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 .
Priority
This application is a 371 of PCT/KR2021/015174 which claims the benefit of KR 10-2020-0159107 with an effective filing date of 24 November 2020 as reflected in the filing receipt mailed on 13 February 2023.
Status of the Claims
Claims 1, 5, 6, and 9-13 are pending.
Claims 10-13 are new.
Claim 1 is currently amended.
Claims 4, 7, and 8 are currently cancelled.
Claims 2 and 3 were previously cancelled.
Response to Amendments
Applicant’s amendments filed 06 February 2026 are acknowledged.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 specifying “wherein the lactic acid oligomer is a dimer to a 100-mer of lactic acid” relating to “a weight ratio of the lactic acid:lactic acid oligomer in the first lactic acid vapor is 95:5 to 100:0” not taught by Kamei, Miura, and Lee, the addition of new claims 10-13, and the cancellation of claims are sufficient to overcome the rejection of claims 1 and 4-9 under 35 U.S.C. 103 as being unpatentable over Kamei et al. (US20170253553, hereinafter Kamei) in view of Miura et al. (US20090036710, hereinafter Miura) and Lee et al. (US20180178141, hereinafter Lee). Due to the amendment to claim 1, addition of new claims, and cancellation of claims, the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 06 February 2026 have been fully considered but they are not persuasive.
Applicant’s argue that Kamei, Miura, and Lee do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
In response to applications arguments on page 6 of the remarks filed on 06 February 2026 “that a process for producing acrylic acid according to one embodiment of the instant application uses a distillation tower that separates using a boiling point difference, and in order to particularly resolve a problem of increasing a temperature of a lower portion of the distillation tower during the distillation tower operation, water and a concentrated lactic acid raw material are separately supplied instead of being supplied to the distillation tower as an aqueous lactic acid solution form”.
““The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))”, see MPEP 2123.
In this case, Kamei teaches the evaporative distillation to produce lactic acid monomer vapor separated from lactic acid oligomer liquid residue is performed at “a constitution distribution and a temperature distribution in the vaporizer, and thus the temperature in the vaporizer is not always kept constant and varies depending on the constitution of the liquid or occurrence of boiling”, see Paras. [0009];[0047];[0084];[0088]; Tables 3 and 4, where to obtain the vapor the “temperature of the oil bath was controlled such that the distillation rate of the condensate was equal to the feed rate of the raw material. The distillation rate was equal to the feed rate when the temperatures of the oil bath and the liquid in the vaporizer were 210° C. and 200° C., respectively”, see Paras. [0070]-[0071];[0084];[0088]; Tables 3 and 4. Therefore, Kamei teaches separation of lactic acid monomer from lactic acid oligomer by the variation in the boiling point.
Kamei teaches water is supplied to the evaporative distillation device in both composition A and B, water is recirculated to the evaporative distillation device along with composition B in line 6, and “water or water vapor may be additionally fed to make up the reduced water”, see Paras. [0026];[0031];[0055]; Fig. 1. Therefore, Kamei teaches feeding water to the distillation device separate from the lactic acid aqueous composition.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applications arguments on pages 7-8 of the remarks filed on 06 February 2026 that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, see In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), and MPEP 2143.
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, Kamei is in the known prior art field of “a method for producing a vapor composition containing lactic acid” by distillation, see Abstract; Paras. [0069]-[0071], useful “for the synthesis of acrylic acid” “with high purity”, see Para. [0059], where the vapor composition has a lactic acid monomer concentration in the vapor of “preferably 95 mol % or more relative to the amount of a lactic acid species in the raw material composition”, see Paras. [0041];[0084], and a weight ratio of the lactic acid : lactic acid oligomers in the first lactic acid vapor is about 87.3 : 12.1, see Example 2-5, Table 3; Para. [0088].
Miura is in the known prior art field of separating and purifying carboxylic acids in distillation columns based on the boiling points of the mixed streams, see Abstract; Figs. 1-2, where the carboxylic acid includes propionic acid, see Paras. [0063]-[0073];[0133], and is applied to teach the same.
Lee is in the known prior art field of distillation arrangements for separating multicomponent feeds with various boiling points, see Abstract; Para. [0007], Figs. 1-2, and is applied to solve the problem involved regarding the same.
