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 .
Priority
This application is a 371 of PCT/KR2021/014268 which claims the benefit of KR 10-2020-0183552, KR 10-2020-0148082, KR 10-2020-0134655, and KR 10-2020-0134656 with an effective filing date of 16 October 2020 as reflected in the filing receipt mailed on 25 August 2023.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Election/Restrictions
Applicant’s election of Group I drawn to claims 1-10, 20-29, and 41 in the reply filed on 12 January 2026 is acknowledged.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse, see MPEP § 818.01(a).
Claims 11-19 and 30-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention Group II, there being no allowable generic or linking claim. Herein, claims 1-10, 20-29, and 41 are examined on the merits.
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.
Claim 1-10, 20-29, and 41 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.
Claims 1, 4-9, 20-28, and 41 state “a lactic acid aqueous solution”, “a 1-1 stream”, “a 1-2 stream”, “a 1-3 stream”, “a 3-1 stream”, “a 3-2 stream”, and “a 3-3 stream”. It is unclear as to whether the 1-1, 1-2, etc. streams identify a concentration of the streams, such as the lactic acid concentration in the streams, designate the locations of the lactic acid streams throughout the process, or refer to completely differing streams recycled from other streams throughout the process. Herein, the 1-1, 1-2, etc. streams are interpreted, as partially identified in the instant specification on Pg. 36, Ln. 9-Pg. 37, Ln. 9 and in the Figure, to designate the locations of the lactic acid streams throughout the process and the 1-1 stream is interpreted to be a differing starting stream than the 3-1 stream.
In addition, the claims are rejected because they include reference characters which are not enclosed within parentheses.
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims, see MPEP § 608.01(m).
Claims 2-10, 21-29, and 41 depend from base claim 1 or base claim 20 and are included in this rejection as they do not correct the informalities identified in base claim 1 or in base claim 20.
Claims 5, 8, 26, and 27 state the unit for the flow rate is “g/min”. It is unclear as to whether this unit is “grams/min” or “gallons/min”. As instantly claimed, the 1-1 liquid stream, the 3-1 liquid stream, the 1-2 gas phase containing a steam, and the 3-2 gas phase containing a steam are all sprayed. The specification does not provide clarity regarding the units claimed, see MPEP 21111 and 2173.02. Herein, g/min is interpreted as grams/min.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8, 9, and 26-28 rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 states a flow rate of the “1-2 stream”. Claim 8 depends from claim 6 and claim 6 states “mixing and spraying the 1-1 stream and a 1-2 stream”. Claim 8 appears to imply the 1-2 stream is not mixed with the 1-1 stream and is sprayed separately from the 1-1 stream. As a result, claim 8 fails to include all the limitations of the claim upon which it depends. Herein, claim 8 is interpreted as the mixed stream “is sprayed at a flow rate …”.
Claim 9 states a ratio of the flow rate of the “1-1 stream” to the “1-2 stream”. As stated above, Claim 9 depends from claim 6 and claim 6 states “mixing and spraying the 1-1 stream and a 1-2 stream”. Claim 9 appears to imply the 1-2 stream is not mixed with the 1-1 stream and is sprayed separately from the 1-1 stream. As a result, claim 9 fails to include all the limitations of the claim upon which it depends. Herein, claim 9 is interpreted as the mixed stream having a mol/vol/wt. ratio of the 1-1 stream to the 1-2 stream.
Claims 26 and 27 state differing sprayed flow rates of the “3-1 stream” and the “3-2 stream”. Claims 26 and 27 depend from claim 20 and claim 20 states “mixing and spraying” “a 3-1 stream” and “a 3-2 stream”. Claims 26 and 27 appear to imply the 3-2 stream is not mixed with the 3-1 stream and is sprayed separately from the 3-1 stream. As a result, claims 26 and 27 fail to include all the limitations of the claim upon which it depends. Herein, claims 26 and 27 are interpreted as the mixed stream has a flow rate between 0.05 g/min to 4.0 g/min.
Claim 28 states a ratio of the flow rate of the “3-1 stream” to the “3-2 stream”. Claim 28 depends from claim 20 and claim 20 states “mixing and spraying” “a 3-1 stream” and “a 3-2 stream”. Claim 28 appears to imply the 3-2 stream is not mixed with the 3-1 stream and is sprayed separately from the 3-1 stream. As a result, claim 28 fails to include all the limitations of the claim upon which it depends. Herein, claim 28 is interpreted as the mixed stream having a mol/vol/wt. ratio of the 3-1 stream to the 3-2 stream.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 4, 6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Godlewski et al. (US20130274515, published 17 October 2013, hereinafter Godlewski).
