited by applicant 23 August 2022, hereinafter Otsuka ‘177), Sheely (US3895050, cited by applicant 23 August 2022), Ibi et al. (US20170217873, hereinafter Ibi), Prochazka et al. (US20110275869, hereinafter Prochazka), and Poindexter (US5045156, cited by applicants 11 September 2013); and,
Claims 1-18, 20, and 21 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 6646163 to Nakamura et al. (hereinafter Nakamura) in view of Otsuka et al. (US20020035287, cited by applicant 23 August 2022, hereinafter Otsuka ‘287), Sheely (US3895050, cited by applicant 23 August 2022), Ibi et al. (US20170217873, hereinafter Ibi), Prochazka et al. (US20110275869, hereinafter Prochazka), and Poindexter (US5045156, cited by applicants 11 September 2013).
All of the above nonstatutory double patenting rejections are withdrawn.
Response to Arguments
Applicant’s arguments filed on 24 July 2026 have been fully considered but they are moot.
Applicant’s argue that Otsuka ‘287, Sheely, Ibi, and Prochazka do not disclose the limitations as recited in amended claims 1 and 11. These arguments have been considered but are moot for the reasons set forth in the new, modified, and maintained grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 24 July 2026 with respect to Ibi not teaching the column bottom liquid residence time lower limit of 12 hours or more have been considered but are moot because the new ground of rejection does not rely on Ibi applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Double Patenting
Applicant’s arguments on page 9 of the remarks filed on 24 July 2026 that the claims are distinguished from US 6509490 to Otsuka et al. and US 6646163 to Nakamura et al. have been considered but are moot. As stated above, all of the nonstatutory double patenting rejections are withdrawn.
In the Spirit of Compact Prosecution
Throughout prosecution 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, Maintained, and Modified Rejections Based on the Amendments to the Claims filed on 24 July 2026
For clarity between the new, modified, and maintained rejections, the specific below new and modified rejections are in italics.
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.
Claims 1-7 and 12-18 are newly rejected under 35 U.S.C. 103 as being unpatentable over Otsuka et al. (US20020035287, published 21 March 2002, hereinafter Otsuka ‘287) in view of Sheely (US3895050, published 15 July 1975) and in further view of Ibi et al. (US20170217873, published 03 August 2017, hereinafter Ibi) and Fukuda et al. (US20160207875, published 21 July 2016, hereinafter Fukuda).
Otsuka ‘287 is in the known prior art field of preventing the “loss of isophthalonitrile and plugging of a vacuum-evacuation system caused by isophthalonitrile migrating from a condensation system during distillation under reduced pressure” in order to produce “high-quality isophthalonitrile … at high yield constantly for a long period of time”, see Abstract; Paras. [0008]-[0009];[0039], where plugging in the line/pipe of condensed isophthalonitrile disturbs continuous operation, see Paras. [0008]-[0009];[0032];[0051]-[0052]; Fig. 1. Otsuka ‘287 also teaches “isophthalonitrile is unstable to heat and readily undergoes undesirable change or deterioration”, see Para. [0029].
Regarding instant application claims 1, 6, and 16-18, Otsuka ‘287 teaches a method for producing a purified phthalonitrile by separating isophthalonitrile from a gas produced by causing m-xylene to react with ammonia and oxygen-containing gas in the presence of a catalyst, … and the organic solvent is recovered from the top of the rectification column and liquefied isophthalonitrile of high purity is recovered at the bottom of the column”, see Abstract; Fig. 1; Paras. [0045]-[0050], the method comprising: reacting ammonia, oxygen, and xylene in the presence of a catalyst in “an ammoxidation reactor A" to obtain a reaction product gas comprising a phthalonitrile and a cyanobenzamide, see Paras. [0035]-[0036];[0045]-[0050]; Fig. 1, that is then sent to an isophthalonitrile trapping column B, where a trapping step where “the gas produced through the aforementioned ammoxidation was subjected to a trapping process” by “bringing the gas into contact with an organic solvent having a boiling point lower than that of isophthalonitrile” “for two hours by use of m-tolunitrile (2 kg) charged into the trapping column and heated to 175° C., to thereby trap components. After completion of trapping, the liquid was found to have the following composition; i.e., m-tolunitrile (73.5 wt. %), isophthalonitrile (25 wt. %), cyanobenzamide (1 wt. %), and other components (0.5 wt. %).”, i.e., the trapping liquid includes all of the contents of the gas, see Paras. [0012];[0015];[0049]; Fig. 1, meeting:
The method for producing, the reactants, the reacting, and the contents of the gas produced in instant application claim 1;
The contacting with a solvent within the boiling point range and obtaining a liquid in instant application claim 1; and,
The specific isophthalonitrile in instant application claim 6, in instant application claim 16, in instant application claim 17, and in instant application claim 18.
