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 17-31 are pending.
Claims 26 and 27 are amended.
Claims 1-16 are cancelled.
Response to Amendments
Applicant’s amendments filed 20 October 2025 are acknowledged.
Claim Rejections - 35 USC § 112
Applicant’s amendment to claims 26 and 27 are sufficient to overcome the rejection of claims 26 and 27 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 correct the antecedent basis issues. The rejections are withdrawn.
Response to Arguments
Applicant’s arguments filed 20 October 2025 have been fully considered but they are not persuasive.
Applicant’s argue that Braithwaite, Zhenfeng, Hofen, Shimizu, and Muratoglu do not disclose the limitations as recited in the claims. These arguments have been considered but are not persuasive for the reasons set forth in the response to arguments below.
In response to applicants arguments on pages 5-6 of the remarks filed on 20 October 2025 that “Zhenfeng is specific to preparation of isononanoic acid, and there is nothing suggesting preparation of carboxylic acids in general”. Isononanoic acid is a carboxylic acid and Zhenfeng specifically teaches it is known in the prior art to prepare “the corresponding carboxylic acid by aldehyde oxidation reaction”, see Paras. [0011]-[0014]. For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applicants arguments on pages 5-6 of the remarks filed on 20 October 2025 that “Zhenfeng is silent on the content of oxygen leaving the oxidation reactor as well as on the content of oxygen in any other streams beyond including the rectified isononanoic acid”, 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).
In this case, Braithwaite teaches the known prior art of maintaining unreacted molecular oxygen dissolved in the liquid phase of a bubble reactor in order to avoid flammable/explosive unreacted molecular oxygen in gaseous form in the head/vapor space, see Paras. [0002];[0026];[0070]-[0071];[0084];[0086];[0091]. To reiterate page 6 of the previous Office Action dated 21 July 2025 (hereinafter POA), Zhenfeng teaches the known prior art of a liquid phase oxidation of an aldehyde/isononanal to a carboxylic acid/isononanoic acid in a bubble column using dissolved air as the oxidant, see Paras. [0025];[0097]-[0098], as stated in the instant specification Pg. 24, Lns. 23-24, the “concentration of molecular oxygen in air is 20.95 vol.-%”, where following the catalyst free oxidation, see Para. [0097], the liquid phase stream 3 contains 1.2 mol% isononanal aldehyde, 98.1 mol% isononanoic acid, and 0.7 mol% other components from the oxidation reactor A, see Paras. [0078]-[0080];[0097] and Fig. 1. Zhenfeng teaches the composition of 100% of the liquid after oxidation with only 0.7 mol% of compounds other than isononanal aldehyde and isononanoic acid; therefore, any unreacted molecular oxygen dissolved in the liquid phase of the oxidation reaction of Zhenfeng is in a concentration of less than or equal to 0.7 mol%.
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 Braithwaite and Zhenfeng teach molecular oxygen dissolved in the liquid phase of an oxidation reaction of an aldehyde to a carboxylic acid, a person of ordinary skill in the art has good reason to quantify and separate any unreacted dissolved molecular oxygen from the carboxylic acid product containing liquid phase, by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of obtaining a purified carboxylic acid, see Zhenfeng, Paras. [0078];[0097]-[0099]; Fig. 1.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applicants arguments on pages 6-7 of the remarks filed on 20 October 2025 that “Hofen is non-analogous art”, “Nor is the reference reasonably pertinent to the problem sought to be solved by the instant inventors”. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention, see In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992) and MPEP 2141.
In this case, Hofen is in the known prior art field of separating molecular oxygen from a liquid phase after an epoxidation reaction in order to obtain a purified oxygen containing hydrocarbon and is applied to teach the problem to be solved of removing molecular oxygen from a liquid phase in order to obtain a purified oxygen containing hydrocarbon product, see Paras. [0027];[0036]-[0037];[0041]-[0042]. Therefore, it would have been obvious for a person of ordinary skill in the art to rely upon Hofen before the effective filing date of the claimed invention for knowledge generally available within the art regarding separating molecular oxygen from a liquid phase after an oxidation reaction, see MPEP 2143 B & G.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applicants arguments on page 7 of the remarks filed on 20 October 2025 that “[i]t was surprising that merely reducing or at least degrading of molecular oxygen before distillation would lead to color stable carboxylic acids after distillation with very low tendency to darken over time during storage”. It is noted “very low tendency to darken over time during storage” is not currently claimed.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious, see Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In addition, “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP 716.02(d). Applicants have not provided a comparison to the closest prior art and tests inside and outside the limitations of step (b) to support their argument of surprising and unexpected results, see MPEP 716.02(e).