Godlewski is in the known prior art field of processing lactic acid into vapor form to catalytically produce various products, such as acrylic acid, see Abstract; Paras. [0026]-[0032];[0071]-[0072];[0074];[0087].
Regarding instant application claim 1, Godlewski teaches a method of vaporizing hydroxypropionic acid, such as 2-hydroxypropionic acid (hereinafter lactic acid), by combining an aqueous solution of lactic acid heated to a temperature from about 50° C. to about 100° C. with an inert gas, such as steam, to form an aqueous solution/gas blend, then feeding the aqueous solution/gas blend to atomization nozzles, such as pressure swirl atomizers, that spray the blend into an evaporator in order to obtain a gas comprising lactic acid, see Paras. [0071]-[0079];[0083], meeting the heating, pressurizing, spraying, vaporizing, and obtaining in instant application claim 1.
Regarding instant application claim 3, Godlewski teaches the concentration of the lactic acid in the aqueous solution is between about 5 wt % and about 50 wt %, see Para. [0076], meeting within the broad range in instant application claim 3.
Regarding instant application claim 4, Godlewski teaches the temperature of the sprayed lactic acid solution is from about 50° C. to about 100° C. with an inert gas and with the inert gas as steam the temperature must be above 100° C., see Paras. [0077];[0083] and MPEP 2112, meeting within the broad temperature range in instant application claim 4.
Regarding instant application claim 6, as stated above, Godlewski teaches combining an aqueous solution of lactic acid heated to a temperature from about 50° C. to about 100° C. with an inert gas, such as steam, to form an aqueous solution/gas blend, then feeding the aqueous solution/gas blend to atomization nozzles, such as pressure swirl atomizers, that spray the blend into an evaporator in order to obtain a gas comprising lactic acid, see Paras. [0071]-[0079];[0083], meeting the aqueous solution/steam blend in instant application claim 6.
Regarding instant application claim 10, Godlewski teaches a process for converting lactic acid to acrylic acid by evaporating an aqueous solution of lactic acid/steam blend to produce lactic acid vapor and steam, then dehydrating the gaseous mixture in a reactor at a GHSV of about 3,600 h−1 at a temperature of 350° C. to about 425° C. by contacting the mixture with a dehydration catalyst under a pressure of about 360 psig, thereby producing/obtaining the acrylic acid, see Paras. [0077];[0087]-[0088], meeting the obtaining acrylic acid by dehydration of lactic acid in instant application claim 10.
Godlewski does not teach the above limitations in one single express embodiment.
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 embodiments of Godlewski to select steam as the inert gas, see MPEP 2144.07, and to select the desired temperature range of the process streams at the desired concentrations, see MPEP 2144.05, with a reasonable predictability of success for the purpose of efficiently vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Paras. [0073];[0080];[0083]-[0084];[0162]-[0164].
By applying “routine optimization” and “predictable results” to select the optimal starting feed concentrations, stream temperatures, and inert gas, one of ordinary skill in the art would have been motivated to make these modifications because Godlewski provides a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to vaporize a lactic acid aqueous solution by pursuing the known options within their technical grasp for the benefit of efficiently vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Paras. [0073];[0080];[0083]-[0084];[0162]-[0164] and MPEP 2141.
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 Godlewski teaches the vaporization of an aqueous lactic acid solution, a person of ordinary skill in the art has good reason to modify Godlewski by relying upon the differing embodiments of Godlewski before the effective filing date of the claimed invention for knowledge generally available within the vaporization art regarding the differing process parameters, for the benefit of efficiently vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Paras. [0073];[0080];[0083]-[0084];[0162]-[0164] 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.
“The 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 concentration of the aqueous solution, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as steam as an inert gas, 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 the temperature of the streams, “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 1, 3-10, 20-24, and 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Godlewski et al. (US20130274515, published 17 October 2013, hereinafter Godlewski), as applied in the 35 USC 103 rejection of claims 1, 3, 4, 6, and 10 above, in view of Kamei et al. (JP2011225533, published 10 November 2011, see machine translation, hereinafter Kamei ‘533).