After trapping column B, the liquid is “supplied to a middle stage plate of a high-boiling-point impurity separation column C” having a column top and a column bottom, see Para. [0050]; Fig. 1, where the distillation in column C is carried out at a pressure of 8 kPa, “preferably 5-10 kPa”, see Paras. [0031]-[0032];[0050]. The liquid containing “m-tolunitrile (73.5 wt. %), isophthalonitrile (25 wt. %), cyanobenzamide (1 wt. %), and other components (0.5 wt. %)” is distilled in column C, see Paras. [0049]-[0050], where the top gaseous effluent from column C comprises “isophthalonitrile and the organic solvent”, i.e., m-tolunitrile (73.5 wt. %) and isophthalonitrile (25 wt. %), and “high-boiling-point impurities are discharged from the bottom”, i.e., cyanobenzamide (1 wt. %), and other components (0.5 wt. %), see Paras. [0024];[0037];[0049]-[0050], meeting the distilling high boiling components, the top gaseous components, the bottom liquid effluent having cyanobenzamide, and within the distillation pressure range in instant application claim 1.
The distillation bottom liquid from “high-boiling-point impurity separation column C” contains 2% “unrecovered isophthalonitrile”, 2% to 6% “unrecovered isophthalonitrile”, and “a large amount of” “unrecovered isophthalonitrile”, see Paras. [0049]-[0052]; Fig. 1. Since “a prima facie case of obviousness exists” where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” and where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05, one of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to predictably determine the desired “distribution of isophthalonitrile concentration” in the distillation column bottom liquid from the high-boiling-point impurity separation column C of Otsuka ‘287, such as more than 5% by mass to less than 90% by mass, for the purpose of preventing plugging in the line/pipe of condensed isophthalonitrile disturbing continuous operation, see Paras. [0008]-[0009];[0032];[0051]-[0052]; Fig. 1, meeting within the liquid phthalonitriles bottom effluent concentration in instant application claim 1.
From “high-boiling-point impurity separation column C”, “isophthalonitrile and the organic solvent are recovered from the top, and high-boiling-point impurities are discharged from the bottom. The recovered isophthalonitrile and the organic solvent are transferred to a rectification column D. The organic solvent is recovered from the top of the column, while isophthalonitrile is recovered from the bottom of the column.”, see Paras. [0037];[0050]; Fig. 1, meeting the removing the organic solvent and purifying phthalonitrile in instant application claim 1.
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, since the “or less” implies a lower limit of zero, the “wherein” clause drawn to adjusting the residence time and pressure appears to not give “meaning and purpose to the manipulative steps”, see MPEP 2111.04.
Furthermore, the residence time of “72 hours or less” with a lower limit of no/zero residence time, renders the distillation step optional, see MPEP 2111.
Regarding instant application claim 2, Otsuka ‘287 teaches distillation in column C is “performed at a top pressure of 8 kPa, a top temperature of 164° C., and a bottom temperature of 204° C.”, see Para. [0050], meeting within the temperature range in instant application claim 2.
Regarding instant application claims 3, 4, and 12, Otsuka ‘287 teaches the process is a continuous process, see Paras. [0045]-[0050], Example 1; Fig. 1 depicts a continuous operation; Para. [0051], “disturbing continuous operation”, i.e., Comparative Example 1 disturbed continuous operation; therefore, the process of Otsuka ‘287 Example 1 is continuous, where m-tolunitrile is the solvent that is part of the “gas produced through distillation carried out in the high-boiling-point impurity separation column C was supplied to a rectification column D” then the “organic solvent is recovered from the top of the column, while isophthalonitrile is recovered from the bottom of the column”, see Paras. [0024];[0032];[0037];[0050], meeting:
The continuous reacting, contacting, distilling and removing in instant application claim 3 and in instant application claim 12; and,
The solvent is m-tolunitrile in instant application claim 4.
