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 .
Claim Status
Claims 1, 7, and 8 were amended and claim 2 was canceled in the response filed 5/1/2026. Claims 1 and 3-10 are pending.
Withdrawn Claim Objections
The amendments filed 5/1/2026 are persuasive to overcome the claim objections of record on p. 2 of the OA dated 2/6/2026; therefore, the objections are withdrawn.
Claim Rejections - 35 USC § 112(b)
The Applicant amended claim 7 to delete parentheses and indicate that the limitation is required; therefore, the rejection of record over claim 7 is withdrawn. See p. 3-4 of the OA dated 2/6/2026.
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.
Claim 8 is 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 the 5/1/2026 response, claim 8 was amended to recite “the method for producing an alkaline earth metal formate according to claim 7, wherein in formula (1), Q1 each independently represents NH or O, and R1 each independently represents an alkyl group; and in the method, a ligand compound represented by the following formula (4) is further added…”.
Formula (4) appears to be a narrower version of the ligand in formula (1) in claim 7, however, the language of claim 8 suggests that the ligand of formula (4) is “further added”. It is not clear if more than one ligand is required to be present (the one of claim 7 and the further added one of claim 8) or if the ligand of claim 8 is further limiting the scope of the ligand of claim 7. The Applicant also included language in claim 8 to further limit the scope of variables Q1 and R1 of formula (1), which would correspond to variables Q2 and R3 of formula (4) respectively. While the scope of variables Q1 and Q2 are identical, the scope of variables R1 and R3 is contradictory. R1 is defined an alkyl group and R3 is defined as an aryl group.
Paragraph [0057] of the specification recites “when the homogeneous catalyst used in the method for producing an alkaline earth metal formate according to an embodiment of the invention is a metal complex catalysts, the ligand for forming the complex is preferably present in excess in the reaction system. Therefore, the ligand of the metal complex catalyst used is preferably further added to the reaction system”. This appears to indicate that formula (4) is both limiting the structure of the ligand of formula (1) and the concentration of formula (4) to be in stoichiometric excess to the ruthenium. This is further supported by [0061-0062] and the examples, which only teach reaction systems having one ligand of formula (4), not mixtures of ligands of formula (4). However, this is not clear from the present claim language.
On p. 5-6 of the response filed 5/1/2026, the Applicant appears to agree with this interpretation and argues that claim 8 was amended to reflect said interpretation. However, because the claim still says that formula (4) is “further added” and appears to define formula (1) and formula (4) separately with different definitions (alkyl vs aryl), the claim language is still not clear as to what is being claimed. Therefore, the rejection is maintained.
Withdrawn Claim Rejections - 35 USC § 102
The Applicant canceled claim 2 and incorporated it into claim 1. Therefore, the rejection of record over Kothandaraman (“Amine-Free Reversible Hydrogen Storage in Formate Salts Catalyzed by Ruthenium Pincer Complex without pH Control of Solvent Change” ChemSusChem 2015, 8, p. 1442-1451, including SI p. S1-20) is withdrawn because claim 2 was not included in the rejection. Also see p. 4-6 of the OA dated 2/6/2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. See p. 6-19 of the OA dated 2/6/2026. The Applicant canceled claim 2 and incorporated its limitations into claim 1. The rejection of record is modified to address this amendment.
Claim(s) 1 and 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023) in view of Guan (“Conversion of CO2 from air into formate using amines and phosphorus-nitrogen PN3P-Ru(II)pincer complexes”. Green Chem, 2018, p. 4201, including Supporting Information p. S1-S34, of record).
The Applicant claims a method for producing an alkaline earth metal formate comprising:
A first step of reacting hydrogen and carbon dioxide with a carbonate or hydrogen carbonate of an alkaline earth metal
Using a homogeneous catalyst
In the presence of a two-phase solvent system, in which an organic phase and an aqueous phase are present in a separated state in the solvent
To produce a formate of an alkaline earth metal.
