DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-17 are pending.
Claims 1-9 11, 13, and 15 are amended.
Claims 16 and 17 are new.
Response to Amendments
Applicant’s amendments filed 11 November 2025 are acknowledged.
Drawings
Applicant’s amendment to the drawings is not sufficient to overcome the objection of the drawings.
Specification
Applicant’s amendment to the specification is sufficient to overcome the
objection of the specification with regard to the drawings. The specification has been amended to match the drawings in compliance with 37 CFR 1.84 (u)(1). The objection is withdrawn.
Applicant’s amendment to the specification is not sufficient to overcome the
objection of the specification with regard to the use of trade names and marks used in commerce.
Claim Objections
Applicant’s amendments to claims 2 and 3 are sufficient to overcome the objections of the claims. Claims 2 and 3 have been amended to state “formula”. The objections are withdrawn.
Applicant’s amendment to claim 6 is sufficient to overcome the objection of the claim. Claim 6 has been amended for clarity. The objection is withdrawn.
Applicant’s amendment to claim 14 is sufficient to overcome the objection of the claim. Claim 14 has been amended for clarity. The objection is withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendments to claims 1, 3-9, 11, 13, and 15 are sufficient to overcome the rejections of claims 1-15 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The claims have been amended to remove the indefinite claim language. The rejections are withdrawn.
Applicant’s amendments to claims 4, 5, and 13 are sufficient to overcome the rejection of claims 4, 5, and 13 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims have been amended to correct for antecedent basis. The rejections are withdrawn.
Applicant’s amendment to claim 8 is not sufficient to overcome the rejection of claim 8 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 8 still includes a trademark.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 is sufficient to overcome the rejection of claims 1-3, 5-8, 10, 11, 13, and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Laursen et al., (“Highly dispersed supported ruthenium oxide as an aerobic catalyst for acetic acid synthesis”, 29 May 2012, Applied Catalysis A: General, Vol. 433-434, Pgs. 243-250, cited by applicants 29 March 2023, hereinafter Laursen). Due to the amendment to claim 1 the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Applicant’s amendment to claim 1 is sufficient to overcome the rejection of claim 9 under 35 U.S.C. 103 as being unpatentable over Laursen et al., (“Highly dispersed supported ruthenium oxide as an aerobic catalyst for acetic acid synthesis”, 29 May 2012, Applied Catalysis A: General, Vol. 433-434, Pgs. 243-250, cited by applicants 29 March 2023, hereinafter Laursen), as applied to claims 1-3, 5-8, 10, 11, 13, and 15 in the 35 USC 102 rejection above, in view of Assmann et al. (“Heterogeneous oxidation catalysis on ruthenium: bridging the pressure and materials gaps and beyond”, 17 April 2008, Journal of Physics: Condensed Matter, Vol. 20, Pgs. 1-23, hereinafter Assmann). Due to the amendment to claim 1 the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Applicant’s amendment to claim 1 is sufficient to overcome the rejection of claims 4, 12, and 14 under 35 U.S.C. 103 as being unpatentable over Laursen et al., (“Highly dispersed supported ruthenium oxide as an aerobic catalyst for acetic acid synthesis”, 29 May 2012, Applied Catalysis A: General, Vol. 433-434, Pgs. 243-250, cited by applicants 29 March 2023, hereinafter Laursen), as applied to claims 1-3, 5-8, 10, 11, 13, and 15 in the 35 USC 102 rejection above, in view of Mostrou et al. (“Catalytic oxidation of aqueous bioethanol: an efficient upgrade from batch to flow”, 28 August 2018, Reaction Chemistry & Engineering, Vol. 3, Pgs. 781-789, cited by applicants 29 March 2023, hereinafter Mostrou). Due to the amendment to claim 1 the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 11 November 2025 have been fully considered but they are not persuasive.
Applicant’s argue that Laursen and Assmann or Mostrou 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 applicant’s arguments on pages 9-11 of the remarks filed on 11 November 25 that “Laursen examples of RuOx do not contain RuO2 and all of them do not involve crystalline RuO2”, “Laursen teaches away from the use of RuO2 for preparation of carboxylic acids from alcohols”, and “the skilled person in the art is motivated to use the mixture of Ru(VI), Ru(III) or Ru(OH)4 species for the oxidation of alcohols, not the mixture comprising RuO2 of the heat-treated samples”. “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. Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed … . In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).”, see MPEP 2123.