Regarding instant application claim 7, Otsuka ‘287 teaches a method for producing a purified phthalonitrile by separating isophthalonitrile from a gas produced by causing m-xylene to react with ammonia and oxygen-containing gas in the presence of a catalyst, … and the organic solvent is recovered from the top of the rectification column and liquefied isophthalonitrile of high purity is recovered at the bottom of the column”, see Abstract; Fig. 1; Paras. [0045]-[0050], the method comprising: reacting ammonia, oxygen, and xylene in the presence of a catalyst in “an ammoxidation reactor A" to obtain a reaction product gas comprising a phthalonitrile and a cyanobenzamide, see Paras. [0035]-[0036];[0045]-[0050]; Fig. 1, that is then sent to an isophthalonitrile trapping column B, where a trapping step where “the gas produced through the aforementioned ammoxidation was subjected to a trapping process” by “bringing the gas into contact with an organic solvent having a boiling point lower than that of isophthalonitrile” “for two hours by use of m-tolunitrile (2 kg) charged into the trapping column and heated to 175° C., to thereby trap components. After completion of trapping, the liquid was found to have the following composition; i.e., m-tolunitrile (73.5 wt. %), isophthalonitrile (25 wt. %), cyanobenzamide (1 wt. %), and other components (0.5 wt. %).”, i.e., the trapping liquid includes all of the contents of the gas, see Paras. [0012];[0015];[0049]; Fig. 1, meeting:
The method for purifying and the contents of the gas produced in instant application claim 7; and,
The contacting with a solvent within the boiling point range and obtaining a liquid in instant application claim 7.
After trapping column B, the liquid is “supplied to a middle stage plate of a high-boiling-point impurity separation column C” having a column top and a column bottom, see Para. [0050]; Fig. 1, where the distillation in column C is carried out at a pressure of 8 kPa, “preferably 5-10 kPa”, see Paras. [0031]-[0032];[0050]. The liquid containing “m-tolunitrile (73.5 wt. %), isophthalonitrile (25 wt. %), cyanobenzamide (1 wt. %), and other components (0.5 wt. %)” is distilled in column C, see Paras. [0049]-[0050], where the top gaseous effluent from column C comprises “isophthalonitrile and the organic solvent”, i.e., m-tolunitrile (73.5 wt. %) and isophthalonitrile (25 wt. %), and “high-boiling-point impurities are discharged from the bottom”, i.e., cyanobenzamide (1 wt. %), and other components (0.5 wt. %), see Paras. [0024];[0037];[0049]-[0050], meeting:
The distilling high boiling components, the top gaseous components, and within the distillation pressure range in instant application claim 7; and,
The bottom liquid effluent having cyanobenzamide in instant application claim 7.
The distillation bottom liquid from “high-boiling-point impurity separation column C” contains 2% “unrecovered isophthalonitrile”, 2% to 6% “unrecovered isophthalonitrile”, and “a large amount of” “unrecovered isophthalonitrile”, see Paras. [0049]-[0052]; Fig. 1. Since “a prima facie case of obviousness exists” where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” and where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05, one of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to predictably determine the desired “distribution of isophthalonitrile concentration” in the distillation column bottom liquid from the high-boiling-point impurity separation column C of Otsuka ‘287, such as more than 5% by mass to less than 90% by mass, for the purpose of preventing plugging in the line/pipe of condensed isophthalonitrile disturbing continuous operation, see Paras. [0008]-[0009];[0032];[0051]-[0052]; Fig. 1, meeting within the liquid phthalonitriles bottom effluent/treated liquid concentration in instant application claim 7.
From “high-boiling-point impurity separation column C”, “isophthalonitrile and the organic solvent are recovered from the top, and high-boiling-point impurities are discharged from the bottom. The recovered isophthalonitrile and the organic solvent are transferred to a rectification column D. The organic solvent is recovered from the top of the column, while isophthalonitrile is recovered from the bottom of the column.”, see Paras. [0037];[0050]; Fig. 1, meeting the removing the organic solvent and purifying phthalonitrile in instant application claim 7.
In addition, the instant application claim 7 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, since the “or less” implies a lower limit of zero, the “wherein” clause drawn to adjusting the residence time and pressure appears to not give “meaning and purpose to the manipulative steps”, see MPEP 2111.04.
