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 1-4 and 6-8 are pending.
Claims 1, 4, 6, and 8 are amended.
Claims 5 and 9 are cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 14 October 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendments
Applicant’s amendments filed 20 November 2025 are acknowledged.
Claim Objections
Applicant’s amendments to claims 6 and 8 and cancellation of claim 9 are sufficient to overcome the objections of the claims. The claims have been amended for clarity. The objections are withdrawn.
Claim Rejections - 35 USC § 102
Applicant’s cancellation of claims 5 and 9 is sufficient to overcome the rejection of claims 5 and 9 under 35 U.S.C. 102(a)(1) as being anticipated by Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura). Due to the cancellation of the claims the rejection is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 is sufficient to overcome the rejection of claims 1, 3, and 6 under 35 U.S.C. 103 as being unpatentable over Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura) in view of Gugerli et al. (US20150110936, hereinafter Gugerli). Due to the amendment to claim 1 the rejection is withdrawn and a new ground(s) of rejection is/are provided below.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 claims 1 and 4 is sufficient to overcome the rejection of claims 2, 4, 7, and 8 under 35 U.S.C. 103 as being unpatentable over Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura) in view of Gugerli et al. (US20150110936, hereinafter Gugerli), as applied in the 35 USC 103 rejection of claims 1, 3, and 6 above, in further view of Labib et al. (US20040007255, hereinafter Labib). Due to the amendment to claims 1 and 4 the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Double Patenting
Applicant’s amendment to claims 1 and 4 and cancellation of claims 5 and 9 are sufficient to overcome the rejections of:
Claim 5 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, and 7 of U.S. Patent No. 6585862 to Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura);
Claims 1 and 3 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, and 7 of U.S. Patent No. 6585862 to Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura) in view of Gugerli et al. (US20150110936, hereinafter Gugerli); and,
Claims 2, 4, and 6-9 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, and 7 of U.S. Patent No. 6585862 to Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura) in view of Gugerli et al. (US20150110936, hereinafter Gugerli), as applied in the nonstatutory double patenting rejection of claims 1 and 3 above, in further in view of Labib et al. (US20040007255, hereinafter Labib), and Matsumoto et al. (US6409886, hereinafter Matsumoto), as evidenced by Sandgren et al. (US20160208412).
The nonstatutory double patenting rejections are withdrawn.
Response to Arguments
Applicant’s arguments filed 20 November 2025 have been fully considered but they are not persuasive.
Applicant’s arguments on pages 10-12 of the remarks filed on 20 November 2025 regarding the nonstatutory double patenting rejections are moot because the rejections are withdrawn.
Applicant’s argue that Nishimura, Gugerli, and Labib do not disclose the limitations as recited in amended claims 1 and 4. 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 reply to applicant’s argument on pages 7-8 of the remarks filed on 20 November 2025 that “Nishimura explicitly requires that the tubular member be located at a position where condensation can occur on the inner wall surface of the member” and “Nishimura teaches away from installing the tubular member 1a or supply port 1 tubing to be immersed in the easily polymerizable compound-containing liquid”. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)” and “[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.