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applicants arguments on pages 7-8 of the remarks filed on 20 October 2025 that “[t]he process and measures described in Shimizu have nothing to do with the process to which the instant application refers to. Therefore, the person skilled in the art would definitely not have considered Shimizu.” It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention, see In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, Shimizu is in the known prior art field of producing color stable carboxylic acids, such as acetic acid, and carboxylic acids derived from aldehydes, see Abstract; Para. [0116]. Shimizu is applied to teach the problem to be solved of purifying a liquid phase comprising molecular oxygen and a carboxylic acid product in order to obtain a purified carboxylic acid product, see the 35 USC 103 rejection below. Therefore, it would have been obvious for a person of ordinary skill in the art to rely upon Shimizu before the effective filing date of the claimed invention for knowledge generally available within the art regarding purifying a liquid phase having a color stable carboxylic acid, see MPEP 2143 B & G.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applicants arguments on page 8 of the remarks filed on 20 October 2025 that “Muratoglu is wholly unrelated to the instant claimed process, and has no relation to the technologies of any of the prior art. It is non-analogous and would not have been considered by an ordinary skilled artisan.” It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention, see In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, Muratoglu is in the known prior art field of removing oxygen and other impurities from hydrocarbons by tempering/annealing to prevent further oxidation and color change, see Pg. 10, Lns. 8-14; Pg. 18, Last Para. -Pg. 19, Ln. 5; Pg. 19, 35 Vacuum; Pg. 21, Lns. 1-16; and Pg. 32, Last Seven Lns., and is applied to teach the problem to be solved of tempering/annealing the hydrocarbon in order to sufficiently remove excess oxygen to minimize further oxidation in order to maintain the stability of the color, see Pg. 9, Ln. 60-Pg. 10, Ln. 14; Pg. 18, Last Para. -Pg. 19, Ln. 5; Pg. 19, 35 Vacuum; and Pg. 32, Last Seven Lns. Therefore, it would have been obvious for a person of ordinary skill in the art to rely upon Muratoglu before the effective filing date of the claimed invention for knowledge generally available within the art regarding processes involving removing excess impurities from hydrocarbons, maintaining color stability of hydrocarbons, and preventing further oxidation of hydrocarbons, see MPEP 2143 B & G.
For the reasons indicated above, applicant’s above arguments are not persuasive.
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 17-24, 27, 28, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Braithwaite et al. (US20020010364, published 24 January 2002, hereinafter Braithwaite) in view of Zhenfeng et al. (CN108047027, published 18 May 2018, cited by applicants 20 March 2023, see machine translation, hereinafter Zhenfeng) and Hofen et al. (US20200109125, published 09 April 2020, hereinafter Hofen).