Otsuka ‘287 does not teach:
The instant application claims 1 and 7 limitations of combusting the bottom liquid, while maintaining the bottom liquid in a liquid state;
The claims 3 and 12 limitations of continuous combusting, the reaction product gas further comprises a tolunitrile, and the recovered tolunitrile is used as the organic solvent; and,
The limitations of instant application claims 5 and 13-15.
Sheely is in the known prior art field of an improved method of recovering condensed materials from the effluents of reactions for producing tolunitrile, phthalonitrile, iso- and terephthalonitrile from the xylene isomers, whereby said materials may be ultimately disposed of by incineration, see Col. 2, Lns. 7-63; Col. 3, Lns. 3-14; Col. 4, Lns. 42-57; Col. 11, Lns. 9-68; Fig. 1, and is applied to teach the same.
Regarding instant application claims 1 and 7, Sheely teaches “[c]ondensed polymer by-products and catalyst fines (if present in the reactor effluent) are removed from the bottom of the quench column via line 11 in a relatively small stream of unvaporized solvent. Although not shown, it is to be understood that the quench column bottoms may be treated to recover the catalyst fines and hydrocarbon solvent for reuse in the system. The polymer by-products may be disposed of by incineration”, see Col. 4, Lns. 42-57, where “the dilute water solution of the ammonia salt issuing from the bottom of the quench tower typically contains some acrylonitrile and other reaction products but is contaminated with organic heavies such as carbonyl polymers, hydrolyzed polyacrylonitrile, polyacrylamide, and cyanoethylated side reaction products”, see Col. 2, Lns. 7-47. Figs. 1 and 2 depict lines passing to incinerator 36, “where ammonia, HCN, acetonitrile, propionitrile and any uncondensed hydrocarbon solvent furnish the necessary fuel values”, see Figs. 1-2; Col. 5, Lns. 43-47; Col. 10, Ln. 53-Col. 11, Ln. 8, i.e., the bottom liquid effluent remains a liquid until passed to the incinerator where the effluent is used to generate heat and disposed of in the incinerator, meeting combusting the bottom liquid, while maintaining the bottom liquid in a liquid state in instant application claim 1 and in instant application claim 7.
Regarding instant application claims 3 and 12, Sheely teaches Figs. 1 and 2 depicting a continuous process, see Figs. 1-2, where “water is continually recovered and recycled and since hydrocarbon solvent is available for quenching purposes, polymer by-products and entrained catalyst particles are removed almost entirely from the reactor effluent in the quench column, and fuel values in the off-gases passed to the incinerator can be controlled to within close limits … and recovery of bottoms that may be disposed of by incineration rather than by biological treatment. Since incineration may be conducted so as to obtain complete combustion. the incinerator output can be controlled so as to meet governmental standards as to carbon monoxide content. Furthermore, the rate of solvent loss can be limited to what is required to satisfy incinerator fuel requirements.”, see Col. 10, Ln. 53-Col. 11, Ln. 8. The reaction product gas further comprises a tolunitrile, see Col. 11, Lns. 9-68, and the recovered solvent is used as the organic solvent, see Col. 3, Lns. 45-48, where “[a]lthough not shown, it is to be understood that the quench column bottoms may be treated to recover the catalyst fines and hydrocarbon solvent for reuse in the system.”, see Col. 4, Lns. 52-57, meeting continuous combusting, the reaction product gas further comprises a tolunitrile, and the recovered tolunitrile is used as the organic solvent in instant application claim 3 and in instant application claim 12.
Ibi is in the known prior art field of producing phthalonitriles from their corresponding xylenes with further purification by distillation, see Abstract; Paras. [0019];[0047]; Fig. 1; while, suppressing the condensation and clogging of phthalonitriles in the system, see Paras. [0035];[0053], and is applied to teach the same.
Regarding instant application claims 5 and 13-15, Ibi teaches “ammoxidation reaction gas extracted from the top of the ammoxidation reactor A was introduced to an isophthalonitrile absorption column B, so that isophthalonitrile in the ammoxidation reaction gas was absorbed in the meta-tolunitrile”, where after absorption the liquid containing the product gas from the ammoxidation reaction includes “24.98% by mass of isophthalonitrile, 73.89% by mass of meta-tolunitrile, and 0.467% by mass of 3-cyanobenzamide, and 0.156% by mass of 3-cyanobenzoic acid”, see Paras. [0072]-[0074], meeting the cyanobenzamide is 3-cyanobenzamide in instant application claim 5, in instant application claim 13, in instant application claim 14, and in instant application claim 15.