Regarding instant application claim 20, Godlewski teaches a method of vaporizing hydroxypropionic acid, such as 2-hydroxypropionic acid (hereinafter lactic acid), by combining an aqueous solution of lactic acid heated to a temperature from about 50° C. to about 100° C. with an inert gas, such as steam, to form an aqueous solution/gas blend, then feeding the aqueous solution/gas blend to atomization nozzles, such as pressure swirl atomizers, that spray the blend into an evaporator in order to obtain a gas comprising lactic acid a monomeric lactic acid comprising at least 95 wt % of lactic acid in monomeric form based on the total amount of lactic acid, see Paras. [0071]-[0079];[0083]-[0084], meeting the mixing, spraying, and obtaining in instant application claim 20.
Regarding instant application claim 21, Godlewski teaches the concentration of the lactic acid in the aqueous solution is between about 5 wt % and about 50 wt %, see Para. [0076], meeting within the range in instant application claim 21.
Regarding instant application claim 22, Godlewski teaches prior to mixing with an inert gas, such as steam, the lactic acid aqueous solution under goes the heating step involving heating the lactic acid aqueous solution at a temperature from about 95° C. to about 100° C. to remove the oligomers of the lactic acid and produce a monomeric lactic acid aqueous solution comprising at least 80 wt% to 95 wt% of lactic acid in monomeric form based on the total amount of lactic acid, see Paras. [0071];[0073];[0077];[0084], i.e., less than 5 wt% to 20 wt% of multimers, meeting within the range in instant application claim 22.
Regarding instant application claim 23, Godlewski teaches the temperature of the sprayed lactic acid solution is from about 50° C. to about 100° C. with an inert gas and with the inert gas as steam the temperature must be above 100° C., see Paras. [0077];[0083] and MPEP 2112, meeting within the broad temperature range in instant application claim 23.
Regarding instant application claim 29, Godlewski teaches a process for converting lactic acid to acrylic acid by evaporating an aqueous solution of lactic acid/steam blend to produce lactic acid vapor and steam, then dehydrating the gaseous mixture in a reactor at a GHSV of about 3,600 h−1 at a temperature of 350° C. to about 425° C. by contacting the mixture with a dehydration catalyst under a pressure of about 360 psig, thereby producing/obtaining the acrylic acid, see Paras. [0077];[0087]-[0088], meeting the obtaining acrylic acid by dehydration of lactic acid in instant application claim 29.
Godlewski further teaches the known prior art of evaporation through use of heat exchange in a separate evaporator or in a combination evaporator/dehydrator, see Paras. [0079]-[0081]. The pressure, temperature, and flow rate of the materials throughout the process effect the purity of the final product and the amount of side reactions, including the formation of oligomers, see Paras. [0059]-[0073];[0078].
Godlewski does not teach:
The instant application claim 20 limitation of vaporizing through heat exchange; and,
The limitations of instant application claims 5, 7, 8, 9, 24, and 26-28.
Kamei ‘533 is in the known prior art field of a method for producing acrylic acid from a dehydration reaction of hydroxypropionic acid, while reducing a generation amount of by-products such as a heavy product produced by a side reaction, i.e., oligomers, see Abstract; Para. [0030]. Kamei ‘533 is applied to teach the above method which includes the vaporization of hydroxypropionic acid, such as 2-hydroxypropionic acid (hereinafter lactic acid) in the presence of water, and an inert gas, such as steam and superheated steam, see Abstract; Paras. [0002]-[0003];[0011];[0016]-[0017];[0032].
Regarding instant application claim 20, Kamei ‘533 teaches the lactic acid aqueous solution is mixed with an inert gas, such as nitrogen and/or superheated steam, where the hot gas supplies the heat to vaporize the lactic acid aqueous solution, see Paras. [0016]-[0017];[0030]-[0034], meeting the vaporizing the lactic acid solution by contact with the gas solution containing steam in instant application claim 20.
Regarding instant application claims 5, 8, 9, and 26-28, Kamei ‘533 teaches the hydroxypropionic acid is added to the evaporator at a flow rate of 0.13 g/min, 0.53 g/min, or 0.75 g/min and superheated steam is added to the evaporator at an inert gas rate, such as nitrogen, of 0.1 L/min or 1.3 L/min, see Paras. [0031]-[0032];[0061];[0063];[0066], as calculated by the examiner 0.1 L/min or 1.3 L/min inert gas nitrogen is 0.125 g/min or 1.625 g/L, where the flow rate of water and/or inert gas is preferably 1.5 to 200 times the total amount of water and/or inert gas relative to the flow rate of hydroxypropionic acid in the raw material composition, see Paras. [0033]-[0034], as calculated by the examiner 1.5 times 0.13 g/min, 0.53 g/min, or 0.75 g/min acid is 0.195 g/min, 0.795 g/min, or 1.125 g/min superheated steam, meeting:
Within the flow rate ranges in instant application claim 5, in instant application claim 8, in instant application claim 26, and in instant application claim 27; and,
Within the flow rate ratio in instant application claim 9 and in instant application claim 28.