Braithwaite teaches the claims 17, 18, and 28 limitations of a process for producing one or more organic acids, such as 2-ethylhexanoic acid, in high purity of at least about 99 percent or greater, see Paras. [0019];[0118]-[0120], meeting the process for the preparation of a saturated aliphatic carboxylic acid with 6 to 12 carbon atoms in claim 17;
The Braithwaite process is an oxidation of the corresponding aldehyde, such as 2-ethylhexaldehyde, with molecular oxygen, which comprises
(a) converting the corresponding aldehyde, such as 2-ethylhexaldehyde, with molecular oxygen at a temperature of about −25° C. or lower to about 125° C and an oxygen partial pressure of about 1 psi to about 200 psi or 0.007 to 1.379 mPa to obtain a liquid mixture containing the saturated aliphatic carboxylic acid, such as 2-ethylhexanoic acid, see Paras. [0031];[0033]-[0038];[0118]-[0119], the liquid mixture contains at most 2.5% unreacted oxygen as the process maintains an oxygen consumption efficiency greater than 97.5%, see Para. [0071], and the liquid mixture contains about 2% unconverted aldehyde as the process is designed to convert about 98% of the aldehyde, see Paras. [0115]-[0116], meeting most of the step (a) limitations in claim 17; and, the specific aldehyde and acid in claim 18; and,
(c) distilling the mixture obtained in a distillation device containing a purification column, in a single separation zone, and withdrawing therefrom a purified distillate containing at least about 99 percent or greater of the saturated aliphatic carboxylic acid based on the distillate, see Para. [0120], meeting most of the step (c) limitations and within the purity range of step (c) in claim 17 and the non divided wall column in claim 28.
Braithwaite does not teach:
The claim 17 limitations of ≤ 2 mol-% of the corresponding aldehyde with respect to the saturated aliphatic carboxylic acid; (b) removing molecular oxygen from the liquid mixture obtained in step (a) to a content of ≤ 10 wt.-ppm based on the liquid mixture; and (c) distilling the mixture obtained in step (b); and,
The claims 19-24, 27, and 31 limitations, specifically the claim 28 feed and output limitations.
Zhenfeng relates to preparing the corresponding carboxylic acid by aldehyde oxidation reaction using air, see Abstract and Paras. [0014];[0097]-[0098], where following the catalyst free oxidation, see Para. [0097], the stream 3 containing 1.2 mol% isononanal aldehyde, 98.1 mol% isononanoic acid, and 0.7 mol% other byproduct components from the oxidation reactor A, see Paras. [0078]-[0080] and Fig. 1, meeting and within the mixture containing the acid contains ≤2 mol-% aldehyde with respect to carboxylic acid in claim 17, in addition, as calculated by the examiner, the stream 3 outlet mol% equates to 100 mol% which equates to 100 wt% of material sent to the distillation tower with 0.7 wt% other byproducts, such as peroxides and oxygen, meeting an within the range in claim 19;
Stream 3 is sent to a decomposition reactor D to catalytically decompose peroxide, see Paras. [0078];[0097]-[0098] and Fig. 1, the heated decomposition reactor effluent has peroxide levels of undetectable which equates to less than 1 ppm, see Para. [0052], the outlet stream 5 from the decomposition reactor D is sent to distillation tower E leading to the distillate from the distillation tower E having peroxide levels of undetectable which equates to less than 1 ppm, see Para. [0052]; Fig. 1, and Translation Pg. 17, Table 5, meeting the step (c) distillate having an active oxygen content of 0 to 100 wt.-ppm based on the distillate in claim 31, as stated in the current specification Pg. 29, Lns. 10-12 “[t]he C6-12 saturated aliphatic carboxylic acids also have a very low content of active oxygen and consequently a very low content of peroxides such as peroxy acids, hydroperoxides and other peroxides” indicating the active oxygen content is directly related to the content of peroxides in the sample.
Braithwaite and Zhenfeng do not teach:
The claim 17 limitations of (b) removing molecular oxygen from the liquid mixture obtained in step (a) to a content of ≤ 10 wt.-ppm based on the liquid mixture; and (c) distilling the mixture obtained in step (b); and,
The claims 20-24 and 27 limitations, specifically the claim 28 feed and output limitations.
Hofen relates to the extraction of oxygen from liquid mixtures of hydrocarbons, see Abstract, where the liquid reaction mixture is stripped of oxygen with an inert gas to provide an oxygen depleted stripped liquid reaction mixture and a strip gas stream, the inert gas is nitrogen, see Paras. [0015];[0027], where stripping is carried out in a counter-current stripping column at a temperature of 35 to 70 °C and a pressure of 2.5 MPa, see Paras. [0027];[0037];[0041], meeting:
The oxygen is removed by an inert gas nitrogen in claim 20;
Nitrogen, N2, is a pure gas which contains zero oxygen within the range in claim 22;
In a counter current flow in claim 21;
Within the stripping temperature and pressure range in claim 23; and,
The inert gas is nitrogen; therefore, (Ar off-gas)/n(O2 off-gas) equates to 0/n(O2 off-gas) which equals 0 which is the lower limit of the range in claim 27.