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 Kamei, Miura, and Lee all teach evaporative distillation separation of multicomponent aqueous feeds, a person of ordinary skill in the art has good reason to modify Kamei by relying upon Miura and Lee before the effective filing date of the claimed invention for knowledge generally available within the evaporative distillation art regarding the separation of a carboxylic acid from a multicomponent aqueous feed, see MPEP 2143 B & G and 2141, for the benefit of creating zones in the evaporation device with a high concentration of water or other solutions in order to cause the desired condensation of by-products within the most advantageous zones within the device in order to remove and separate by-products while further efficiently purifying the target carboxylic acid, see Miura, Para. [0150], by separating the mixed stream of materials with reduced operating costs and energy consumption, see Lee, Paras. [0007];[0011]; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Kamei, Miura, and Lee teach the evaporative distillation separation of multicomponent aqueous feeds, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the evaporative distillation separation of multicomponent aqueous feed processes and methods of Miura and Lee in the evaporative distillation separation of the multicomponent lactic acid aqueous feed of Kamei to produce a lactic acid monomer vapor.
For the reasons indicated above, applicant’s above arguments are not persuasive.
New and Previous Rejections Based on Amendments to the Claims in the reply filed on 06 February 2026
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.
For clarity between the new and previous rejections, the specific new rejections below 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.
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, 5, 6, and 9 are newly rejected and claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kamei et al. (US20170253553, published 07 September 2017, hereinafter Kamei) in view of Miura et al. (US20090036710, published 05 February 2009, hereinafter Miura) and Lee et al. (US20180178141, published 28 June 2018, hereinafter Lee), in further view of Van Breugel et al. (US6630603, published 07 October 2003, hereinafter Van Breugel).
Kamei is in the known prior art field of “a method for producing a vapor composition containing lactic acid” by distillation, see Abstract; Paras. [0069]-[0071], useful “for the synthesis of acrylic acid” “with high purity”, see Para. [0059], where the vapor composition has a lactic acid monomer concentration in the vapor of “preferably 95 mol % or more relative to the amount of a lactic acid species in the raw material composition”, see Paras. [0041];[0084], and a weight ratio of the lactic acid : lactic acid oligomers in the first lactic acid vapor is about 87.3 : 12.1, see Example 2-5, Table 3; Para. [0088].
Kamei teaches the claims 1, 5, 6, and 9 limitations of the production of acrylic acid from a lactic acid, water, and lactic acid oligomer liquid phase via evaporative distillation, see Paras. [0030];[0058]-[0059];[0069]-[0074];[0090], Table 4, and as depicted in Fig. 2.
The method comprises supplying a 90% by mass aqueous solution of lactic acid, composition A, to the bottom of an evaporative distillation device through feed line 15, i.e., 10 parts by weight water, and feeding a 20% by mass aqueous solution of lactic acid to the top of the distillation device, composition B, see Paras. [0026]-[0027];[0040];[0069], where the solution is a liquid containing lactic acid, a lactic acid oligomer, and water, and/or the water or water vapor in the liquid may be reduced and water is additionally fed to make up the reduced water, i.e., water and the lactic acid solution are fed to the distillation device separately, because when water vapor is additionally fed, the size of the heat exchanger can be reduced and industrial evaporation can be more efficiently performed, see Paras. [0024];[0055], and “[t]he lactic acid oligomer herein may include lactic acid oligomers from dimer to 100-mer”, see Para. [0033], meeting:
The supplying a lactic acid raw material, the specific lactic acid raw material within the range of water, supplying the only water, and, the separation of the lactic acid raw material supply from the water supply in instant application claim 1;
The lactic acid oligomers in instant application claim 1;
The evaporative distillation is carried out at a maximum temperature in the vaporizer of preferably 350° C. or lower, more preferably 300° C. or lower, still more preferably 250° C. or lower, where the evaporation temperature of the vapor composition containing lactic acid is preferably 350° C. or lower, more preferably 300° C. or lower, still more preferably 250° C. or lower, particularly preferably 200° C. or lower in terms of suppressing the generation of by-products, i.e., if the vapor composition is preferably 200° C. or lower the upper temperature of distillation vessel 13 is about 200° C. or lower, see Paras. [0040];[0047], Fig. 2. The evaporative distillation vessel has a differing temperature at the upper portion as compared to the bottom portion, for example the liquid at the upper portion of the heating tube reached 168° C. and 163° C, see Para. [0084], meeting and within the range of the upper distillation tower temperature in instant application claim 1;
The pressure of evaporative distillation vessel 13 is preferably 0.1 kPa or higher to 500 kPa or lower aka 0.001 to 5 bar, see Para. [0047], Fig. 2, meeting and within the pressure range in instant application claim 6;
