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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on November 11, 2025 has been entered.
Withdrawal of Allowability of Claims
The indicated allowability of claims 25 - 38 is withdrawn in view of the newly discovered reference(s) to CN 203529201 (Xin Shimin et al.) provided in Applicants IDS. Rejections based on the newly cited reference(s) follow.
Claim Objections
Claim 31 is objected to because of the following informalities: line 1 omits the word “of” and only contains the letter “f”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 25 - 38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 25 recites the limitation "the gas phase" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim 30 recites the limitation "the inert gas phase" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 26 – 38 are rejected for being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 25 – 31 ad 35 – 37 are rejected under 35 U.S.C. 103 as being unpatentable over Xin Shimin (CN 203529201) (Xin) in view of McKenna (US 3,959,321), and further in view of Schillmoller et al. (Alloy selection for service in organic acids, August 2020) and Kubitschke et al. (Ullmann’s Encyclopedia of Industrial Chemistry, 2014).
The rejected claims cover, inter alia, a process for the storage and transport of a liquid comprising a non- substituted saturated aliphatic C6-12 carboxylic acid or a mixture thereof, whereas the liquid has a non-substituted saturated aliphatic C6-12 carboxylic acid content of 99 to 100 wt.-%, by filling the liquid into a container with an inner volume of 0.05 to 10000 m3 in an amount that the liquid occupies 1 to 99% of the inner volume of the container, wherein the liquid is kept therein for more than 1 hour, characterized in that: a) the container is a metallic container comprising walls wherein the walls are solely made of metal or comprise a composite material comprising metal sufficient to prevent infiltration of molecular oxygen through the walls, and b) the gas phase in the container is inertized with an inert gas containing nitrogen, helium, neon, argon, krypton, xenon, hydrogen, carbon dioxide, carbon monoxide or a mixture thereof, having a molecular oxygen content of 0 to 100 vol.-ppm.
Dependent claims 26, 31, 33, and 35 – 37 further limit the container. Dependent claim 27 further limits the process. Dependent claims 28 and 30 further limit the liquid. Dependent claim 29 further limits the gas.
However, Xin discloses a method for storing a liquid material in a liquid material storage tank with inert gas positioned above the liquid material in the liquid material storage tank. (pp. 3, [0017]). The liquid materials to be contained in the storage tank are volatile and easily oxidized liquid materials. (pp. 1, [0006]). The aim of Xin is to provide a liquid material storage device that can prevent liquid materials from evaporating or deteriorating. (pp. 2, [0008]). At the same time the inert gases are positioned above the liquid material in the material storage tanks, the inert gases prevent materials from coming into contact with air, thus avoiding oxidation and deterioration. (pp. 3, [0017]). The inert gas, positioned above the liquid material, can seal and protect the liquid material, thus effectively preventing the liquid material from evaporating and avoiding environmental pollution. (pp. 3, [0025]). At the same time the inert gas is protecting the liquid material in the storage tank, it is preventing materials from coming into contact with air, thus avoiding oxidation , deterioration and deliquescence. (pp. 3, [0025]).
The inert gas is preferably nitrogen or argon. (pp. 3, [0025]. In Xin the inert gas refers to a gas that does not react with the stored liquid material. (pp. 32, [0025]). Lastly, the insert gas can play a buffering role, which can effectively protect the material storage tank and prevent it from being deformed or damage. (pp. 4, [0029]).
The difference between the instantly claimed invention and Xin is as follows: the liquid being non-substituted saturated aliphatic C6-12 carboxylic acid; container inner volume for the liquid to occupy; the container being metal; the container being comprised of a composite material comprising metal sufficient to prevent infiltration of molecular oxygen through the walls; the container being mobile; liquid kept in the container from more than or equal to 1 week; active oxygen content of the liquid; and the metal being an alloy.