The liquid in Hofen is stripped in order to provide a stripped liquid reaction mixture which is essentially free of oxygen and preferably contains less than 300 ppm by weight oxygen and is essentially free of oxygen, see Paras. [0027];[0041], meeting and within the range of essentially free or close to 0 ppm oxygen of step (b) in claim 17 and in claim 24. After oxygen stripping in column 10 the essentially free of oxygen propene phase 11 is separated in an extractive distillation column 26 with methanol, where the feed is in the lower section of the column and recovered propene rich phase 34 from the top section of the column is sent for further distillation in column 35, see Paras. [0036];[0041]-[0042] and Fig. 1, meeting distilling the mixture of step (b) in step (c) in claim 17 and the specific feed and output locations in claim 28.
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 synthesis of Braithwaite to remove the oxygen and peroxides from the produced hydrocarbon prior to distillation in order to obtain a highly pure hydrocarbon after distillation, as taught by Zhenfeng and Hofen, with a reasonable predictability of success for the purpose of safely obtaining a carboxylic acid product of high quality while removing oxygen and peroxides to minimize the chance of an explosion during distillation, see Hofen, Paras. [0009];[0011];[0029], and Zhenfeng, Para. [0052].
By applying “routine optimization” and “predictable results” to select the optimal carboxylic acid production oxygen and peroxide removal process, one of ordinary skill in the art would have been motivated to make these modifications because Zhenfeng and Hofen provide a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to produce an impurity free carboxylic acid by pursuing the known options within their technical grasp for the benefit of safely obtaining a carboxylic acid product of high quality while removing oxygen and peroxides to minimize the chance of an explosion during distillation, see Hofen, Paras. [0009];[0011];[0029]; Zhenfeng, Para. [0052]; 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.
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 reactor temperatures and pressures and reactant temperatures and concentrations, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Claims 25, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Braithwaite et al. (US20020010364, published 24 January 2002, hereinafter Braithwaite) in view of Zhenfeng et al. (CN108047027, published 18 May 2018, cited by applicants 20 March 2023, see machine translation, hereinafter Zhenfeng) and Hofen et al. (US20200109125, published 09 April 2020, hereinafter Hofen), as applied in the 35 USC 103 rejection of claims 17-24, 27, 28, and 31 above, in further view of Shimizu et al. (US20180354884, published 13 December 2018, hereinafter Shimizu).
Braithwaite, Zhenfeng, and Hofen do not teach the claims 25, 26, 29, and 30 limitations.
Shimizu relates to controlling the oxygen concentration in process streams involved in the production of acetic acid to zero in the gaseous phase and zero in the liquid phase, see Abstract and Paras. [0081];[0083]. The product acetic acid is also tested for APHA color number and has a color number of 5 and 10, see Paras. [0310]-[0311];[0326] and Table 66.
In the Shimizu purification process, waste gas from distillation throughout the system is collected using a vacuum pump, see Para. [0075]. Crude acetic acid feed line 42 which becomes line 44 with the same composition is fed to the purification distillation column 5 with an O2 concentration of 100 ppt to 100 ppm, see Paras. [0159]-[0160], Table 15, then line 51 with an O2 concentration of the off gas of 100 ppb to 200 ppm after purification distillation is produced, see Paras. [0169]-[0170], Table 17, i.e., 100 ppm O2 in feed line 42/44 and 100 ppm O2 in off gas line 51 equates to zero times the amount of O2 fed as the amount of O2 in the off gas, meeting and within the range of O2 in claim 26; and,
The purification process is conducted in distillation devices with an absolute pressure of about 0.03 to 1 MPa or 30 to 1000 kPa and temperatures of about 80 to 250 °C, see Paras. [0142];[0322];[0328], meeting and within the range in claim 25, in order to produce an acetic acid with at least 99.5% wt. to 100% wt. acetic acid, AcOH, see Paras. [0098];[0161]-[0165];[0202], Tables 16 and 27, meeting the purified distilled acid concentration in claim 29.