Joszai is directed toward the hydrogenation of aqueous mixtures of calcium carbonate (CaCO3-claim 3) and carbon dioxide (CO2) with hydrogen (H2) using a water-soluble (homogeneous) rhodium(I)-tertiary phosphine complex catalyst to produce calcium formate (Ca(HCO2)2). Joszai teaches that the catalyst is a rhodium(I)-complex of monosulfonated triphenylphosphine (mtppms), [RhCl(mtppms)3] which forms an aqueous suspension with calcium carbonate. See abstract and p. 88, col. 1, last paragraph to top of col. 2. In the first paragraph of section 3 on p. 89 Joszai teaches: “When a fine powder of calcium carbonate was stirred in water in the presence of [RhCl(mtppms)3] under an atmosphere containing both CO2 and H2 a clean hydrogenation occurred yielding formate as the sole product (Eq. (2), Fig. 1). This successful attempt to hydrogenate CaCO3 in a homogeneously catalyzed reaction under mild conditions is made possible by the combination of acid–base chemistry in water and aqueous organometallic catalysis.
CO32− + CO2 + 2H2 ↔ 2HCO2− + H2O (2)”
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Joszai speculates that: “The carbonic acid dissolves CaCO3 to yield solutions containing HCO3− which is then hydrogenated with the Rh-based catalyst.”. See conclusions section on p. 91. Joszai further teaches that calcium formate, the product of the reaction, is a valuable product used in leather tanning and in the production of silage in animal nutrition. See top of col. 2 on p . 88. Therefore, Joszai teaches that reacting carbon dioxide and an alkaline earth metal carbonate or bicarbonate with hydrogen in the presence of a homogeneous catalyst can directly produce the corresponding alkaline earth metal formate.
Joszai does not explicitly teach a two-phase solvent system in which an organic phase and an aqueous phase are present in a separated state in the solvent.
Guan teaches the conversion of CO2 into formate with hydrogen (H2) using PN3P-Ru(II) pincer complexes in a THF/H2O biphasic organic/aqueous system. See abstract. The Ru pincer complexes are of the formulae:
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. See p. 4202. In Fig. 5 on p. 4203, complex 3 is recited to be the proposed “Active species A”. However, complex 2 is also active in combination with a base, such as NaOH, Na2CO3, and NaHCO3. See final paragraph on p. 4202 and Table 1 on p. 4203:
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Guan further teaches that the THF/H2O mixture is liq/liq biphasic comprising an organic layer (THF-claim 5) and an aqueous layer (H2O). See Fig. 4 and discussion thereof on p. 4203:
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. Guan teaches: “To illustrate the possible macro-process taking place during bicarbonate hydrogenation, an image of the reaction with three phases, gas, liquid 1 (THF) and liquid 2 (THF/H2O), is
shown in Fig. 4. It was rationalized that complex 2 (or the active catalytic species derived from 2) would prefer to stay in the organic THF phase where the catalytic reaction occurred, because of the presence of phenyl groups that made it relatively
hydrophobic. Hydrogen and bicarbonate then diffused into the THF phase to react to yield formate, which was desolved back into the THF/H2O phase.” Thus, Guan teaches that the organic phase comprising the homogeneous Ru catalyst (claim 4) and the aqueous phase comprising the formate product are easily separable by partitioning (claim 1).
Guan teaches this is beneficial because: “Such a catalytic system shows not only the excellent selectivity and catalytic activity of a homogeneous catalyst, but also separability and reusability similar to those of a heterogeneous catalyst, due to the biphasic nature of the reaction mixture”. See final paragraph in col. 1 to end of conclusions section in col. 2 on p. 4204.
It would have been prima facie obvious to combine the teachings of Joszai and Guan to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to prepare the calcium formate of Joszai by replacing the alkaline carbonates (Na2CO3 and NaHCO3) of Guan with CaCO3 because the biphasic catalyst system of Guan is superior in terms of recyclability and separability of the product and catalyst than the single-phase system of Joszai. Further, both catalyst systems predictably employ a hydrogenation with H2 of CO2 and alkali or alkaline earth metal carbonates, which are analogous to one another, in the presence of a soluble platinum group (Rh or Ru) complex catalyst to reliably produce the corresponding formates. Therefore, the skilled artisan would find that there is a reasonable expectation of success that the catalyst and conditions of Guan would predictably produce the calcium formate of Joszai if the sodium carbonates were replaced with calcium carbonates. Also see MPEP 2143(I)(B).