With regard to the liquid being non-substituted saturated aliphatic C6-12 carboxylic acid, the Examiner turns to the teaching of McKenna. The prior art of McKenna discloses that C6 to C24 are “fatty acids” are long chain saturated aliphatic, mono-carboxylic acids. (col. 1, ln 13 – 16). McKenna discloses that aliphatic carboxylic acids are susceptible to oxidative discoloration. (col. 1, ln 7 -8 & 20 – 23). It is believed that the decolorization of fatty acids is due to oxidation of the fatty acids. (col. 1, ln 21 – 23). According to McKenna, all fatty acids have some tendency to combine with oxygen to from impurities which are objectionable from the color or odor standpoint. Also, McKenna desires to provided improved methods to prevent fatty acids from decolorization and oxidation during storage. (col. 1, ln 34 – 36).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the instantly claimed invention when viewing the method of Xin in light of the generally knowledge of non-substituted saturated aliphatic C6 – C24 fatty acids as disclosed in McKenna, would have reason to presume that the fatty acids of McKenna, when inserted into the storage tank of Xin would have been protected from oxidation by the inert gas of Xin. Specifically, one would have envisioned the fatty acid of McKenna as the liquid being treated in Xin because, the fatty acids of McKenna are easily oxidized. (It is well known that fatty acids tend to decolorize upon standing (col. 1, ln 20-21)). Motivation can be found in the teachings of Xin and McKenna, wherein both are solving the same technical problem of avoiding oxidation of a liquid material that can be stored. Further, both desire to provide a liquid material of good quality and purity. The claim would have been obvious because the substitution of the fatty acid of McKenna as the liquid of Xin would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
With regard to container inner volume for the liquid to occupy, the Examiner turns to the teachings McKenna and Xin. Based in the discussion in paraph 18, One skilled in the art before the effective filing date of the claimed invention would have been motivated to use the aliphatic carboxylic acid liquid of Mckenna into Xin as a storage tank, filling said vessel with an amount such that the aliphatic carboxylic acid liquid occupies the inner volume of the vessel, the gas phase in the container is filled with an inert gas and the liquid is kept therein for a certain amount of time, thereby avoiding the implication that the long chain saturated aliphatic carboxylic acid is oxidatively discolored. Thereby, avoiding discoloration of subsequent products when further products are applied as feedstock, thereby providing a carboxylic acid storage method that avoids oxidation. As such, determining the required container volume, amount of liquid to occupy the container and storage time would be routine in the art. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to the container being metal and the metal being an alloy, the Examiner turns to the teaching of Schillmoller et al. (Nickel Institute, 2020). Schillmoller discusses the selection of alloys for service in organic acids. According to Schillmoller, traditionally the industry has chosen alloys conservatively, adhering to well established metallurgical practice which calls for types 304L and 316L stainless steel. Type 340L contains Ni, C, Cr and Fe; and type 316 L contains Ni, C, Cr, Mo and Fe. (Table 1 on pp. 4). Also, Schillmoller discloses that 8-carbon 2-ethylhexanoic acid and higher acids can usually be handled in type 316L to the atmospheric boiling point; alloys 904L, 31 and6% Mo alloys at higher temperature. (Table 1 on pp. 4).
Based on the teaching of Schillmoller, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to select a metal container for storing the liquid being non-substituted saturated aliphatic C6-12 carboxylic acid. Motivation for using a metal container is found in the teaching of Schillmoller where it is stated that it is traditional to use corrosion-resistant stainless steels and nickel alloys for service in organic acids, with fatty acids falling within that category.
Regarding the container being comprised a composite material comprising metal sufficient to prevent infiltration of molecular oxygen through the walls, the Examiner turns to the teaching of Kubitschke. The prior art of Kubitschke teaches that for the storage and transportation of aliphatic carboxylic acids that stainless steel and aluminum are used. (pp. 8 , 6. Storage and Transportation). For acids with more than six carbon atoms, drums coated with acid-resistant paint are used. These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
With regard to the container being mobile the Examiner turns to the teaching of Xin. According to Xin, the storage container can be replaced for repair or other reasons. The ability to move the material storage tank 10, makes the tank mobile. This limitation is deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103. With regard to the liquid being kept in the container from more than or equal to 1 week, based on the teaching of Xin, the Examiner concludes that such an adjustment is a matter of routine experimentation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding there being active oxygen content of the liquid, the Examiner turns to the teaching of Xin and McKenna. Xin discloses that the inert gas within the inert gas cabinet 20 will enter the material storage tank 10 above the liquid material, the inert gas will act to seal and protect the liquid material, and the inert gas will prevent contact between the material and the air and prevent oxidative deterioration of the material. McKenna also indicates that fatty acids tend to decolorize upon placement, which is believed to be due to oxidation of the fatty acids, all of which tend to combine with oxygen to form impurities, which are obnoxious from a color point of view. The effect of oxygen-containing species on the quality of the aliphatic carboxylic acid is clear to the person skilled in the art on comparison of Xin and McKenna, and it is easy to think of an effective control of the active oxygen content in the aliphatic carboxylic acid liquid, in turn within lower levels from 0 to 100 ppm content. As such, this limitation is deemed obvious.
Conclusion
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692