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
The amendment filed on 12/19/2025 has been entered. Claim 1 has been amended and claims 3-6 have been canceled. Thus, claims 1-2 and 7-13 are currently pending; claims 8-13 have been withdrawn from further consideration and claims 1-2 and 7 are under current examination.
Withdrawn Rejection
Applicant presents persuasive arguments with respect to Patent application publication number US2005/0176603A1 (US’603; cited in IDS 01/23/2023) and Patent number US4744956 (US’956; cited in IDS 04/29/2024):
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As such, the 103 rejection as being unpatentable over Patent application publication number US2005/0176603A1 (US’603; cited in IDS 01/23/2023) in view of Patent number US4744956 (US’956; cited in IDS 04/29/2024) has been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2005/0176603A1 (US’603; cited in IDS 01/23/2023) in view of Patent number JP2007105668A (JP’668; cited in IDS 01/23/2023 and machine translation cited in PTO-892 08/20/2025).
Regarding claim 1, US’603 teaches a method for the production of TMAOCl solution (halogen oxoacid) by the reaction of 25% TMAH (tetramethylammonium hydroxide) (organic alkaline solution) with chlorine gas ([0048]-[0049]).
US’603 fails to teach continuously supplying an organic alkaline solution and a halogen from a first end to a second end of a reaction tube so that liquid phase parts and gas phase parts are alternately and repeatedly provided in a transfer passage of the reaction tube in pseudo-plug flow, to perform gas-liquid mixing of the organic alkaline solution and the halogen at the liquid phase parts and/or gas phase parts, wherein the reaction tube has an axis extending from the first end to the second end of the reaction tube and extends in an axial direction while circling around the axis, is arranged to extend substantially in a horizontal direction, is formed in a spiral shape having a spiral axis coinciding with the axis, and contains a fluororesin. However, the deficiencies are cured by JP’668.
Regarding claims 1 and 7, JP’668 teaches a gas-liquid reaction method and an apparatus therefor, and more particularly a method and an apparatus therefor for efficiently carrying out a reaction in a gas-liquid multiphase flow using a micro-tubular reactor having two or more gas inlet ports into a micro-channel. The reference teaches that “[a] gas-liquid reaction method in which a liquid component containing a reaction substrate and a gas component containing a reaction gas are caused to flow through a micro-tubular reactor, and the reaction substrate and the reaction gas are caused to react in the microtubular reactor to obtain a reaction product, characterized in that the equivalent diameter of the inner diameter of the micro-tubular reactor is 5 to 10,000 µm, and the gas component containing the reaction gas is introduced into the micro-tubular reactor from two or more positions in the flow direction of the micro-tubular reactor” ([0009]). The state of the gas-liquid multiphase flow flowing through the micro-tubular reactor in the present invention includes a plug flow in which gas plugs and liquid plugs flow alternately ([0037] and [0054]). JP’668 further teaches in [0056] that the gas-liquid reaction method of the present invention is preferably carried out by using a gas-liquid reaction apparatus having a microtubular reactor and a liquid supply device and a gas supply device upstream of the supply section of the micro-tubular reactor, and by circulating a gas component containing a reactant gas and a liquid component containing a reaction substrate, thus rendering a continuous process.
Furthermore, JP’668 teaches that when the length of the reactor is increased in order to increase the residence time, the reactor may be coiled to avoid the apparatus becoming large ([0026]). As such, it is understood that the reaction tube has an axis extending from the first end to the second end of the reaction tube and extends in an axial direction while circling around the axis and the reaction tube is formed in a spiral shape having a spiral axis coinciding with the axis. The first and second microreactors 5 and 6 in JP’668 is arranged to extend substantially in a horizontal direction (the figure) and the first and second microreactors 5 and 6 in JP’668 are made of Teflon ([0064]).
JP’668 teaches that the conventional methods requires a large capacity vessel and industrially, the reactions have been carried out on a large scale bubble columns, packed columns, etc. leading to a confinement reaction or a method using a large-scale reactor, and the reaction rate is limited by the rate of dissolution of the gas from the gas phase to the liquid phase, resulting in a low reaction rate and low productivity ([0002]-[0003]). The reference thus discusses that the use of a micro-tubular reactor is suitable for increasing the dissolution rate of a reaction gas into a liquid phase is effective by improving the efficiency of a gas-liquid reaction ([0008]). Moreover, JP’668 teaches that the volume ratio of the reaction gas to the liquid phase containing the reaction substrates in the micro-tubular reactor can be reduced by introducing the reaction gas from two or more locations in the flow direction (tube length direction) of the micro-tubular reactor, and as a result, the residence time of the reaction substrates in the micro-tubular reactor can be extended, thereby improving the yield and increasing the productivity ([0008]).
As such, a skilled artisan would have been motivated in using the methods of JP’668 in place of the conventional methods taught by US’603 to react TMAH and chlorine gas with a reasonable expectation of success in obtaining TMAOCl with improved yield.