The lactic acid vapor is sent to a reactor for contact with a dehydration catalyst, the resulting reaction gas is cooled or brought into contact with a collection liquid to be collected and liquefied, and then purified by extraction, distillation, crystallization, or the like to produce acrylic acid, see Paras. [0058]-[0059], meeting:
The supplying to produce acrylic acid in instant application claim 1;
The dehydration reaction in instant application claim 9;
Kamei teaches the lactic acid vapor from the evaporative distillation is extracted, then condensed by cooling, and the condensate from the vapor consisted of 13.1% by mass of lactic acid, 5.7% by mass of lactic acid dimer, and 0.3% by mass of lactic acid trimer, with the balance being water, which equates to 19.1 parts lactic acid and lactic acid oligomers and 80.9 parts water, see Paras. [0070]-[0071];[0088], meeting within the range of the first lactic acid vapor includes water, lactic acid, and a lactic acid oligomer, and includes the lactic acid and the lactic acid oligomer in greater than or equal to 5 parts by weight and less than or equal to 80 parts by weight based on 100 parts by weight of the first lactic acid vapor in instant application claim 1; and,
A mass ratio of lactic acid to lactic acid oligomers, lactic acid : lactic acid oligomers, contained in the liquid phase is 16.9 : 82.3 in Example 2-7, see Paras. [0089]-[0091], Table 4, meeting within the ratio range in instant application claim 5.
Regarding the limitations of instant application claim 11, Kamei teaches water is supplied to the evaporative distillation device in both composition A and B, water is recirculated to the evaporative distillation device along with composition B in line 6, and “water or water vapor may be additionally fed to make up the reduced water”, see Paras. [0026];[0031];[0055]; Fig. 1, where the water is used to hydrolyze any “lactic acid oligomer or lactide” in the lower portion of the device “to increase the concentration of lactic acid, leading to expectations of good evaporation efficiency of a lactic acid species”, see Paras. [0026];[0036];[0038];[0055], meeting the water decomposition of the lactic acid oligomer in the lower portion of the device to lactic acid in instant application claim 11.
Kamei does not teach:
The instant application claim 1 limitations of supplying a carboxylic acid raw material to an upper portion of a distillation tower; supplying only water to a lower portion of the distillation tower; and, supplying an aqueous carboxylic acid solution not vaporized in the distillation tower to a middle portion of the distillation tower; the distillation tower is formed to have 3 levels to 7 levels, with the upper portion being an uppermost level of the levels of the distillation tower, the lower portion being a lowermost level of the levels of the distillation tower, and the middle portion being a level between the upper portion and the lower portion; and;
The supplying only water to the lower portion of the distillation tower in instant application claim 11.
Miura is in the known prior art field of separating and purifying carboxylic acids in distillation columns based on the boiling points of the mixed streams, see Abstract; Figs. 1-2, where the carboxylic acid includes propionic acid, see Paras. [0063]-[0073];[0133], and is applied to teach the same.
Miura teaches the process applies distillation columns 11 and 15 having about 5 or about 7 plates and upper, middle, and lower feed positions between the plates, see Paras. [0097];[0145];[0148];[0156], Figs. 1-2, where for example, column 11 has 6 supply lines all at differing positions throughout the column, 9a, 9b, S1a, S1b, and S1c, see Figs. 1-2. A carboxylic acid raw material from a catalytic reaction is fed to column 11 through lines 9a and 9b or from either upper, the upper part, overhead or lower position, the lower part, bottom relative to a side stream port 12, see Paras. [0102];[0104]-[0105];[0145]-[0146], Fig. 1. The first component (A) and/or water may be, for example, fed through feed ports S1a, S1b and/or S1c, which may be located in any of upper and lower positions relative to the side stream port 12 and the first component (A) is an aqueous ester of the objective carboxylic acid, see Paras. [0103]-[0105];[0147]-[0149], Fig. 1, i.e., lactic acid is a carboxylic acid ester in an aqueous solution and water is fed from S1c lower than the carboxylic acid raw material feed ports 9a and 9b, where an additional carboxylic acid stream is fed to the first distillation column from the upper position S1a relative to the side stream port 12, see Paras. [0104]-[0105];[0149]-[0150], Fig. 1. In addition, when the concentration of water is high in the 9a feed it is advantageous to feed the stream to the first distillation column 11 through the lower position feed line 9b, i.e., a higher concentration water stream is fed to the distillation column at a position lower than a higher concentration carboxylic acid feed, see Para. [0103]. The first component and water may be fed to the distillation column separately at differing positions and/or may be fed together as an aqueous solution, the number of feed ports feeding the first component (A) and/or water is not limited to a specific one, and components may be fed from either one feed port or a plurality of feed ports, see Para. [0150], meeting:
Supplying carboxylic acid raw material to an uppermost portion of the distillation tower, supplying aqueous carboxylic acid to a middle portion of the distillation tower, and within the range of levels and feed positions/portions in instant application claim 1; and,
Supplying only water to a lowermost portion of the distillation tower in instant application claim 1 and in instant application claim 11.