Regarding instant application claims 7 and 24, Kamei ‘533 teaches the hydroxypropionic acid is added to the evaporator at a temperature of 200 ° C. to 350 ° C. and superheated steam is heated to 250 ° C. to 350 ° C. then added to the evaporator, see Paras. [0031]-[0032], meeting within the steam temperature ranges in instant application claim 7 and in instant application claim 24.
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 embodiments of Godlewski to select steam as the inert gas, see MPEP 2144.07, and to select the desired temperature range of the process streams at the desired concentrations, see MPEP 2144.05, with a reasonable predictability of success for the purpose of efficiently vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Godlewski, Paras. [0073];[0080];[0083]-[0084];[0162]-[0164].
By applying “routine optimization” and “predictable results” to select the optimal starting feed concentrations, stream temperatures, and inert gas, one of ordinary skill in the art would have been motivated to make these modifications because Godlewski provides a finite number of identified, predictable solutions. A person of ordinary skill in the art has good reason to vaporize a lactic acid aqueous solution by pursuing the known options within their technical grasp for the benefit of efficiently vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Godlewski, Paras. [0073];[0080];[0083]-[0084];[0162]-[0164] and MPEP 2141.
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 vaporization process conditions of Godlewski with the vaporization process conditions of Kamei ‘533 with a reasonable predictability of success for the purpose of efficiently and economically vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Kamei ‘533, Abstract; Paras. [0010]-[0011];[0018];[0030]-[0031];[0061].
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 Godlewski and Kamei ‘533 teach the vaporization of an aqueous lactic acid solution, a person of ordinary skill in the art has good reason to modify Godlewski by relying upon the teachings of Kamei ‘533 before the effective filing date of the claimed invention for knowledge generally available within the vaporization art regarding the differing process parameters, for the benefit of efficiently and economically vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Kamei ‘533, Abstract; Paras. [0010]-[0011];[0018];[0030]-[0031];[0061] 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.
“The 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 concentration of the aqueous solution, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as steam as an inert gas, 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 the temperature of the streams, concentration of the streams, and flow rate of the streams, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as relying on the heat transfer of steam for evaporation, “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 1-4, 6, 10, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Godlewski et al. (US20130274515, published 17 October 2013, hereinafter Godlewski), as applied in the 35 USC 103 rejection of claims 1, 3, 4, 6, and 10 above, in view of Kamei et al. (US20170253553, published 07 September 2017, hereinafter Kamei ‘553).
Godlewski teaches the known prior art of the pressure, temperature, and flow rate of the materials throughout the process effect the purity of the final product and the amount of side reactions, including the formation of oligomers, see Paras. [0059]-[0073];[0078].
Godlewski does not teach the limitations of instant application claims 2 and 41.
Kamei ‘553 is in the known prior art field of a method for producing acrylic acid from a dehydration reaction of lactic acid, while recycling and reusing oligomers obtained in the process, see Abstract; Paras. [0009]-[0018];[0058]-[0059]; Fig. 1. Kamei ‘553 is applied to teach the above method which includes preheating a lactic acid aqueous solution containing water, steam, and inert gas followed by vaporization of the solution, separation of the vapor from the condensate, and recycle of the condensate, see Paras. [0047]-[0048];[0054]-[0056]; Fig. 1.
Regarding instant application claim 2, Kamei ‘553 teaches a lactic acid aqueous solution, water, steam, and inert gases are pre-heated to the reaction temperature of 130° C. or higher and 350° C. or lower before piping to the vaporizer in order to reduce the temperature distribution in the vaporizer, see Paras. [0047]-[0048];[0054]-[0056]; Fig. 1. The temperature and pressure, such as 0.1 kPa or higher and 4 MPa or lower aka 0.001 to 40 bar, in the process is maintained throughout the process in order to not lose pressure and temperature in the tubes, see Paras. [0025];[0047];[0053]-[0054]; Fig. 1, meeting and within the temperature and pressure ranges in instant application claim 2.