Figures 1, 2, and 5-8 of Nishimura teach a variety of configurations for the gas supply tubular member. For example, Figure 2 depicts an extension of the tubular member 1 further into the apparatus, Figure 6 depicts out-of-apparatus portion 1a of the tubular member 1 is temperature-raised or heated, where condensation is prevented on the inner wall surface of the tubular member, Figure 7 depicts a means 5 of spraying a polymerization-inhibitor-containing liquid to an opening 15 of the tubular member 1 to the inside of the apparatus, Figure 8 depicts opening 15 of the tubular member 1 to the inside of the apparatus is equipped with a cover 6 to collect the condensate on cover 6 in order to lessen the influence of the condensate falling on the inside wall of the apparatus, see Col. 3, Ln. 28- Col. 4, Ln. 54, and Nishimura is also directed to the polymerization inhibition of condensation on the entire inner surface of the apparatus, see Col. 1, Lns. 47-60. Figure 5 depicts small clearances between the inner wall surface of the tubular member 1 and the outer wall surface of the instrument 4, where the liquid tends to reside in the clearances and it is preferable to inhibit the polymerization by injecting the molecular-oxygen-containing gas and/or the polymerization inhibitor from the inlet 12, see Col. 3, Ln. 65-Col. 4, Ln. 16; Fig. 5. Therefore, Nishimura teaches a variety of configurations that are not related to the angle of the tubular member, Nishimura teaches the length of the tubular member may be adjusted, and Nishimura teaches an oxygen gas supply inlet 12 that is in contact with the polymerizable liquid; but, does not “criticize, discredit, or otherwise discourage” the use of a tubular member of the desired length at the Nishimura angles that contacts and is immersed in the liquid in order to reduce undesired polymerization throughout the entire apparatus, see MPEP 2145 X.D.1. On the contrary, Nishimura teaches a variety of lengths and configurations for the tubular member and molecular oxygen is injected directly into the polymerizable liquid via the tubular member. For the reasons indicated above, applicant’s above arguments are not persuasive.
In addition, changes in configuration or shape, such as extending the length of the Nishimura tubular member to be immersed in the polymerizable liquid, is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration as instantly claimed was significant, see MPEP 2144.04 IV.B.
In reply to applicant’s argument on page 8 of the remarks filed on 20 November 2025 that “condensation cannot occur when the tubular member is submerged in liquid”. Arguments presented by applicant cannot take the place of evidence in the record, see MPEP 2145 I. There is no evidence in the record to support the argument that the condensation will not occur if the tubular member of Nishimura is submerged in the polymerizable liquid. Applicants are reminded “[o]bjective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor”, see MPEP 716.01(c)I. For the reasons indicated above, applicant’s above argument is not persuasive.
In reply to applicant’s argument on pages 8-10 of the remarks filed on 20 November 2025 that 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), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as stated above, Nishimura alone provides the motivation to prevent polymerization of a polymerizable liquid by adapting a variety of lengths and configurations for the tubular member in contact with the polymerizable liquid and injecting molecular oxygen directly into the polymerizable liquid via the tubular member.
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 Nishimura, Gugerli, and Labib teach injection ports/tubing, a person of ordinary skill in the art has good reason to modify the size, linear velocity, pressure, and cleaning parameters of the ports/tubing by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of injecting the liquid and/or gas with sufficient shear force and mass transfer rates in order to dislodge and/or dissolve solid material within the tubing and/or reactor, see Gugerli, Para. [0017]; and, Labib, Para. [0230].
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 1-4 and 6-8 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.
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 USC 112(b) is appropriate, see MPEP 2173.02.
Claim 1 lines 7-8 state “the supply port being in contact with the easily polymerizable compound-containing liquid”; while, claim 1 lines 3-4 state “one or more supply ports”. It is unclear as to whether one or more supply ports or only one supply port is to be “in contact with the easily polymerizable compound-containing liquid”.
Claims 2, 3, 6, and 7 depend from base claim 1 and are included in this rejection as they do not correct the informalities identified in base claim 1.
Claim 4 lines 8-9 state “the supply port being in contact with the easily polymerizable compound-containing liquid”; while, claim 4 lines 3-4 state “one or more supply ports”. It is unclear as to whether one or more supply ports or only one supply port is to be “in contact with the easily polymerizable compound-containing liquid”.
Claim 8 depends from base claim 4 and is included in this rejection as it does not correct the informalities identified in base claim 4.
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, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura) in view of Gugerli et al. (US20150110936, hereinafter Gugerli) and Shuhei et al (JP2005179352, published 07 July 2005, see machine translation, hereinafter Shuhei).