Kamei and Miura do not specifically teach:
The instant application claim 1 limitations of the lower portion of the distillation tower has a temperature of higher than or equal to 210°C and lower than or equal to 250°C.
Kamei teaches the evaporative distillation is carried out at a maximum temperature in the vaporizer of preferably 250° C. or lower, see Paras. [0040];[0047], Fig. 2.
Lee is in the known prior art field of distillation arrangements for separating multicomponent feeds with various boiling points, see Abstract; Para. [0007], Figs. 1-2, and is applied to solve the problem involved regarding the same.
Lee teaches the temperature and pressure conditions are optimized for separating streams, see Paras. [0007];[0027]-[0034], where the temperature at the bottom of the column is 100 to 250° C, see Para. [0034], meeting and within the range of the column bottom stream temperature in instant application claim 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 Kamei to rearrange the addition of the lactic acid solutions and water to the evaporative distillation device, such as a plated column, at the desired positions as mixed solutions or separately, see MPEP 2144.04 VI. and as taught by Miura, with a reasonable predictability of success for the purpose of creating zones in the evaporation device with a high concentration of water or other solutions in order to cause the desired condensation of by-products within the most advantageous zones within the device in order to remove and separate by-products while further efficiently purifying the target carboxylic acid, see Miura, Para. [0150].
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 Kamei to adjust the temperature of the bottom of the distillation device to 250° C. or lower, see MPEP 2144.05 and as taught by Lee, with a reasonable predictability of success for the purpose of efficiently separating a mixed stream of materials with reduced operating costs and energy consumption, see Lee, Paras. [0007];[0011].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E.
Since both Kamei and Miura teach evaporative distillation by feeding material at differing positions within the evaporative device, a person of ordinary skill in the art has good reason to create zones in the evaporation device with a high concentration of water or other solutions in order to cause the desired condensation of by-products within the most advantageous zones within the device in order to remove and separate by-products while further efficiently purifying the target carboxylic acid, see Miura, Para. [0150] and MPEP 2141.
Since both Kamei and Lee teach evaporative distillation temperatures throughout the distillation device, a person of ordinary skill in the art has good reason to efficiently separate a mixed stream of materials with reduced operating costs and energy consumption, see Lee, Paras. [0007];[0011] 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 lactic acid as the carboxylic acid and acrylic acid as the product/target carboxylic acid, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[t]he normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as distillation temperatures, raw material, reactant, and vapor concentrations or ratios, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as distillation temperatures, raw material, reactant, and vapor concentrations or ratios, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
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 Kamei, Miura, and Lee all teach evaporative distillation separation of multicomponent aqueous feeds, a person of ordinary skill in the art has good reason to modify Kamei by relying upon Miura and Lee before the effective filing date of the claimed invention for knowledge generally available within the evaporative distillation art regarding the separation of a carboxylic acid from a multicomponent aqueous feed, see MPEP 2143 B & G and 2141, for the benefit of creating zones in the evaporation device with a high concentration of water or other solutions in order to cause the desired condensation of by-products within the most advantageous zones within the device in order to remove and separate by-products while further efficiently purifying the target carboxylic acid, see Miura, Para. [0150], by separating the mixed stream of materials with reduced operating costs and energy consumption, see Lee, Paras. [0007];[0011]; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Kamei, Miura, and Lee teach the evaporative distillation separation of multicomponent aqueous feeds, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the evaporative distillation separation of multicomponent aqueous feed processes and methods of Miura and Lee in the evaporative distillation separation of the multicomponent lactic acid aqueous feed of Kamei to produce a lactic acid monomer vapor.