Regarding instant application claim 41, Kamei ‘553 teaches after vaporization in heater 4, the lactic acid vapor in line 8 is separated in the gas-liquid separation tank 5 from the liquid lactic acid oligomer in line 6, then the liquid lactic acid oligomer in line 6 is sent back to the lactic acid vaporizer heater 4 as an aqueous lactic acid feed, see Fig. 1; Paras. [0036]-[0039], meeting the separating and recovering in instant application claim 41.
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 vaporization process conditions of Godlewski with the vaporization process conditions and condensate recycle of Kamei ‘553 with a reasonable predictability of success for the purpose of efficiently and economically vaporizing a lactic acid aqueous solution while recycling and reusing oligomers obtained in the process and employing a heat exchange from the water vapor, see Kamei ‘553, Abstract; Paras. [0009]-[0018];[0055]-[0059]; Fig. 1.
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 Godlewski and Kamei ‘553 teach the vaporization of an aqueous lactic acid solution, a person of ordinary skill in the art has good reason to modify Godlewski by relying upon the teachings of Kamei ‘553 before the effective filing date of the claimed invention for knowledge generally available within the vaporization art regarding the differing process parameters, for the benefit of efficiently and economically vaporizing a lactic acid aqueous solution while recycling and reusing oligomers obtained in the process and employing a heat exchange from the water vapor, see Kamei ‘553, Abstract; Paras. [0009]-[0018];[0055]-[0059]; Fig. 1 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, “[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 the temperature and pressure of the streams, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as relying on the heat transfer of steam for evaporation, “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 1, 3-10, and 20-29 are rejected under 35 U.S.C. 103 as being unpatentable over Godlewski et al. (US20130274515, published 17 October 2013, hereinafter Godlewski) in view of Kamei et al. (JP2011225533, published 10 November 2011, see machine translation, hereinafter Kamei ‘533), as applied in the 35 USC 103 rejection of claims 1, 3-10, 20-24, and 26-29 above, in further view of Berckmans et al. (US20150374015, published 31 December 2015, hereinafter Berckmans).
Godlewski teaches the known prior art of the pressure, temperature, and flow rate of the materials throughout the process effect the purity of the final product and the amount of side reactions, including the formation of oligomers, see Paras. [0059]-[0073];[0078].
Godlewski does not teach the limitations if instant application claim 25.
Berckmans is in the known prior art field of evaporation of an aqueous solution through use of super heated steam heat exchange, see Abstract; Paras. [0012];[0016];[0034]-[0038];[0046];[0053]-[0057]; Figs. 3-5, and Berckmans is applied to teach the same.
Regarding instant application claim 25, Berckmans teaches a spray dryer for treating a heat-sensitive material with superheated steam comprising a reaction chamber having at least one inlet for the introduction into the chamber of a stream of superheated steam and a nozzle for producing a spray of droplets into the path of the stream of superheated steam, said spray of droplets being formed from an aqueous liquid containing the heat-sensitive material, see Abstract; Para. [0046]. The temperature of the superheated steam at the inlet of the reaction chamber of the reactor is in the range of 150 to 650° C., such as 400° C., and the temperature of the aqueous liquid containing the heat-sensitive material to be sprayed through a nozzle is around room temperature, such as 18° C or 25° C, see Paras. [0009];[0021]-[0023];[0059];[0090];[0094], meeting and within the range of the temperature difference between the aqueous liquid and the steam in instant application claim 25.
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 vaporization process conditions of Godlewski with the vaporization process conditions and temperatures of Berckmans with a reasonable predictability of success for the purpose of efficiently evaporating an aqueous solution through heat transfer of superheated steam at temperatures that quickly evaporate the water, see Berckmans, Paras. [0009];[0021]-[0023];[0034]-[0038];[0046].
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 Godlewski and Berckmans teach the vaporization of an aqueous solution with steam and nozzle spray, a person of ordinary skill in the art has good reason to modify Godlewski by relying upon the teachings of Berckmans before the effective filing date of the claimed invention for knowledge generally available within the nozzle vaporization art regarding the differing process parameters, for the benefit of efficiently evaporating an aqueous solution through heat transfer of superheated steam at temperatures that quickly evaporate the water, see Berckmans, Paras. [0009];[0021]-[0023];[0034]-[0038];[0046] 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 steam as an inert gas, 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 the temperature the streams, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as relying on the heat transfer of steam for evaporation, “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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-10, and 20-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 7, and 9 of copending Application No. 19115882 to Hong et al (hereinafter Hong) in view of Kamei et al. (JP2011225533, published 10 November 2011, see machine translation, hereinafter Kamei ‘533).