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 synthesis parameters of Braithwaite to obtain a highly pure carboxylic acid with substantially zero oxygen before and after distillation, as taught by Shimizu, with a reasonable predictability of success for the purpose of obtaining a carboxylic acid product of high quality by removing oxygen in order to reduce the formation of by-product iodine thus preventing the local corrosion of the process unit and/or line and to prevent coloring of the product carboxylic acid, see Shimizu, Paras. [0013];[0056];[0076].
By applying “routine optimization” and “predictable results” to select the optimal carboxylic acid production oxygen removal process, one of ordinary skill in the art would have been motivated to make these modifications because Shimizu provides a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to produce an impurity free carboxylic acid by pursuing the known options within their technical grasp for the benefit of obtaining a carboxylic acid product of high quality by removing oxygen in order to reduce the formation of by-product iodine thus preventing the local corrosion of the process unit and/or line and to prevent coloring of the product carboxylic acid, see Shimizu, Paras. [0013];[0056];[0076] 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.
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 reactor temperatures and pressures and reactant temperatures and concentrations, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Braithwaite et al. (US20020010364, published 24 January 2002, hereinafter Braithwaite) in view of Zhenfeng et al. (CN108047027, published 18 May 2018, cited by applicants 20 March 2023, see machine translation, hereinafter Zhenfeng) and Hofen et al. (US20200109125, published 09 April 2020, hereinafter Hofen), as applied in the 35 USC 103 rejection of claims 17-24, 27, 28, and 31 above, in further view of Shimizu et al. (US20180354884, published 13 December 2018, hereinafter Shimizu) and Muratoglu et al. (ES2372742, published 26 January 2012, see machine translation, hereinafter Muratoglu).
Braithwaite, Zhenfeng, and Hofen do not teach the claim 30 limitations.
Shimizu teaches the product acetic acid is tested for APHA color number and has a color number of 5 and 10, see Paras. [0310]-[0311];[0326] and Table 66, meeting and within the range of the color number in claim 30.
Muratoglu relates to tempering hydrocarbon ethylene materials, see Abstract and Pg. 6, Lns. 48-50. The tempering is conducted for about 4 hours in a CO2 atmosphere and at temperatures of below or above the melting point of the ethylene material, see Pg. 21, Lns. 35-45, such as maintaining a temperature of 0.01 to 500 °C, and the pressure is maintained at 7 kPa to 345 kPa or 0.07 MPa to 0.345 MPa, see Pg. 9, Ln. 60-Pg. 10, Ln. 7, meeting and encompassing the conditions, temperature, pressure, and time in claim 30.
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 Braithwaite to determine the color value of the obtain highly pure carboxylic acid, as taught by Shimizu, after a tempering procedure, as taught by Muratoglu, with a reasonable predictability of success for the purpose of measuring the efficiency of the removal of oxygen on the color of the obtained carboxylic acid product, see Shimizu, Paras. [0056];[0076], and the efficiency of the discoloration prevention synthesis after tempering the product, see Muratoglu, Pg. 10, Lns. 8-14 and Pg. 32, Last Seven Lns.
By applying “routine optimization” and “predictable results” to select the optimal carboxylic acid production oxygen removal and discoloration prevention process, one of ordinary skill in the art would have been motivated to make these modifications because Shimizu and Muratoglu provide a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to produce an impurity free carboxylic acid of the optimal color by pursuing the known options within their technical grasp for the benefit of obtaining a carboxylic acid product of high quality by removing oxygen in order to reduce the formation of by-product iodine thus preventing coloring of the product carboxylic acid, see Shimizu, Paras. [0056];[0076], and to test the efficiency of the discoloration prevention synthesis after tempering the product, see Muratoglu, Pg. 10, Lns. 8-14 and Pg. 32, Last Seven Lns. 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.
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 color number of the carboxylic acid product after tempering, “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.
THIS ACTION IS MADE FINAL. 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