Laursen teaches the experiments employ crystalline RuO2 on supports, such as SnO2, see Pg. 249, Col. 1-Col. 2, Ln. 2, where the factors affecting the catalytic selectivity of RuOx and conversion of CH2CHOH to CH3COOH “include the particle size, the valence state, the level of hydration, and the crystallinity” and “these factors were investigated in the following experiments” with a complete conversion of CH3CHOH to CH3COOH “after about 18 h” which differs from previous experiments because of the difference in reaction conditions, such as pressure and temperature, see Pg. 247, Fig. 3, Col. 1, First Full Para.-Col. 2, First Full Para.; Fig. 4, Pg. 248. Therefore, a person of ordinary skill in the art would easily conclude that the experiments of Laursen are conducted using crystalline RuO2 with a complete conversion of CH3CHOH to CH3COOH “after about 18 h” given “the particle size, the valence state, the level of hydration, and the crystallinity” of the RuO2 and the reaction conditions, such as pressure and temperature, see Pg. 247, Fig. 2, Fig. 3, Col. 1, First Full Para.-Col. 2, First Full Para., Pg. 249, Col. 1-Col. 2, Ln. 2; Fig. 4, Pg. 248. For the reasons indicated above, applicant’s above arguments are not persuasive.
Applicant’s arguments with respect to Assmann have been considered but are moot because the new ground of rejection does not rely on the Assmann reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
The drawings are objected to because there is only one figure and it is referred to as “Figure”. Pursuant to 37 CFR 1.84(u)(1), when there is only one drawing, it must not be numbered and the abbreviation FIG must not appear. Therefore, “Figure” must be referred to as and corrected to “FIGURE”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The use of the term ISO, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. For example, ISO®.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. See MPEP 608.01(v).
Appropriate correction is required.
Claim Objections
Claim 17 is objected to because of the following informalities:
Claim 17 recites the limitation “about 28.5◦ 2θ, about 35.5◦ 2θ and 54.5◦ 2θ”, which appears to include a typographical mistake. Claim 17 is interpreted as “about 28.5◦ 2θ, about 35.5◦ 2θ and about 54.5◦ 2θ”.
Appropriate correction is required.
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.
Claims 1-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation “the step” in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. The limitation is interpreted as “a step”.
Claims 2-17 depend from base claim 1 and are included in this rejection as they do not correct the informalities identified in base claim 1.
Claim 8 contains the trademark/trade name ISO. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a method for determining the specific surface area of ruthenium dioxide and, accordingly, the identification/description is indefinite. Claim 8 is interpreted to not contain the parenthetical “(ISO 9277:2010)”.
Claim 9 recites the limitation “a crystal size” in line 2. There is insufficient antecedent basis for this limitation in the claim. The limitation is interpreted as “the crystal size”.
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 1-3, 5-11, 13, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Laursen et al., (“Highly dispersed supported ruthenium oxide as an aerobic catalyst for acetic acid synthesis”, 29 May 2012, Applied Catalysis A: General, Vol. 433-434, Pgs. 243-250, cited by applicants 29 March 2023, hereinafter Laursen) in view of Oh et al. (“Direct synthesis of electroactive mesoporous hydrous crystalline RuO2 templated by a cationic surfactant”, 2010, Journal of Materials Chemistry, Pgs. 1-7, hereinafter Oh).