Nishimura teaches the instant application claims 1, 3, and 6 limitations of a method and an apparatus for handling an easily polymerizable compound such as (meth)acrylic acid, where the apparatus and the method effectively inhibit the polymerization of (meth)acrylic acid in a distillation column for (meth)acrylic acid, see Abstract. Polymerization is prevented by injecting an oxygen containing gas, a polymerization inhibitor, and/or a liquid/fluid into a specially designed tubular member 1a in order to prevent the build-up of condensate 3 in the supply port 1 tubing, i.e., cleaning the port, and to inhibit polymerization throughout the apparatus 2 containing the easily polymerizable fluid, see Col. 1, Lns. 15-25 and 40-67; Col. 3, Lns. 4-35; Col. 3, Ln. 65-Col. 4, Ln. 3; Col. 5, Lns. 1-5; Figs. 1 and 2, meeting:
The compound, prevention step, supplying, and supply means in instant application claim 1;
The supplying a liquid to the same port as the gas to clean the port in instant application claim 3; and,
A liquid feed composition of the acrylic ester of 2-ethylhexyl acrylate 60 weight %, 2-ethylhexanol 32 weight %, and acrylic acid 7 weight % is fed to a purifying/rectifying apparatus equipped with a distillation column, a condenser, and a reboiler, where tubular members of desired size are furnished to the distillation column, the condenser, and the reboiler, see Col. 2, Lns. 42-65; Col. 5, Lns. 36-67 and Col. 6, Lns. 13-36, meeting the introducing, distillation column, supplying the gas supply means to the distillation column of step (2) in instant application claim 6.
Nishimura does not teach:
The instant application claim 1 limitations of wherein an area S (mm2) per one supply port is 0.1 or more and 20 or less, and a ratio V/S of a linear velocity V (m/s) of the gas at the supply port to the area S in the polymerization preventing step is 6.0 or more.
Gugerli relates to injecting a diluent into a chamber to dissolve a soluble material, see Abstract; Para. [0011], and Fig. 2, where the inlet 18 forms a nozzle sized of from 0.3 to 0.8 mm or 0.07 to 0.50 mm2 for creating a jet of diluent at a linear velocity of from 10 to 50 m/sec, see Paras. [0075]-[0076] and Fig. 2, as calculated by the examiner a V/S ratio = (10/0.7) = 14 to (50/0.5) = 100, meeting and within the range of the supply port and V/S 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 Nishimura to inject the oxygen polymerization inhibitor from a diluent supply port as taught by Gugerli with a reasonable predictability of success for the purpose of injecting the liquid and/or gas with sufficient shear force and mass transfer rates in order to dislodge and/or dissolve solid material within the tubing and/or reactor, see Gugerli, Para. [0017].
By applying “routine optimization” and “predictable results” to select the optimal starting supply lines, injection pressure, and inlet supply port configuration, one of ordinary skill in the art would have been motivated to make these modifications because Gugerli provides a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to dislodge and/or dissolve solids in an industrial chamber and/or supply tubing by injecting a liquid or a gas into an industrial chamber, by pursuing the known options within their technical grasp, such as the inlet supply port configuration, for the benefit of injecting the liquid and/or gas with sufficient shear force and mass transfer rates in order to dislodge and/or dissolve solid material within the tubing and/or reactor, see Gugerli, Para. [0017] 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 liquid or a gas cleaning agent, diluent, and/or polymerization inhibitor, 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, proportions,” such as injection supply line configurations, “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.
Nishimura does not teach:
The instant application claim 1 limitations of the gas supply means is selected from the group consisting of a nozzle, a diffusion tube and a diffusion plate, and is installed to be immersed in the easily polymerizable compound-containing liquid, with the supply port being in contact with the easily polymerizable compound-containing liquid outside the gas supply means.
Gugerli teaches the dilutant is injected through opening 18 into the liquid 19, see Fig. 2, Paras. [0078]-[0080].
