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 .
DETAILED ACTION
This office action is a response to Applicant’s amendments/remarks after non-final rejection filed 2/27/2026.
As filed, claims 1-3 and 5-9 are pending; claims 10-14 are withdrawn; and claim 4 is cancelled.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 2/27/2026, with respect to claims 1-9, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 102(a)(1) rejection of claims 1-3 and 6-9 by Shi is withdrawn per amendments by incorporating the limitations of claim 4 into claim 1. However, the claims are prima facie obvious over the combined teaching of Shi and Gu. Applicant’s remarks regarding the amended claim 1 no longer includes DBU within the scope of the instant claimed base catalyst is incorrect. See the 103 rejection of the previous office action for details. In addition, according to the guidance of MPEP 716.01(c), the comparative experimental data using DBU as the instantly claimed base catalyst, as shown in Applicant’s remarks, is not considered because the data is not presented in an affidavit or declaration.
The § 103(a) rejection of claims 4 and 5 by the combined teaching of Shi and Gu is withdrawn per amendments and cancellation of claim 4.
The provisional, nonstatutory obviousness-type double patenting (ODP) rejection of claims 1-3 (via anticipation analysis) by co-pending application No. 18/028,184 is withdrawn per amendments.
The provisional, nonstatutory obviousness-type double patenting (ODP) rejection of claims 6-9 (via obviousness analysis) by co-pending application No. 18/028,184 is withdrawn per amendments.
The claim objection of claims 1 and 6 is withdrawn per amendments.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claim 1-3 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over the combined teaching of:
Foreign Patent Application Publication No. WO2021/114091 (see IDS filed 5/15/2023) and its machined generated English translation (see PTO-892 form mailed on 12/3/2025, hereinafter Shi; and
“CO2 promoted synthesis of unsymmetrical organic carbonate using switchable agents based on DBU and alcohols”, hereinafter Gu (See IDS filed 5/15/2023).
Regarding claims 1-3 and 6-9:
Determining the scope and contents of the prior art:
Shi, for instance, teaches a method for preparing ethyl methyl carbonate (EMC) through the transesterification of dimethyl carbonate (DMC) and diethyl carbonate (DEC) by using 0.5 wt% of 1-ethyl-3-methylimidazolium imidazolium salt (i.e. instant base catalyst having a heterocyclic structure). Solvent is not used in the method of preparing ethyl methyl carbonate, and the transesterification is performed at a temperature of 92-94oC. The molar ratio of DMC to DEC is 1:1.
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290
1332
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(publication itself, abstract)
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152
716
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(Eng. Translation, pg. 27, paragraph 0161, example 6)
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300
722
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(Eng. Translation, pg. 28, paragraphs 0161-0162)
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100
720
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(Eng. Translation, pg. 28, paragraph 0164)
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420
662
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(publication itself, pg. 10, example 6)
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362
700
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(Eng. Translation, pg. 6, paragraphs 0013-0017)
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130
374
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(publication itself, pg. 3)
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214
502
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(publication itself, pg. 4)
Gu, for instance, teaches a CO2 promoted synthesis of unsymmetrical carbonate using DBU as catalyst for the transesterification reaction.
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202
552
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(pg. 13054, abstract)
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94
366
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(pg. 13056, Scheme 1)
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98
392
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(pg. 13057, Scheme 2)
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788
778
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(pg. 13061, Scheme 3)
Ascertaining of the difference between the prior art and the claim at issue:
Shi, for instance, did not explicitly teach the instant base catalyst of instant formula (1), such as DBU and the recovery of EMC.
Gu, for instance, did not explicitly the use of instant second symmetric linear carbonate as one of the starting material for the transesterification.
Finding of prima facie obviousness --- rationale and motivation:
With respect to this difference, MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at ___, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
Based on the teachings of the MPEP and KSR above, by employing the rationale in (A) above, it would have been obvious for one of ordinary skill in the art to modify the catalyst of Shi, to include DBU, as taught by the process of Gu, in order to arrive at the instantly claimed process because there’s a reasonable expectation of success that the abovementioned modified catalyst can catalyze the transesterification of DMC and DEC to form EMC, since both Shi and Gu are drawn to the process of making asymmetrical carbonate.
Although Shi did not explicitly teach the recovery of EMC, the Examiner finds that it would have been obvious for a person of ordinary skill in the art to recover EMC from the transesterification reaction in order to determine the yield of EMC.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Election/Restrictions
This application contains claims 10-14, which are drawn to invention nonelected with traverse, in the reply filed on 11/4/2025. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144). See MPEP 821.01.
More importantly, the Examiner finds that claims 10-14 would not be eligible for rejoinder once claims 1-3 and 5-9 are found to be allowable. See MPEP 821.04. Accordingly, the Examiner would suggest that the Applicant cancel claims 10-14.
Conclusion
Claims 1-3 and 6-9 are rejected.
Claim 5 is objected.
Claims 10-14 are withdrawn.
Claim 4 is cancelled.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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