Laursen teaches the claims 1-3, 5-8, 10, 11, 13, and 15 limitations of a process for the preparation of “green” acetic acid of formula (I), CH3-COOH, where R is methyl, by reacting, batchwise in an autoclave equipped with a beaker insert, 5 wt% aqueous ethanol, as calculated by the examiner 6.25 vol% ethanol, of formula (II), CH3-CH2-OH, where R is methyl, with pressurized O2 at 10 bar or 1 mPa and 1500C in the presence of one of the supported 0.9–4.9 wt% RuOx catalysts, where RuOx consists of RuO2 and Ru3+, or hydrated RuO2, specifically the Table 1 embodiment of 4.9 wt% Ru loading, RuOx/TiO2 with a BET surface area of 54 m2/g and a Ru particle size of 0.3-1.0 nm, and the as depicted in Fig. 2 conversation of formula (II), CH3-CH2-OH of about 55% with an about 15% yield of formula (I), CH3-COOH, see Pg. 243, Col. 1, First Para., Pg. 244, Col. 2, Last Para. -Pg. 245, Ln. 1, the one embodiment of the Pg. 245, 2.4. Catalytic Testing and 3. Results and discussion, Table 1, and Fig. 2, meeting:
A process for the preparation of carboxylic acids of formula (I) R-COOH (I), wherein R denotes alkyl, the process comprising at least the step of reacting alcohols of formula (II) in the liquid phase R-CH2-OH (II), wherein R has the meaning defined above, with a gas comprising molecular oxygen, preferably dioxygen (O2) in the presence of ruthenium dioxide (RuO2) in claim 1;
Wherein in formulae (I) and (II) R is C1-alkyl in claim 2;
Wherein in formulae (I) and (II) R is methyl in claim 3;
Wherein the compounds of formula (II) are water miscible and are employed as an aqueous solution at a level of from 0.5 to 95 vol.-%, i.e., 5 wt% aqueous ethanol, as calculated by the examiner 6.25 vol% ethanol in claim 5;
Wherein the gas comprising molecular oxygen in claim 6;
Wherein the partial pressure of molecular oxygen is typically from 10 hPa to 10 MPa, i.e., 10 bar or 1 mPa in claim 7;
Wherein the ruthenium dioxide has specific surface area of 1 to 300 m2/g, i.e., 54 m2/g, as measured by gas adsorption according to BET method in claim 8;
Wherein the ruthenium dioxide is supported on inert solid materials, i.e., RuO2 on inert solid TiO2, in claim 10;
Being performed batchwise in claim 11;
Being performed such that at least 20 to 100% of the mass of compound the alcohols of formula (II) employed are converted, i.e. 55% of the 5 wt% CH3CH2OH is converted, in claim 13; and,
Wherein the reaction temperature is 75 to 250 0C, i.e., 1500C, in claim 15.
Laursen further teaches the experiments employ redox catalysts of crystalline RuO2 on supports, such as SnO2, see Pg. 249, Col. 1-Col. 2, 4. Conclusions, where the factors affecting the catalytic selectivity of RuOx and conversion of CH2CHOH to CH3COOH “include the particle size, the valence state, the level of hydration, and the crystallinity” and “these factors were investigated in the following experiments” with a complete conversion of CH3CHOH to CH3COOH “after about 18 h” which differs from previous experiments because of the difference in reaction conditions, such as pressure and temperature, see Pg. 247, Fig. 3, Col. 1, First Full Para.-Col. 2, First Full Para.; Fig. 4, Pg. 248.
Laursen does not specifically teach:
The claim 1 limitation of wherein the ruthenium dioxide has a crystal size as measured by powder X-ray diffraction of 0.5 nm to 200 nm; and,
The limitations of claims 9, 16, and 17.
Oh relating to catalytic and photocatalytic reactions using metallic RuO2 which has many functional properties that are highly dependent on its crystalline nature, surface area and accessibility of the redox centres, see Pg. 1, Col. 1, teaches mesoporous, crystalline rutile (coherence length of 5.3 nm) RuO2, 4, was obtained by heating mesostructured RuO2 in 48 h at 200 ◦C, see Pg. 2, Synthesis of materials, where the crystalline RuO2, 4, has a crystal size of a few nm, 17 nm, or 30 nm and exhibits reflections of about 28.5◦ 2θ, about 35.5◦ 2θ and 54.5◦ 2θ in powder X-ray diffraction, see Abstract; Pg. 3, Col. 1, Fig. 1(b); Pg. 5, Col. 2, Last Para.-Pg. 6, Col. 1, Ln. 7, Fig. 7 (a), meeting:
Within the range of crystal size in claim 1 and in claim 9;
The structure in claim 16; and,
Within the range of reflections in claim 17.
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 RuO2 crystalline catalysts of Laursen with the RuO2 crystalline catalyst crystal size and properties teaching of Oh with a reasonable predictability of success for the purpose of increasing the functional properties of the RuO2 crystalline catalyst for redox reactions that are highly dependent on its crystalline nature, surface area and accessibility of the redox centres for the optimal conversion in the chemical reaction, see Oh, Pg. 1, Col. 1; Pg. 6, Conclusions.