Shuhei relating to supplying air/oxygen into an apparatus to prevent polymerization of vinyl group-containing compounds such as acrylic acid, see Paras. [0011]-[0012];[0046], teaches supplying oxygen to the apparatus, where supplying step is not particularly limited as long as it is a step that can supply the oxygen-containing gas into the condensate of (meth)acrylic acid, see Para. [0040]. Oxygen is supplied to the tank containing the polymerizable liquid, such as acrylic acid, through gas supply line 45 outside of the tank connected to sparger 46 having a plurality of small-diameter holes/nozzles 47, a plurality of sprays 57, or a plurality of sintered metals 67 which are immersed in the polymerizable liquid in order to maximize the contact between the polymerizable liquid and the supplied oxygen-containing gas to prevent polymerization of the polymerizable liquid condensate, see Figs. 1-4; Paras. [0087];[0091];[0095];[0097], meeting the gas supply means and installation 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 the tubular member of Nishimura to extend the length and immerse the tubular member in the polymerizable liquid as taught by Gugerli and Shuhei with a reasonable predictability of success for the purpose of maximizing the contact between the polymerizable liquid and the supplied oxygen-containing gas to prevent polymerization of the polymerizable liquid condensate, see Shuhei, Paras. [0040];[0091];[0097].
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 Nishimura and Shuhei teach polymerization inhibition through liquid contact with oxygen, a person of ordinary skill in the art has good reason to prevent polymerization by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of maximizing the contact between the polymerizable liquid and the supplied oxygen-containing gas to prevent polymerization of the polymerizable liquid condensate, see Shuhei, Paras. [0040];[0091];[0097] 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.
Changes in configuration or shape, such as extending the length of the Nishimura tubular member to be immersed in the polymerizable liquid, is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration as instantly claimed was significant, see MPEP 2144.04 IV.B.
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, or degree,” such as the length of the Nishimura tubular member to be immersed in the polymerizable liquid, “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 2, 4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura et al. (US6585862, cited by applicants 29 November 2022, hereinafter Nishimura) in view of Gugerli et al. (US20150110936, hereinafter Gugerli) and Shuhei et al (JP2005179352, published 07 July 2005, see machine translation, hereinafter Shuhei), as applied in the 35 USC 103 rejection of claims 1, 3, and 6 above, in further view of Labib et al. (US20040007255, hereinafter Labib).
Nishimura teaches the instant application claims 2, 4, 7, and 8 limitations of a method and an apparatus for handling an easily polymerizable compound such as (meth)acrylic acid, where the apparatus and the method effectively inhibit the polymerization of (meth)acrylic acid in a distillation column for (meth)acrylic acid, see Abstract. Polymerization is prevented by injecting an oxygen containing gas, a polymerization inhibitor, and/or a liquid/fluid into a specially designed tubular member 1a in order to prevent the build-up of condensate 3 in the supply port 1 tubing, i.e., cleaning the port, and to inhibit polymerization throughout the apparatus 2 containing the easily polymerizable fluid, see Col. 1, Lns. 15-25 and 40-67; Col. 3, Lns. 4-35; Col. 3, Ln. 65-Col. 4, Ln. 3; Col. 5, Lns. 1-5; Figs. 1 and 2, meeting:
The compound, prevention step, supplying, and supply means in instant application claim 4;
The cleaning step in instant application claim 2 and in instant application claim 4;
The supplying a liquid to the same port as the gas to clean the port in instant application claim 7;
The pressure of the supply port tubular member is equalized by a pressure equalizer, where the reaction pressure is up to 8.67 kPa, see Col. 5, Lns. 1-5 and Lns. 60-67, meeting and within the range of the lower limit of 0 pressure difference in polymerization prevention step in instant application claim 2 and in instant application claim 4; and,
A liquid feed composition of the acrylic ester of 2-ethylhexyl acrylate 60 weight %, 2-ethylhexanol 32 weight %, and acrylic acid 7 weight % is fed to a purifying/rectifying apparatus equipped with a distillation column, a condenser, and a reboiler, where tubular members of desired size are furnished to the distillation column, the condenser, and the reboiler, see Col. 2, Lns. 42-65; Col. 5, Lns. 36-67 and Col. 6, Lns. 13-36, meeting the introducing, distillation column, supplying the gas supply means to the distillation column of step (2) in instant application claim 8.
Nishimura does not teach the instant application claims 2 and 4 limitations of a pressure difference across the supply port of the gas supply means in the cleaning step is 150 kPa or higher.
