Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Status
Claims 16-30 are pending. Claims 16-29 are under examination. Claims 16-29 are rejected. No claims allowed.
Filing Receipt
PNG
media_image1.png
144
982
media_image1.png
Greyscale
PNG
media_image2.png
46
974
media_image2.png
Greyscale
PNG
media_image3.png
82
974
media_image3.png
Greyscale
PNG
media_image4.png
46
972
media_image4.png
Greyscale
PNG
media_image5.png
70
972
media_image5.png
Greyscale
Response to Amendments/Arguments
Applicant's amendments and arguments filed 12/17/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified form is herein withdrawn.
Withdrawn Rejections
The 102 rejection of claims 16 and 26 as anticipated by Schliephake et al. (USPGPub 2012/0258019, Published 10-2012) as evidence by Schliephake et al. in the non-final mailed 09/17/2026 has been withdrawn. The claim amendments have overcome the rejection.
The following modified 112(b), and 103 rejections constitute the complete set of rejections and/or objections presently being applied to the instant application.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
112(b) rejection
Concerning the 112(b) rejections, applicant argues the amendments to the claims are believed to be sufficient to obviate the stated grounds for rejection.
The examiner does not agree. Concerning the newly added limitation of “observing” an unwanted rise in the viscosity, this is addressed in the modified 112(b) rejection below.
Concerning the 112(b) rejection of independent claim 16 and wherein the splitting in the redissociation apparatus occurs, no amendments were presented to obviate the indefiniteness rejection.
Concerning the newly added limitation “a splitting apparatus” in claim 26. This
limitation does not have support in the independent claim 16 from where claim 26
depends. The only apparatus in claim 16 is the redissociation apparatus.
102 Rejection
The 102 rejection has been withdrawn.
103 Rejection
Applicant argues the newly added limitation of “observing” an unwanted rise in viscosity is not taught by the prior art.
The below 103 rejection was modified to address this limitation.
Applicant additionally argues the prior art Schliephake does not disclose or suggest diluting and cooling the residue with at least 10%/V of solvent 1.
The Schliephake reference was not utilized to teach the diluting and cooling. See the original non-final rejection mailed 09/17/2025 pages 10-11 wherein Yada et al. was supplied to show cooling occurs when adding solvents and Sakamoto et al. taught the claimed dilution.
For the reasons stated above the obviousness rejection is maintained/modified as set forth below.
Claim Interpretation
This claim interpretation was necessitated by amendment.
The phrase “observing an unwanted rise in viscosity” in textual line 11 of claim 16, requires an observed unwanted rise in viscosity.
The observed unwanted rise in viscosity is not defined in the specification.
Therefore, the observed unwanted rise in viscosity can mean any amount of viscosity.
The “split” limitation in claim 16 is interpreted to be the “splitting” of the Michael adducts to prepare the redissociation products. See page 3 of the current specification.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The modifications to this rejection were necessitated by amendment.
Claim 16 does not define where the redissociation (split) products are prepared in the redissociation apparatus. This location may be the pump or the evaporator V or the top/bottom spaces or within the separating internals.
The phrase “observing an unwanted rise in viscosity” in textual line 11 of claim
16, requires an observed unwanted rise in viscosity. The observed unwanted rise in viscosity is not defined in the specification.
The observed unwanted rise in viscosity may be the “very viscous” residue in example 3 page 15 of the specification. However, without clarity an amount of an observed unwanted rise in viscosity is unclear.
Claims 26-27 recite the limitation "a splitting apparatus". There is insufficient antecedent basis for this limitation in the claim. Claim 16 from where claims 26-27 depend describes the redissociation apparatus comprising a column K. Claims 26-27 read as if the splitting apparatus is above the bottoms liquid and below the lower most separating internals of the separating column K.
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.
Claim(s) 16-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schliephake et al. (USPGPub 2012/0258019, Published 10-2012), Sakamoto et al. (US Patent 6,414,183, Patent date 07-2002) and as evidence by Yada et al. (USPGPub2005/0192462, Published 09-2005). The modifications to this rejection
were necessitated by amendment.