Otsuka ‘287 does not teach:
The instant application claims 1 and 7 limitations of wherein in the distilling, the liquid residence time at the column bottom is adjusted to 12 hours of more and 72 hours or less.
Fukuda is in the known prior art field of the high boiling point distillation of dicyanocyclohexane to remove “trans-dicyanocyclohexane … from a column top of the distillation column, and [a] tar component is taken out from a column bottom of the distillation column”, see Claims 1, 3, and 4; Paras. [0114]-[0120];[0139]-[0144]; Fig. 1, where trans-dicyanocyclohexane is a very similar nitrile compound relating to the nitrile compound dicyanobenzene aka phthalonitrile, and is applied to teach the same.
Regarding the limitations of instant application claims 1 and 7, Fukuda teaches a high boiling point component separation unit/column 5 where “dicyanocyclohexane is distilled using a distillation column, trans-dicyanocyclohexane is taken out from a column top of the distillation column, and the tar component is taken out from a column bottom of the distillation column”, “wherein the distillation column has a column top temperature of 140° C. or more and 220° C. or less, a column bottom temperature of 200° C. or more and 320° C. or less, and the residence time at the column bottom is 1 hour or more and 50 hours or less”, see Claims 3 and 4; Paras. [0114]-[0120]; Fig. 1, meeting:
Within the high boiling point distillation column bottom residence time in instant application claim 1 and in instant application claim 7.
In reference to the above claims, as stated above, “a prima facie case of obviousness exists” where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” and where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05, one of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to predictably determine the desired “distribution of isophthalonitrile concentration” in the distillation column bottom liquid from the high-boiling-point impurity separation column C of Otsuka ‘287, such as more than 5% by mass to less than 90% by mass, for the purpose of preventing plugging in the line/pipe of condensed isophthalonitrile disturbing continuous operation, see Otsuka ‘287, Paras. [0008]-[0009];[0032];[0051]-[0052]; Fig. 1.
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 bottom liquid high-boiling point column effluent of Otsuka ‘287 by relying upon the bottom liquid high-boiling point column effluent waste disposal incineration, recovery, and recycle of process reactants of Sheely with a reasonable predictability of success for the purpose of efficiently producing a nitrile compound by pursuing the known options within their technical grasp, such as the recovery of process materials and the combustion of condensed material by-products, for the benefit of producing a nitrile compound with efficiency and minimal environmental impact, see Sheely, Col. 2, Ln. 48-Col. 3, Ln. 54.
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 Otsuka ‘287 by relying upon the specific reaction products of Ibi with a reasonable predictability of success for the purpose of efficiently producing a nitrile compound by pursuing the known options within their technical grasp, such as the distillation residence time for the limited production of specific by-products, for the benefit of producing a nitrile compound with efficiency and minimal environmental impact, see Ibi, Paras. [0047];[0078].
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 bottom liquid high-boiling point column residence time of Otsuka ‘287 by relying upon the bottom liquid high-boiling point column residence time of Fukusa with a reasonable predictability of success for the purpose of efficiently producing a nitrile compound by pursuing the known options within their technical grasp, such as the distillation residence time for the limited production of specific products, for the benefit of producing a nitrile compound with efficiency and less complications, see Fukuda, Paras. [0008]-[0009];[0114]-[0120];[0183].
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 Otsuka ‘287, Sheely, and Ibi all teach preventing condensation in phthalonitrile production lines, and Otsuka ‘287 and Fukuda both teach fractional distillation of a nitrile compound in the nitrile production industry, a person of ordinary skill in the art has good reason to modify the bottom liquid high-boiling point column effluent, column bottom residence time, and the recovery and recycle of reactants and products of Otsuka ‘287 by relying upon the bottom liquid high-boiling point column effluent waste disposal incineration, recovery, and recycle of process reactants of Sheely, the specific reaction products of Ibi, and the bottom liquid high-boiling point column residence time of Fukuda before the effective filing date of the claimed invention for knowledge generally available within the nitrile production industry art, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing a nitrile compound by pursuing the known options within their technical grasp, such as the recovery of process materials and the combustion of condensed material by-products, for the benefit of producing a nitrile compound with efficiency and minimal environmental impact, see Sheely, Col. 2, Ln. 48-Col. 3, Ln. 54; Ibi, Paras. [0047];[0078]; Fukuda, Paras. [0008]-[0009];[0114]-[0120];[0183]; 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 the specific cyanobenzamide by-product and tolunitrile solvent 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 re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) states “[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, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as quantifying the exact proportion of materials in the high-boiling point impurities, “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 addition, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, Otsuka ‘287 teaches an ammoxidation reaction with the same starting reactants as instantly claimed to produce a phthalonitrile and a cyanobenzamide, see Otsuka ‘287, Para. [0049], the cyanobenzamide produced by Otsuka ‘287 may also inherently contain “3-cyanobenzamide, 4-cyanobenzamide or a mixture thereof” as instantly claimed.
