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 .
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 1-20 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.
In claim 1 and its dependent claims, as well as claim 20, it is unclear what qualifies as an “oligomerized” reaction product, since the claim does not recite a specific number of repeat units or a molecular weight, and the specification does not provide a specific definition. The examiner recommends that the claim be amended to recite the molecular weight of the oligomerized reaction products, for example the ranges disclosed in paragraph 32 of the specification.
In claim 1 and its dependent claims, as well as claim 20, it is also unclear what qualifies as an “noble metal”, since the term does not have a strict definition and specification does not set forth a definition. The examiner recommends that the claim be amended to recite specific metals, for example those disclosed in paragraph 47 of the specification.
In claim 3, it is unclear whether “wherein the noble catalyst is effective to decrease a yellowness index by about 100 units or more” is simply reciting a property of the noble metal catalyst, or whether it actually requires the final step of the claimed method to reduce the yellowness index of the hydrogenated mixture by about 100 units or more.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Macedo (U.S. Pat. No. 6,433,104).
In column 1 lines 5-8 Macedo discloses a resin hydrotreating process. In Table 3 (ECR-413, ECR-415) and Table 4 (Escorez 2203, Escorez 1310) Macedo discloses products with a yellowness index of 10 or less after hydrogenation (“Initial Color after H2”), as recited in claim 20. Escorez 2184 in Table 3 also has a yellowness index of 11, which still falls within the “about 10” upper bound of the range recited in claim 20. From column 2 line 33 through column 3 line 23 Macedo discloses that the resin is preferably a petroleum resin, and indicates in column 1 lines 64 through column 2 line 6 that these are formed by polymerization of monomers which include various monomers having olefinic unsaturation. In column 3 lines 18-20 Macedo discloses that this polymerization can be accomplished in a solvent. While Macedo does not explicitly disclose that resin mixture is formed from an “oligomerized” reaction product, it is noted that the claims do not limit the molecular weight of the oligomerized reaction product and the specification does not provide a more specific definition of oligomerized. The products in Tables 3-4 of Macedo have molecular weights as low as 810 prior to hydrogenation (Escorez 2184) and therefore fall under a reasonable definition of oligomerized, noting that many of the monomer units disclosed in column 1 line 64 through column 2 line 6 of Macedo have molecular weights above of greater than 100. Claim 20 is therefore anticipated by Macedo.
Claim 19 is recited in product-by-process format and the patentability of the claim is determined by the product. While Macedo does not disclose the two separate reaction steps recited in claim 1, the end product of Macedo is nevertheless a hydrogenated and decolorized resin mixture formed from the same resin mixture feed as recited in claim 1. The decolorized resin products of Macedo would therefore be obtainable from the method recited in claim 1, and claim 19 is therefore also anticipated by Macedo.
Allowable Subject Matter
Claims 1-18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Macedo, discussed in paragraph 6 above, discloses a method of hydrogenating a hydrocarbon resin to produce a decolorized resin product, and discloses in column 3 lines 63-64 that the hydrogenation catalyst can be a palladium catalyst, which is a noble metal catalyst, or a bimetallic catalyst. However, Macedo does not disclose a two-step process as recited in claim 1, where two different hydrogenation catalysts are used. In fact, Macedo explicitly teaches in column 2 lines 21-33 that the method is uniquely suited to a one-step hydrogenation process without any further hydrogenation or prior step, and does not teach the effectiveness of the method on a feed that has already been through a hydrogenation step. Therefore, while a step of hydrogenating an oligomerized reaction product using a sulfided bimetallic catalyst is known in the art, for example by Vargas (U.S. PG Pub. No. 2013/0184411, cited in the International Search Report), one of ordinary skill in the art would have no motivation to hydrogenate the oligomerized reaction product sequentially with the sulfided bimetallic catalyst and then the noble metal catalyst.
Seo (U.S. PG Pub. No. 2020/0369794) discloses a method for selective hydrogenation using two or more kinds of hydrogenation catalysts (paragraph 29), where the method can utilize a sulfided bimetallic catalyst (paragraph 40) and a noble metal catalyst (paragraph 38), but does not disclose or provide any motivation for one of ordinary skill in the art to use these catalysts sequentially. Seo also requires the use of a non-selective nickel catalyst which is not a sulfided bimetallic catalyst.
Molinier (U.S. PG Pub. No. 2004/0176652) discloses a dual bed process for the hydrogenation of acetylene and dienes, where the first reactor can use a bimetallic catalyst (paragraph 74) and the second reactor can use a palladium catalyst, but the acetylene and diene feeds of Molinier are different than the oligomerized reaction product feed of the claims, and Molinier specifically teaches that an advantage of the method is reduced selectivity to the production of oligomers; one of ordinary skill in the art would not have any motivation to apply the method of Molinier to an oligomerized reaction product as required by the currently presented claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771