Kamei, Miura, and Lee do not teach:
The instant application claim 1 limitations of a weight ratio of the lactic acid:lactic acid oligomer in the first lactic acid vapor is 95:5 to 100:0; and,
The limitations of instant application claim 10.
Van Breugel is in the known prior art field of “a method of industrial-scale purification of lactic acid” by evaporative concentration and distillation of a dilute lactic acid containing stream until a top product containing “at least 99.5 wt % of monomeric lactic acid” is obtained and a bottom product residue containing oligomers or polymers of lactic acid is depolymerized and recycled back through the process, see Abstract, Col. 4, Lns. 8-64; Col. 5, Ln. 56-Col. 7, Ln. 3; Table 1.
Regarding the limitations of instant application claims 1 and 10, Van Breugel teaches the lactic acid concentration in the distillation top stream is “at least 99.5 wt % of monomeric lactic acid” “and the residue containing residual sugars and polymeric lactic acid”, see Col. 4, Lns. 8-53; Col. 8, Lns. 50-64, Table 1, i.e., “at least” implies up to 100 wt % monomeric lactic acid resulting in a weight ratio of the lactic acid:lactic acid oligomers in the lactic acid vapor of 100:0, meeting within the vapor ratio range in instant application claim 1 and in instant application claim 10.
In reference to the above claims, 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 rely on Van Breugel to predictably determine the evaporative distillation parameters of lactic acid aqueous solutions to obtain 100% lactic acid monomer vapor, see Van Breugel, Col. 4, Lns. 8-53; Col. 8, Lns. 50-64, Table 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 Kamei to adjust the evaporative distillation parameters to obtain a lactic acid monomer vapor of 100% lactic acid monomer as taught by Van Breugel with a reasonable predictability of success for the purpose of an efficient “industrial-scale production of lactic acid having a high chiral and a high chemical purity” “for pharmaceutical applications” with “an acceptable colour” and low odor, see Van Breugel, Col. 3, Lns. 13-27; Col. 4, Lns. 44-53.
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 evaporative distillation parameters of Kamei by applying the known technique of the evaporative distillation to obtain a vapor of 100% lactic acid monomer as taught by Van Breugel with a reasonable predictability of success for the purpose of an efficient “industrial-scale production of lactic acid having a high chiral and a high chemical purity” “for pharmaceutical applications” with “an acceptable colour” and low odor, see Van Breugel, Col. 3, Lns. 13-27; Col. 4, Lns. 44-53; 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 Kamei and Van Breugel both teach the evaporative distillation of lactic acid aqueous solutions, a person of ordinary skill in the art has good reason to modify Kamei by relying upon Van Breugel before the effective filing date of the claimed invention for knowledge generally available within the evaporative distillation of lactic acid aqueous solutions art regarding the distillation to obtain 100% lactic acid monomer vapor, see MPEP 2143 B & G and 2141, for the benefit of an efficient “industrial-scale production of lactic acid having a high chiral and a high chemical purity” “for pharmaceutical applications” with “an acceptable colour” and low odor, see Van Breugel, Col. 3, Lns. 13-27; Col. 4, Lns. 44-53;; 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.
“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the % lactic acid monomer in the vapor, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kamei et al. (US20170253553, published 07 September 2017, hereinafter Kamei) in view of Miura et al. (US20090036710, published 05 February 2009, hereinafter Miura) and Lee et al. (US20180178141, published 28 June 2018, hereinafter Lee), in further view of Van Breugel et al. (US6630603, published 07 October 2003, hereinafter Van Bruegel), as applied in the 35 USC 103 rejection of claims 1, 5, 6, and 9-11 above, and in further view of Quarderer, Jr. et al. (WO2001038284, published 31 May 2001, hereinafter Quarderer).
Regarding the limitations of instant application claim 13, Van Bruegel teaches, as stated above, the lactic acid concentration in the distillation top stream is “at least 99.5 wt % of monomeric lactic acid” “and the residue containing residual sugars and polymeric lactic acid”, see Col. 4, Lns. 8-53; Col. 8, Lns. 50-64, Table 1, i.e., “at least” implies up to 100 wt % monomeric lactic acid resulting in a weight ratio of the lactic acid:lactic acid oligomers in the lactic acid vapor of 100:0, meeting within the vapor ratio range in instant application claim 13.