Regarding claim 2, JP’668 teaches in [0018]
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Thus, a skilled artisan would have been motivated to determine the most optimal feed rate for the reaction of US’603 between TMAH and chlorine gas through routine experimentation and would arrive at the instant claimed volume flow rate of the halogen to a volume flow rate of the organic liquid.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in conducting a method of manufacturing a halogen oxoacid, the method comprising: continuously supplying an organic alkaline solution and a halogen from a first end to a second end of a reaction tube so that liquid phase parts and gas phase parts are alternately and repeatedly provided in a transfer passage of the reaction tube in pseudo-plug flow, to perform gas-liquid mixing of the organic alkaline solution and the halogen at the liquid phase parts and/or gas phase parts, wherein the reaction tube has an axis extending from the first end to the second end of the reaction tube and extends in an axial direction while circling around the axis, is arranged to extend substantially in a horizontal direction, is formed in a spiral shape having a spiral axis coinciding with the axis, and contains a fluororesin in view of the combination of US’603 and JP’668.
Response to Arguments
Applicant argues that JP’668, other than the generic reference to coiled reactors to avoid large apparatus size, fails to teach or suggest the spiral geometry required to achieve the claimed alternating phase pattern. Applicant discusses that the specification demonstrates that the spiral configuration creates alternating flow, whereas the comparative examples show that straight tubes result in an unstable liquid supply and separation of gas and liquid phases into upper and lower layers. Applicant indicates that Table 1 summarizes the results of the examples in which it shows that straight tube reaction (comparative examples) has orders in magnitude higher in unreacted chlorine when compared to the examples that use spiral configuration. Furthermore, Applicant argues that JP’668 fails to mention fluororesin but mentions that stainless steel is preferable material.
The arguments have been considered but are not found persuasive.
JP’668 teaches a gas-liquid reaction method and an apparatus therefor, and more particularly a method and an apparatus therefor for efficiently carrying out a reaction in a gas-liquid multiphase flow using a micro-tubular reactor having two or more gas inlet ports into a micro-channel. The reference further teaches that the state of the gas-liquid multiphase flow flowing through the micro-tubular reactor in the present invention includes a plug flow in which gas plugs and liquid plugs flow alternately ([0037] and [0054]). Thus, it is demonstrated by JP’668 that the same advantage of alternative flow is obtained as in the instant claim. Furthermore, JP’668 teaches that microtubular reactor is coiled to increase the residence time when the length of the reactor is increased ([0026]). Thus, coiling the microtubular reactor would still yield nothing more than the results observed with the uncoiled microtubular reactor, i.e. a plug flow in which gas plugs and liquid plugs flow alternately. JP’668 further teaches that the method of increasing the dissolution rate of a reaction gas into a liquid
phase is effective for improving the efficiency of a gas-liquid reaction, improving the yield and increasing the productivity ([0008]). As such, using the microtubular reactor of JP’668 in the method of US’603, a skilled artisan has a reasonable expectation of success in increasing the dissolution of the organic alkaline solution and a halogen and in reducing the amount of unreacted halogen after the completion of the reaction, thereby increasing the yield.
The examiner notes that the reactor used in the comparative examples of the specification is distinct from the microtubular reactor of JP’668. In fact, in the comparative examples, the gas phase part and the liquid phase part were separated into an upper layer and a lower layer, and were not present alternately in the transfer direction. Whereas the microtubular reactor of JP’668 provides the gas plugs and liquid plugs flowing alternately that is also observed in the instant invention. In other words, the obviousness of the instant invention is based on the closest prior art references, i.e. combination of US’603 and JP’668.
With respect to the Applicant’s arguments of the claimed fluororesin, the reactor material in JP’668 is preferably made of a material with high thermal conductivity in
order to efficiently remove the heat generated by the reaction from the reactor wall and includes examples such as metals, glass, quartz, and organic polymers ([0027]). Teflon (fluororesin) is further exemplified. Even though [0027] of the reference states that stainless steel is preferred, it does not teach away from using other listed materials as long as they have a high thermal conductivity to efficiently remove the heat generated by the reaction from the reactor wall. A preferred embodiment does not constitute a teaching away from a broader disclosure or nonpreferred embodiments and the reference is relevant for all it contains, including the usage of Teflon.
In view of the foregoing, the instantly claimed method remains obvious for reasons of record.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of
U.S. Patent No. 11,572,533B2 (‘533) in view of Patent number JP2007105668A (JP’668; cited in IDS 01/23/2023 and machine translation cited in PTO-892 08/20/2025);
11,572,331 (‘331) in view of Patent number JP2007105668A (JP’668; cited in IDS 01/23/2023 and machine translation cited in PTO-892 08/20/2025); and
11,390,577 (‘577) in view of Patent number JP2007105668A (JP’668; cited in IDS 01/23/2023 and machine translation cited in PTO-892 08/20/2025).
The claims at issue are drawn to a method of manufacturing a halogen oxoacid (quaternary alkylammonium hypochlorite solution in ‘533), the method comprising reacting an organic alkaline solution (quaternary alkylammonium hydroxide solution in ‘533, ‘331 and ‘577) and a halogen.
