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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 11/6/2025.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 11/6/2025. In particular, claim 9 has been incorporated into claim 1. This combination of limitations was not present in the original claims. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Jouanneau ‘418 (US 2018/0334418) in view of Jouanneau ‘739 (US 2019/0077739).
With respect to claim 1, Jouanneau ‘418 discloses a method for manufacturing 1,4-bis(4-phenoxybenzoyl)benzene by providing a reactant mixture comprising terephthaloyl chloride and diphenyl ether in solvent (paragraphs 0009-0010) which is solubilized (i.e., dissolved to prepare a solution) per the example (paragraph 0107), increasing the temperature of the reactant mixture from an initial temperature of -15 to -25°C (paragraphs 0016-0017) to a final temperature of at least 30°C (paragraph 0018) when the Lewis acid (i.e., catalyst) is added (paragraph 0019), and separating 1,4-bis(4-phenoxybenzoylbenzene) from a product slurry by adding a protic solvent (i.e., desorbing) (paragraphs 0021-0023).
Jounneau ‘418 fails to disclose cooling and maintaining at a temperature 1-15°C after separating the Lewis acid catalyst.
Jounneau ‘739 discloses a method for manufacturing 1,4-bis (4-phenoxybenzoylbenzene) comprising carrying out a solid/liquid separation to obtain a 1,4-bis(4-phenoxybenzoyl)benzene-Lewis acid complex precipitate, adding a decomplexing solvent such as a protic solvent, and recovering the 1,4-bis(4-phenoxybenzoyl)benzene (abstract), wherein the separation occurs at a reduced temperature of not exceeding 30°C (paragraph 0155) and subsequently further cooled when adding decomplexing agent (paragraph 0176). Jounneau ‘739 does not explicitly disclose a range of 1-15°C like in claimed step (d). Even so, given that it teaches reducing the temperature to below up to 30°C, it would have been obvious to one of ordinary skill in the art to utilize the range of 1-15°C—absent a showing of unexpected or surprising results.
Given that Jounneau ‘418 discloses a separation step and further given that Jouanneau teaches that subsequently separating and decomplexing the 1,4-bis(4-phenoxybenzoyl)benzene-Lewis acid complex precipitate by cooling to below 30°C, it would have been obvious to one of ordinary skill in the art to cool Jounneau ‘418’s slurry to within the claimed range of 1-15°C.
Also, Jounneau ‘739 teaches that the Lewis acid derivative can be recovered and the solvent removed to wastewater treatment (paragraph 0166) but does not disclose the APHA value of the effluent after neutralizing and filtering.
Even so, given that Jounneau ‘739 teaches that the Lewis acid catalyst can be recovered and waste solvent purified in the wastewater treatment, it would have been obvious to one of ordinary skill in the art to purify the waste solvent to have APHA value like claimed. Case law holds that purer forms of known products may be patentable, but the mere purity of a product, by itself, does not render the product unobvious. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989).
With respect to claim 2, Jouanneau ‘418 teaches that the weight ratio of terephthaloyl chloride to diphenyl ether 0.05-0.6 (paragraph 0046), which is 1:0.2 to 20.
With respect to claim 3, Jouanneau ‘418 teaches that the solvent can be o-dichlorobenzene or dichloromethane (paragraph 0095), e.g., ortho-chlorobenzene (paragraph 0106).
With respect to claim 4, Jouanneau ‘418 teaches that the Lewis acid catalyst can be aluminum trichloride and ferric chloride (paragraph 0097), e.g., aluminum trichloride (paragraph 0106).
With respect to claim 5, Jounneau ‘418 teaches that a Friedel-Crafts reaction is performed with Lewis acid as Friedel-Crafts catalyst (paragraph 0033).
With respect to claim 6, in the examples, after addition of the catalyst, the mixture is reacted for another 3 hours (paragraph 0106).
With respect to claim 7, the protect solvent includes methanol acetic acid, formic acid, ethanol, isopropanol, and benzyl alcohol (paragraph 0088).
With respect to claim 8, Jounneau ‘418 teaches that the Lewis acid catalyst is added in 5-600 minutes (i.e., up to 10 hours) (paragraph 0047).
With respect to claim 10, Jounneau ‘739 teaches that the Lewis acid derivative can be recovered and the solvent removed to wastewater treatment (paragraph 0166) but does not disclose the yellow index of the effluent after neutralizing and filtering.
Even so, given that Jounneau ‘739 teaches that the Lewis acid catalyst can be recovered and waste solvent purified in the wastewater treatment, it would have been obvious to one of ordinary skill in the art to purify the waste solvent to have yellow index like claimed.
Response to Arguments
Applicant's arguments filed 11/6/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Jouanneau ‘739 does not disclose 1-15°C in step d of the claimed method.
Jounneau ‘739 discloses a method for manufacturing 1,4-bis (4-phenoxybenzoylbenzene) comprising a step of recovering the 1,4-bis(4-phenoxybenzoyl)benzene (abstract), wherein the separation occurs at a reduced temperature of not exceeding 30°C (paragraph 0155) and subsequently further cooled when adding decomplexing agent (paragraph 0176). While Jounneau ‘739 does not explicitly disclose a range of 1-15°C like in claimed step (d), the temperature range of 30°C or less overlap with the claimed range. Case law holds that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Therefore, the claimed range of 1-15°C is obvious, absent a showing of unexpected or surprising results.
Applicant also argues that Jounneau ‘739 does not teach reducing yellowing when APHA value is 1-10.
While not explicitly taught, Jounneau ‘739 suggests reducing APHA value and yellow index. Given that Jounneau ‘739 teaches that the Lewis acid catalyst can be recovered and waste solvent purified in the wastewater treatment and further given that the yellow index is directly related to APHA value or other level of impurity, it would have been obvious to one of ordinary skill in the art to purify the waste solvent to have APHA value and yellow index like claimed. Case law holds that purer forms of known products may be patentable, but the mere purity of a product, by itself, does not render the product unobvious. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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