Kamei, Miura, Lee, and Van Bruegel do not teach:
The instant application claim 13 limitations of the lactic acid content in the first acid vapor; and,
The limitations of instant application claim 12.
As stated above, Kamei teaches the lactic acid vapor from the evaporative distillation is extracted, then condensed by cooling, and the condensate from the vapor consisted of 13.1% by mass of lactic acid, 5.7% by mass of lactic acid dimer, and 0.3% by mass of lactic acid trimer, with the balance being water, which equates to 19.1 parts lactic acid and lactic acid oligomers and 80.9 parts water, see Paras. [0070]-[0071];[0088].
Quarderer is in the known prior art of “vaporizing an aqueous lactic acid solution, for purification” by distillation “preferably integrated with downstream” processes to produce “various industrial polymers”, see Abstract; Pg. 1, Lns. 12-18; Pg. 21, Ln. 26-Pg. 22, Ln. 8, Table 1; Claim 19.
Regarding the limitations of instant application claims 12 and 13, Quarderer teaches “[a] vapor stream comprising: (a) a mixture of lactic acid and water having an lactic acid presence between about 60-75 % by wt; (i) the lactic acid having a chiral purity of at least 95%”, see Claim 19, where the lactic acid concentration and water concentration in the vapor is controlled to reduce the concentration of oligomers in the vapor, see Pg. 11, Ln. 6-Pg. 13, Ln. 19, and the concentration of the lactic acid in the vapor may be 59.2% by wt, see Pg. 21, Ln. 26-Pg. 22, Ln. 8, meeting within the parts by weight range of lactic acid, water, and optional oligomers in the lactic acid vapor in instant application claim 12 and in instant application claim 13.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kamei to adjust the evaporative distillation parameters to obtain the optimal parts by weight range of lactic acid, water, and optional oligomers in the lactic acid vapor as taught by Van Bruegel and Quarderer with a reasonable predictability of success for the purpose of efficiently producing the optimal lactic acid vapor by distillation “preferably integrated with downstream” processes to produce “various industrial polymers”, see Quarderer, Abstract; Pg. 1, Lns. 12-18; Pg. 21, Ln. 26-Pg. 22, Ln. 8, Table 1; Claim 19.
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 evaporative distillation parameters of Kamei by applying the known technique of the evaporative distillation to obtain the optimal parts by weight range of lactic acid, water, and optional oligomers in the lactic acid vapor as taught by Van Bruegel and Quarderer with a reasonable predictability of success for the purpose of efficiently producing the optimal lactic acid vapor by distillation “preferably integrated with downstream” processes to produce “various industrial polymers”, see Quarderer, Abstract; Pg. 1, Lns. 12-18; Pg. 21, Ln. 26-Pg. 22, Ln. 8, Table 1; Claim 19; 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 Kamei and Quarderer both teach the evaporative distillation of lactic acid aqueous solutions, a person of ordinary skill in the art has good reason to modify Kamei by relying upon Quarderer before the effective filing date of the claimed invention for knowledge generally available within the evaporative distillation of lactic acid aqueous solutions art regarding the lactic acid concentration in the vapor, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing the optimal lactic acid vapor by distillation “preferably integrated with downstream” processes to produce “various industrial polymers”, see Quarderer, Abstract; Pg. 1, Lns. 12-18; Pg. 21, Ln. 26-Pg. 22, Ln. 8, Table 1; Claim 19; and, MPEP 2141 and 2143 I. B-D.
In addition, 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 rely on Quarderer to predictably determine the evaporative distillation parameters of lactic acid aqueous solutions to obtain a lactic acid vapor with the desired concentration, see Van Quarderer, Pg. 11, Ln. 6-Pg. 13, Ln. 19; Claim 19.
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 normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges”, such as a lactic acid vapor with the desired concentration, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
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, Kamei teaches in Table 3 “the term “constitution of distillate” means the proportions (mol %) of lactic acid, a lactic acid oligomer, and by-products, excluding water”, see Para. [0088], Table 3. The quantification in Kamei excludes water; therefore, the Table 3 distillate may inherently include “a combined amount of the lactic acid and the lactic acid oligomer, when present, greater than or equal to 30 parts by weight to less than or equal to 70 parts by weight based on 100 parts by weight of the first lactic acid vapor” if water was not excluded from the Kamei Table 3 quantification of the distillate components.
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
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