Scope of the Prior Art
Schliephake et al. teach the following.
PNG
media_image6.png
234
620
media_image6.png
Greyscale
PNG
media_image7.png
84
622
media_image7.png
Greyscale
Concerning the claimed evaporator V, this is the “indirect circulation heat
exchanger” taught by Schliephake et al. in the above paragraph 174. The reason being the stream exiting the “indirect circulation heat exchanger” in paragraph 174 boils.
PNG
media_image8.png
140
620
media_image8.png
Greyscale
PNG
media_image9.png
136
620
media_image9.png
Greyscale
PNG
media_image10.png
140
620
media_image10.png
Greyscale
Above, the substream I flows into the one secondary space of the circulation heat exchanger UW while the substream II leaving the one secondary space of the circulation heat exchanger UW boils. The secondary space of the circulation heat exchanger UW is the claimed evaporator V. The boiling is the claimed gas phase.
The above process of redissociation in paragraph 174 of Schliephake et al. is the claimed splitting of the Michael adducts in current claim 16.
The below TRS is the claimed splitting temperature. See below paragraph 174 of Schliephake et al.
PNG
media_image11.png
146
624
media_image11.png
Greyscale
PNG
media_image12.png
132
616
media_image12.png
Greyscale
PNG
media_image13.png
134
626
media_image13.png
Greyscale
The TRS overlapds the claimed 130 to 240C. See Schliephake et al. paragraph 137-138.
PNG
media_image14.png
110
618
media_image14.png
Greyscale
PNG
media_image15.png
142
626
media_image15.png
Greyscale
Concerning claim 26, Schliephake et al. teach the following.
PNG
media_image16.png
136
620
media_image16.png
Greyscale
Concerning the solvent 1, diluting and emptying the bottom space of the separating column K, the closest teaching by Schliephake et al. is in paragraph 166.
PNG
media_image17.png
190
624
media_image17.png
Greyscale
Concerning the cooling during the dilution, this is known to occur when adding solvents as evidence by Yada et al. paragraph 5.
Concerning claim 17, Schliephake et al. teach at least 40% (par. 67). This overlaps with the current range.
Concerning the splitting temperatures of claims 16 and 18, Schliephake et al. teach overlapping temperatures (par.137-138).
Concerning claim 22, Schliephake et al. teach ethylene glycol (par. 56).
Ascertain the Differences
Schliephake et al. does not teach observing an unwanted rise in viscosity, diluting the residue R in the bottom space of the separating column K to 10% by volume of the solvent and emptying the bottom space of the separating column K.
Secondary References
Concerning the observing of an unwanted rise in viscosity of the residue R, Sakamoto et al. teach “There is no limitation on the viscosity of the waste oil
which is to be treated by the present inventive method” (column 7 lines 3-15). Sakamoto et al. goes on to teach (column 7, lines 3-15).
PNG
media_image18.png
156
481
media_image18.png
Greyscale
Due to the specification not defining the observed rise in unwanted viscosity, the viscosity teachings of Sakamoto et al. overlap the currently claimed unwanted rise in viscosity.
Concerning discharging of the residue R, Sakamoto et al. teach removing waste oil from a distillation bottoms to a storage tank (Figure 3 and Column 2 and column 7). The removal is the claimed emptying due to the only contents of the below column being the waste oil. See Example 1 of Sakamoto et al.
PNG
media_image19.png
154
496
media_image19.png
Greyscale
PNG
media_image20.png
108
498
media_image20.png
Greyscale
PNG
media_image21.png
514
872
media_image21.png
Greyscale
The above solvent being placed into the storage tank is the currently claimed solvent 2. Moreover, Sakamoto et al. teach use of solvents in combination (column 5, lines 50-60).
Concerning the claimed at least 10%, Sakamoto et al. teach 20 mass percent (Example 1). This range overlaps with the current range.