“The discovery of a previously unappreciated property of a prior art composition,” such as quantifying the exact proportion of materials in the high-boiling point impurities, “or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer” and “the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable”, see MPEP 2112 I.
“It 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 bottom liquid residence time, “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 8-10 and 20 are newly rejected under 35 U.S.C. 103 as being unpatentable over Otsuka et al. (US20020035287, published 21 March 2002, hereinafter Otsuka ‘287) in view of Sheely (US3895050, published 15 July 1975) and in further view of Ibi et al. (US20170217873, published 03 August 2017, hereinafter Ibi) and Fukuda et al. (US20160207875, published 21 July 2016, hereinafter Fukuda), as applied to claims 1-7 and 12-18 in the 35 USC 103 rejection above, in further view of Prochazka et al. (US20110275869, published 10 November 2011, hereinafter Prochazka).
Otsuka ‘287 is in the known prior art field of distillation for the purification of desired hydrocarbons from a produced hydrocarbon stream, see Abstract; Fig. 1; Paras. [0009]-[0014];[0029]-[0032], where column C “high-boiling-point impurities are separated from isophthalonitrile and removed from the bottom potion of the column”, see Para. [0026]; Fig. 1.
Otsuka ‘287 does not teach the limitations of instant application claims 8-10 and 20.
Prochazka in the known prior art field of distillation for the purification of desired hydrocarbons from a produced hydrocarbon stream and combustion of produced hydrocarbons and by-products, see Abstract; Paras. [0052];[0218]-[0231].
Regarding instant application claims 8-10 and 20, Prochazka teaches the remaining residue, such as organic components low in aromatics, inorganic process chemicals, etc., from a distillation column “can be passed to a further work-up and/or thermal utilization, preferably within the process of the invention or an integrated pulp process coupled therewith”, see Paras. [0118]-[0119], where the further work-up and/or thermal utilization is “combustion to obtain heat, which is preferably used further in the process of the invention or an integrated process”, see Para. [0133], the heat is used to generate steam, see Paras. [0207];[0229], “[t]ransport is preferably effected via a pipe”, see Para. [0108], and the steam generated from combustion of residue, see Paras. [0118]-[0119];[0133];[0207];[0229], is used throughout the entire process, see Paras. [0065]-[0066];[0118];[0143], meeting:
The steam generation by combustion in instant application claim 8 and instant application claim 20; and,
The pipe transport in instant application claim 9; and,
The steam as a heat source 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 process of Otsuka ‘287 by relying upon the steam generation by combustion of distillation residue of Prochazka with a reasonable predictability of success for the purpose of efficiently producing at least one organic liquid or liquefiable material of value with minimal environmental impact by pursuing the known options within their technical grasp, such as combustion of by-products and energy recovery from the combustion to create heat and steam, see Prochazka, Abstract; Paras. [0133];[0207];[0229].
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 Otsuka ‘287 and Prochazka both teach distillation for the purification of desired hydrocarbons from a produced hydrocarbon stream in the distillation industry, a person of ordinary skill in the art has good reason to modify the bottom liquid of Otsuka ‘287 by relying upon the residue combustion to produce steam that is used throughout the distillation process before the effective filing date of the claimed invention for knowledge generally available within the energy recovery distillation art, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing at least one organic liquid or liquefiable material of value with minimal environmental impact by pursuing the known options within their technical grasp, such as combustion of by-products and energy recovery from the combustion to create heat and steam, see Prochazka, Abstract; Paras. [0133];[0207];[0229]; 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.
“The discovery of a previously unappreciated property of a prior art composition,” such as quantifying the exact proportion of materials in the high-boiling point impurities, “or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer” and “the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable”, see MPEP 2112 I.
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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