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 both Laursen and Oh teach oxidation reactions with catalytic crystalline RuO2, a person of ordinary skill in the art has good reason to oxidize an alcohol to a carboxylic acid, by pursuing the known options within their technical grasp before the effective filing date of the claimed invention, such as using the optimal crystalline RuO2 catalyst, for the benefit increasing the functional properties of the RuO2 crystalline catalyst for redox reactions that are highly dependent on its crystalline nature, surface area and accessibility of the redox centres for the optimal conversion in the chemical reaction, see Oh, Pg. 1, Col. 1; Pg. 6, Conclusions, 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 a crystalline RuO2 catalyst, 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, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form,” such as crystal size and X-ray diffraction reflections, “proportions, 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.
Claims 4, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Laursen et al., (“Highly dispersed supported ruthenium oxide as an aerobic catalyst for acetic acid synthesis”, 29 May 2012, Applied Catalysis A: General, Vol. 433-434, Pgs. 243-250, cited by applicants 29 March 2023, hereinafter Laursen) in view of Oh et al. (“Direct synthesis of electroactive mesoporous hydrous crystalline RuO2 templated by a cationic surfactant”, 2010, Journal of Materials Chemistry, Pgs. 1-7, hereinafter Oh), as applied to claims 1-3, 5-11, 13, and 15-17 in the 35 USC 103 rejection above, in view of Mostrou et al. (“Catalytic oxidation of aqueous bioethanol: an efficient upgrade from batch to flow”, 28 August 2018, Reaction Chemistry & Engineering, Vol. 3, Pgs. 781-789, cited by applicants 29 March 2023, hereinafter Mostrou).
Laursen does not specifically teach the claim 4 limitations of wherein the compounds of formula (II) employed are prepared from renewable resources, preferably by fermentation of monosaccharides by yeasts and bacteria.
Laursen does not teach the claim 12 limitations of being performed continuously with residence times of 1 minute to three hours.
Laursen does not specifically teach the claim 14 limitations of wherein a three-phase fixed bed reactor, a trickle flow reactor, a fluidized bed reactor or a suspension reactor a stirred tank with gas inlet is employed to host the reaction.
Mostrous relates to Au/TiO2 catalyzed oxidation of (bio)ethanol to acetic acid, see Abstract, Pg. 781, 1. Introduction, and Pg. 788, 5. Conclusions, the catalyst (100 ±7 mg and 90–125 μm grain size) and 10 ± 0.03 mL of a 5 ±0.3 vol% ethanol solution (Fluka, >99.8%) were added to a Teflon®-lined reactor, which was sealed, where the reaction is performed in a continuous flow process fluidized bed reactor with a maximum residence time of 10.5 minutes, see Abstract, Pg. 782, All of Col. 1-Col. 2, Pg. 786, Col. 1, First Full Para.-Col. 2, First Full Para., Pg. 788, 5. Conclusions, Figs. 1 and 7-9, meeting:
Wherein the compounds of formula (II) employed are prepared from renewable resources, i.e., bioethanol, in claim 4;
Being performed continuously with residence times of 1 minute to three hours, i.e., 10.5 minutes, in claim 12; and,
Wherein a fluidized bed reactor is employed to host the reaction in claim 14.
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 ethanol source and reactor of Laursen with the ethanol source and continuous flow reactor teaching of Mostrou with a reasonable predictability of success for the purpose of catalytic oxidation in a reduced reaction time continuous flow process associated with green chemistry, that is cost and energy efficient, and is also intrinsically safer than a batchwise process, see Mostrou, Abstract, Pg. 782, All of Col. 1, and Pg. 788, 5. Conclusions.
By applying “predictable results” to select the optimal raw material ethanol and reactor, one of ordinary skill in the art would have been motivated to make these modifications because Mostrou provides a finite number of identified, predictable solutions, and a person of ordinary skill in the art has good reason to efficiently catalytically oxidize a compound by pursuing the known options within their technical grasp for the purpose of catalytic oxidation in a reduced reaction time continuous flow process associated with green chemistry, that is cost and energy efficient, and is also intrinsically safer than a batchwise process, see Mostrou, Abstract, Pg. 782, Col. 1, Pg. 788, 5. Conclusions, 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 renewable or bio ethanol, 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 the reaction residence time, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). See MPEP 2144.05.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Y. Lynnette Kelly-O'Neill whose telephone number is (571)270-3456. The examiner can normally be reached Monday-Thursday, 8 a.m. - 6 p.m., EST, with Flex Time.
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/YO/Examiner, Art Unit 1692
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691