This is a provisional nonstatutory double patenting rejection.
Regarding instant application claims 1, 4, 6, 7, 20, and 23-25, the claims of Hong recite a method for vaporizing a lactic acid, comprising the steps of: mixing and spraying a first stream of a liquid phase containing a lactic acid aqueous solution at a temperature of 10 ° C to 200 ° C., see Claims 1 and 4, i.e., spraying inherently includes pressurization, see MPEP 2112, with a second gas phase stream at a temperature of 250 ° C to 400 ° C, then vaporizing the lactic acid aqueous solution by heat exchange between the first stream and the second stream, see Claims 1 and 6, in order to obtain a third stream in a gas phase containing a single molecule lactic acid, see claim 1, meeting:
The heating, pressurizing, mixing, spraying, vaporizing, and obtaining in instant application claims 1, 6, and 20; and,
Within the temperature ranges of the first stream and second stream in instant application claims 4, 7, and 23-25.
Regarding instant application claims 3, 21, and 22, the claims of Hong recite the liquid phase containing a lactic acid aqueous solution has a lactic acid concentration of from 20 wt% to 99 wt% and a multimer concentration of 2 wt% to 80wt%, see Claims 2 and 3, meeting within the concentration range in instant application claims 3, 21, and 22.
Regarding instant application claims 9 and 28, the claims of Hong recite the ratio of the first stream flow rate to the second stream flow rate is 1:2 to 1:25, see Claim 7, meeting within the range in instant application claims 9 and 28.
Regarding instant application claims 10 and 29, the claims of Hong recite a method of obtaining acrylic acid by obtaining the vaporized lactic acid and subjecting it to a dehydration reaction to produce acrylic acid and obtaining the produced acrylic acid, see Claim 9, meeting the method of producing acrylic acid in instant application claims 10 and 29.
The claims of Hong do not recite:
The instant application claims 6 and 20 limitations of the gas phase containing steam; and,
The limitations of instant application claims 5, 8, 26, and 27.
Kamei ‘533 is in the known prior art field of a method for producing acrylic acid from a dehydration reaction of hydroxypropionic acid, while reducing a generation amount of by-products such as a heavy product produced by a side reaction, i.e., oligomers, see Abstract; Para. [0030].
Regarding instant application claims 6 and 20, Kamei ‘533 teaches the above method which includes the vaporization of hydroxypropionic acid, such as 2-hydroxypropionic acid (hereinafter lactic acid) in the presence of water, and an inert gas, such as steam and superheated steam, see Abstract; Paras. [0002]-[0003];[0011];[0016]-[0017];[0032], meeting the gas phase containing steam in instant application claims 6 and 20.
Regarding instant application claims 5, 8, 26, and 27, Kamei ‘533 teaches the hydroxypropionic acid is added to the evaporator at a flow rate of 0.13 g/min, 0.53 g/min, or 0.75 g/min and superheated steam is added to the evaporator at an inert gas rate, such as nitrogen, of 0.1 L/min or 1.3 L/min, see Paras. [0031]-[0032];[0061];[0063];[0066], as calculated by the examiner 0.1 L/min or 1.3 L/min inert gas nitrogen is 0.125 g/min or 1.625 g/L, where the flow rate of water and/or inert gas is preferably 1.5 to 200 times the total amount of water and/or inert gas relative to the flow rate of hydroxypropionic acid in the raw material composition, see Paras. [0033]-[0034], as calculated by the examiner 1.5 times 0.13 g/min, 0.53 g/min, or 0.75 g/min acid is 0.195 g/min, 0.795 g/min, or 1.125 g/min superheated steam, meeting:
Within the flow rate ranges in instant application claims 5, 8, 26, and 27.
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 vaporization process conditions of the claims of Hong with the vaporization process conditions of Kamei ‘533 with a reasonable predictability of success for the purpose of efficiently and economically vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Kamei ‘533, Abstract; Paras. [0010]-[0011];[0018];[0030]-[0031];[0061].