The claims of ‘533, ‘331 and ‘577 fail to recite continuously supplying an organic alkaline solution and a halogen from a first end to a second end of a reaction tube so that liquid phase parts and gas phase parts are alternately and repeatedly provided in a transfer passage of the reaction tube in pseudo-plug flow, to perform gas-liquid mixing of the organic alkaline solution and the halogen at the liquid phase parts and/or gas phase parts, wherein the reaction tube has an axis extending from the first end to the second end of the reaction tube and extends in an axial direction while circling around the axis, is arranged to extend substantially in a horizontal direction, is formed in a spiral shape having a spiral axis coinciding with the axis, and contains a fluororesin.
However, the deficiencies are cured by JP’668.
Regarding claims 1 and 7, JP’668 teaches a gas-liquid reaction method and an apparatus therefor, and more particularly a method and an apparatus therefor for efficiently carrying out a reaction in a gas-liquid multiphase flow using a micro-tubular reactor having two or more gas inlet ports into a micro-channel. The reference teaches that “[a] gas-liquid reaction method in which a liquid component containing a reaction substrate and a gas component containing a reaction gas are caused to flow through a micro-tubular reactor, and the reaction substrate and the reaction gas are caused to react in the microtubular reactor to obtain a reaction product, characterized in that the equivalent diameter of the inner diameter of the micro-tubular reactor is 5 to 10,000 µm, and the gas component containing the reaction gas is introduced into the micro-tubular reactor from two or more positions in the flow direction of the micro-tubular reactor” ([0009]). The state of the gas-liquid multiphase flow flowing through the micro-tubular reactor in the present invention includes a plug flow in which gas plugs and liquid plugs flow alternately ([0037] and [0054]). JP’668 further teaches in [0056] that the gas-liquid reaction method of the present invention is preferably carried out by using a gas-liquid reaction apparatus having a microtubular reactor and a liquid supply device and a gas supply device upstream of the supply section of the micro-tubular reactor, and by circulating a gas component containing a reactant gas and a liquid component containing a reaction substrate, thus rendering a continuous process.
Furthermore, JP’668 teaches that when the length of the reactor is increased in order to increase the residence time, the reactor may be coiled to avoid the apparatus becoming large ([0026]). As such, it is understood that the reaction tube has an axis extending from the first end to the second end of the reaction tube and extends in an axial direction while circling around the axis and the reaction tube is formed in a spiral shape having a spiral axis coinciding with the axis. The first and second microreactors 5 and 6 in JP’668 is arranged to extend substantially in a horizontal direction (the figure) and the first and second microreactors 5 and 6 in JP’668 are made of Teflon ([0064]).
JP’668 teaches that the conventional methods requires a large capacity vessel and industrially, the reactions have been carried out on a large scale bubble columns, packed columns, etc. leading to a confinement reaction or a method using a large-scale reactor, and the reaction rate is limited by the rate of dissolution of the gas from the gas phase to the liquid phase, resulting in a low reaction rate and low productivity ([0002]-[0003]). The reference thus discusses that the use of a micro-tubular reactor is suitable for increasing the dissolution rate of a reaction gas into a liquid phase is effective by improving the efficiency of a gas-liquid reaction ([0008]). Moreover, JP’668 teaches that the volume ratio of the reaction gas to the liquid phase containing the reaction substrates in the micro-tubular reactor can be reduced by introducing the reaction gas from two or more locations in the flow direction (tube length direction) of the micro-tubular reactor, and as a result, the residence time of the reaction substrates in the micro-tubular reactor can be extended, thereby improving the yield and increasing the productivity ([0008]).
As such, a skilled artisan would have been motivated in using the methods of JP’668 in place of the methods recited in ‘533, ‘331 or ‘577 with a reasonable expectation of success in obtaining halogen oxoacid with improved yield.
Regarding claim 2, JP’668 teaches in [0018]
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Thus, a skilled artisan would have been motivated to determine the most optimal feed rate for the reaction of US’603 between TMAH and chlorine gas through routine experimentation and would arrive at the instant claimed volume flow rate of the halogen to a volume flow rate of the organic liquid.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in conducting a method of manufacturing a halogen oxoacid, the method comprising: continuously supplying an organic alkaline solution and a halogen from a first end to a second end of a reaction tube so that liquid phase parts and gas phase parts are alternately and repeatedly provided in a transfer passage of the reaction tube in pseudo-plug flow, to perform gas-liquid mixing of the organic alkaline solution and the halogen at the liquid phase parts and/or gas phase parts, wherein the reaction tube has an axis extending from the first end to the second end of the reaction tube and extends in an axial direction while circling around the axis, is arranged to extend substantially in a horizontal direction, is formed in a spiral shape having a spiral axis coinciding with the axis, and contains a fluororesin over the combination of the claims of ‘533, ‘331 or ‘577 and the teachings of JP’668.
Conclusion
Claims 1-2 and 7 are rejected and 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 MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692