Sakamoto et al. teach overlapping solvents as taught by Schliephake et al. See Sakamoto et al. column 5 lines 1-14.
PNG
media_image22.png
156
480
media_image22.png
Greyscale
PNG
media_image23.png
72
476
media_image23.png
Greyscale
Sakamoto et al. goes on to teach the solvent may be added directly to the waste oil in the distillation (bridging columns 5-6).
PNG
media_image24.png
136
490
media_image24.png
Greyscale
PNG
media_image25.png
160
474
media_image25.png
Greyscale
The above draining is the claimed emptying.
Sakamoto et al. teach ranges of temperatures of the waste oil, establishing temperature as a result effective variable (bridging columns 6 and 7). Temperature is also a result effective variable with respect to the retention and/or clogging of pipes by the viscous material at the bottoms of a distillation column for distilling acrylic acid as evidence by Yada et al. paragraph 5.
Sakamoto et al. teach the amount of solvent may be properly determined in consideration of the viscosity of the waste oil (column 6, lines 40-60).
Concerning claim 19, Sakamoto et al. teach the solvent can have a boiling point over 170C. This range overlaps the current range of at least 210C.
Concerning claim 25, Sakamoto et al. teach 50 cP or lower at 100C (top of column 7). This range overlaps the current range.
The above teachings overlap with the teachings of Schliephake et al. and render
Sakamoto et al. analogous art to the invention. The overlapping with respect to distilling acrylic acid and generating bottoms that are removed.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have emptied the separation column K after observing an unwanted rise in viscosity of the residue R. The ordinary artisan would have done so to store the residue R and to prevent clogging and or precipitation of solids in the column/pumps as instructed by Sakamoto et al.
Moreover, Schliephake et al. teach preferably removing a substream from the column K for disposal. The teaching of the preferred amount is not a teaching away from all of the bottoms from column K being removed. Therefore, removal of all the residue in the column K is obvious. See MPEP 2123 II. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.”
When emptying the column K, it would have been obvious to stop the feed. This would have been done to ensure the emptying is accomplished.
As for the unexpected rise in viscosity, temperature is known to effect the viscosity as evidence by Yada et al.
Concerning the dilution of the residue with at least 10% of a solvent, MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).” The solvent being methanol as taught by Schliephake et
al.
Concerning the solvent and claims 16, 20 and 22, and 28-29 the ethylene glycol taught by Schliephake et al. is an alcohol. Ethylene glycol has 2 carbons and thus falls within the alcohol solvents taught by Sakamoto et al. Thus, ethylene glycol is an obvious choice. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Moreover,
ethanol is taught by the prior art and solvent 2 has no required properties.
Concerning solvent 2 being the same or different than solvent 1, Sakamoto et al. teach use of solvents singularly or in combination (column 5, lines 50-60). Thus using a second solvent is obvious.
Concerning claim 17 and the at least 40% Michael adducts, MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning the splitting temperatures of claims 16 and 18, MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning claim 19, MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning claim 23 and 28-29, the origin of the solvent is a product-by-process
limitation. This limitation is not given patentable weight because the MPEP 2113 recites ““[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Additionally, Sakamoto et al. teach the solvents may be from other sources and may contain impurities (column 5 lines 1-14). This teaching renders the claimed processes to obtain the claimed solvents in pure and impure states to be obvious.
Concerning claim 24, Sakamoto et al. teach the amount of solvent may be properly determined in consideration of the viscosity of the waste oil. The claimed amounts would have been determined via the viscosity of the drained residue through routine experimentation. MPEP 2144.05 II. A. and B. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Concerning claim 25, MPEP 2144.05 I.: “In the case where the claimed ranges
“overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning claim 27, there would be no need for the gas to be continually added upon draining of the column K. Due to the distillation and/or splitting being ended.
Conclusion
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 BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at (571)270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.G.D/ Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
Prosecution Insights