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 the claims of Hong and Kamei ‘533 teach the vaporization of an aqueous lactic acid solution, a person of ordinary skill in the art has good reason to modify the claims of Hong by relying upon the teachings of Kamei ‘533 before the effective filing date of the claimed invention for knowledge generally available within the vaporization art regarding the differing process parameters, for the benefit of efficiently and economically vaporizing a lactic acid aqueous solution without significant conversion to undesired side products, such as oligomers, see Kamei ‘533, Abstract; Paras. [0010]-[0011];[0018];[0030]-[0031];[0061] 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.
“The 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 concentration of the aqueous solution, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as steam as an inert gas, 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 the temperature of the streams, concentration of the streams, and flow rate of the streams, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as relying on the heat transfer of steam for evaporation, “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 1, 2, and 41 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 6 of copending Application No. 19115882 to Hong et al (hereinafter Hong) in view Kamei et al. (US20170253553, published 07 September 2017, hereinafter Kamei ‘553).
This is a provisional nonstatutory double patenting rejection.
Regarding instant application claim 1, the claims of Hong recite a method for vaporizing a lactic acid, comprising the steps of: spraying a first stream of a liquid phase containing a lactic acid aqueous solution at a temperature of 10 ° C to 200 ° C., see Claims 1 and 4, i.e., spraying inherently includes pressurization, see MPEP 2112, then vaporizing the lactic acid aqueous solution by heat exchange spraying, see Claims 1 and 6, in order to obtain a third stream in a gas phase containing a single molecule lactic acid, see claim 1, meeting:
The heating, pressurizing, spraying, vaporizing, and obtaining in instant application claim 1.
The claims of Hong do not recite the limitations of instant application claims 2 and 41.
Kamei ‘553 is in the known prior art field of a method for producing acrylic acid from a dehydration reaction of lactic acid, while recycling and reusing oligomers obtained in the process, see Abstract; Paras. [0009]-[0018];[0058]-[0059]; Fig. 1. Kamei ‘553 is applied to teach the above method which includes preheating a lactic acid aqueous solution containing water, steam, and inert gas followed by vaporization of the solution, separation of the vapor from the condensate, and recycle of the condensate, see Paras. [0047]-[0048];[0054]-[0056]; Fig. 1.
Regarding instant application claim 2, Kamei ‘553 teaches a lactic acid aqueous solution, water, steam, and inert gases are pre-heated to the reaction temperature of 130° C. or higher and 350° C. or lower before piping to the vaporizer in order to reduce the temperature distribution in the vaporizer, see Paras. [0047]-[0048];[0054]-[0056]; Fig. 1. The temperature and pressure, such as 0.1 kPa or higher and 4 MPa or lower aka 0.001 to 40 bar, in the process is maintained throughout the process in order to not lose pressure and temperature in the tubes, see Paras. [0025];[0047];[0053]-[0054]; Fig. 1, meeting and within the temperature and pressure ranges in instant application claim 2.
Regarding instant application claim 41, Kamei ‘553 teaches after vaporization in heater 4, the lactic acid vapor in line 8 is separated in the gas-liquid separation tank 5 from the liquid lactic acid oligomer in line 6, then the liquid lactic acid oligomer in line 6 is sent back to the lactic acid vaporizer heater 4 as an aqueous lactic acid feed, see Fig. 1; Paras. [0036]-[0039], meeting the separating and recovering in instant application claim 41.
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 vaporization process conditions of the claims of Hong with the vaporization process conditions and condensate recycle of Kamei ‘553 with a reasonable predictability of success for the purpose of efficiently and economically vaporizing a lactic acid aqueous solution while recycling and reusing oligomers obtained in the process and employing a heat exchange from the water vapor, see Kamei ‘553, Abstract; Paras. [0009]-[0018];[0055]-[0059]; Fig. 1.
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 the claims of Hong and Kamei ‘553 teach the vaporization of an aqueous lactic acid solution, a person of ordinary skill in the art has good reason to modify the claims of Hong by relying upon the teachings of Kamei ‘553 before the effective filing date of the claimed invention for knowledge generally available within the vaporization art regarding the differing process parameters, for the benefit of efficiently and economically vaporizing a lactic acid aqueous solution while recycling and reusing oligomers obtained in the process and employing a heat exchange from the water vapor, see Kamei ‘553, Abstract; Paras. [0009]-[0018];[0055]-[0059]; Fig. 1 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, “[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 the temperature and pressure of the streams, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as relying on the heat transfer of steam for evaporation, “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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699