Labib relates to a two phase flow of a gas and a liquid for cleaning pipelines, tubing or passageways used for industrial chemical processes and industries, see Paras. [0003]-[0004];[0013];[0222]. The cleaning process cleans supply line pipes, such as pipes 402, 406, 408, 412, 414, see Para. [0097], and Fig. 4, with air supplied at a pressure of 30-50 psig or 207-344 kPa, see Paras. [0108], meeting and within the range in instant application claim 2 and in instant application claim 4.
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 Nishimura to include feeding the gas at a pressure as taught by Labib, see MPEP 2144.05 II., with a reasonable predictability of success for the purpose of injecting the liquid and/or gas with sufficient shear force and mass transfer rates in order to dislodge and/or dissolve solid material within the tubing and/or reactor, see Labib, Para. [0230].
By applying “routine optimization” and “predictable results” to select the optimal starting supply lines, injection pressure, and inlet supply port configuration, one of ordinary skill in the art would have been motivated to make these modifications because Labib provides a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to dislodge and/or dissolve solids in an industrial chamber and/or supply tubing by injecting a liquid or a gas into an industrial chamber, by pursuing the known options within their technical grasp, such as the injection pressure and inlet supply port configuration, for the benefit of injecting the liquid and/or gas with sufficient shear force and mass transfer rates in order to dislodge and/or dissolve solid material within the tubing and/or reactor, see Labib, Para. [0230] 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 liquid or a gas cleaning agent, diluent, and/or polymerization inhibitor, 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, proportions,” such as pressures, “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.
Nishimura does not teach:
The instant application claim 4 limitations of the gas supply means is selected from the group consisting of a nozzle, a diffusion tube and a diffusion plate, and is installed to be immersed in the easily polymerizable compound-containing liquid, with the supply port being in contact with the easily polymerizable compound-containing liquid outside the gas supply means.
Gugerli teaches the dilutant is injected through opening 18 into the liquid 19, see Fig. 2, Paras. [0078]-[0080].
Shuhei relating to supplying air/oxygen into an apparatus to prevent polymerization of vinyl group-containing compounds such as acrylic acid, see Paras. [0011]-[0012];[0046], teaches supplying oxygen to the apparatus, where supplying step is not particularly limited as long as it is a step that can supply the oxygen-containing gas into the condensate of (meth)acrylic acid, see Para. [0040]. Oxygen is supplied to the tank containing the polymerizable liquid, such as acrylic acid, through gas supply line 45 outside of the tank connected to sparger 46 having a plurality of small-diameter holes/nozzles 47, a plurality of sprays 57, or a plurality of sintered metals 67 which are immersed in the polymerizable liquid in order to maximize the contact between the polymerizable liquid and the supplied oxygen-containing gas to prevent polymerization of the polymerizable liquid condensate, see Figs. 1-4; Paras. [0087];[0091];[0095];[0097], meeting the gas supply means and installation in instant application claim 4.
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 tubular member of Nishimura to extend the length and immerse the tubular member in the polymerizable liquid as taught by Gugerli and Shuhei with a reasonable predictability of success for the purpose of maximizing the contact between the polymerizable liquid and the supplied oxygen-containing gas to prevent polymerization of the polymerizable liquid condensate, see Shuhei, Paras. [0040];[0091];[0097].
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 Nishimura and Shuhei teach polymerization inhibition through liquid contact with oxygen, a person of ordinary skill in the art has good reason to prevent polymerization by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of maximizing the contact between the polymerizable liquid and the supplied oxygen-containing gas to prevent polymerization of the polymerizable liquid condensate, see Shuhei, Paras. [0040];[0091];[0097] 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.
Changes in configuration or shape, such as extending the length of the Nishimura tubular member to be immersed in the polymerizable liquid, is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration as instantly claimed was significant, see MPEP 2144.04 IV.B.
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, or degree,” such as the length of the Nishimura tubular member to be immersed in the polymerizable liquid, “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.
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
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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