Regarding claim 6, Fig. 1 of Joszai teaches that the homogeneous catalyst is a metal complex catalyst and an excess of the ligand (mtppms) is present. Therefore, this is a known modification with can predictably also be applied to the combined process of Joszai and Guan. Also see MPEP 2143(I)(A).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023) in view of Guan (“Conversion of CO2 from air into formate using amines and phosphorus-nitrogen PN3P-Ru(II)pincer complexes”. Green Chem, 2018, p. 4201, including Supporting Information p. S1-S34, of record), as applied to claims 1 and 3-6 and further in view of Huang (US 10300469, published on 5/28/2019, of record) and Filonenko (“Highly Efficient Reversible Hydrogenation of Carbon Dioxide to Formates Using a Ruthenium PNP-Pincer Catalyst” ChemCatChem2014, p. 1526, including Supporting Information p. S1-S18, of record).
The Applicant claims the method of claim 1, wherein the catalyst is of formula (1) in claim 7, wherein the ligand is preferably the compound of formula (4) in claim 8.
Joszai teaches that the catalyst is a rhodium(I)-complex of monosulfonated triphenylphosphine (mtppms), [RhCl(mtppms)3] and Guan teaches the ruthenium complex of formula 2, which forms the active species of formula 3:
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. The complexes of formula 2 and 3 are analogous to those claimed, except that they are dearomatized. For example, complex 3 of Guan corresponds to a dearomatized analog of instant formula (1) and formula (4) wherein R0 is H; one Q1 is NH and the other is an imine =N; both A are CH groups; all R1 are phenyl (aryl); n is 3 wherein L is H (anionic ligand), CO and PPh3 (netural ligands). The complex of Guan does not have a halogen atom (X) attachment. Nor does Guan explicitly provide motivation to modify either of complexes 2 or 3 to arrive at that claimed. See discussion of Scheme 1 and Table 1 on p. 4202-4203 of Guan.
Filonenko is directed toward the highly efficient reversible hydrogenation of carbon dioxide to formates using a ruthenium PNP-Pincer catalyst of the following formula (1):
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. See Fig. 1 on p. 1526. Filonenko teaches that in the presence of the base DBU, the disclosed homogeneous catalyst can hydrogenate CO2 to the corresponding amine formate. See abstract and Table 2 and discussion thereof on p. 1528. The complex of Filonenko is also shown as the “Pidko” option in Fig. 1 of Guan. The complex of Filonenko corresponds to compounds of instant formula (1) of claim 7 wherein R0 is H, both A are CH, both Q1 are -CH2-; all R1 are t-Bu (tert-butyl, an alkyl group); X is Cl, and n is 2, wherein L is hydride (anionic) and CO (neutral). This was the best embodiment found by Filonenko.
However, Filonenko also did a survey of the activity of several Ru pincer catalysts known for their high activiey in the hydrogenation and dehydration of polar substrates, including the following:
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See col. 1 on p. 1527 and Section S2 on p. S2-S3. Ligands, 1, 5, and 5BH4 were all active in the systems tested.
Huang is directed toward phospho-amino pincer-type ligands and metal complexes thereof for dehydrogenation of formic acid. See abstract. Huang also teaches that the disclosed catalyts can be used for the hydrogenation of carbon dioxide to formate or formic acid. See col. 2, line 13-col. 3, line 9. Also see the following Table 4 in col. 26-27:
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. Huang further teaches that an organic or inorgamic base in this reaction also benefits the conversion. See col. 27, lines 25-34. The ligand of Huang corresponds to a compound of instant formula (1) and (4) wherein R0 is H; both A are CH; both Q1 are NH; all R1 are t-butyl (an alkyl); X is replaced by a hydride (H, another anionic ligand which forms upon contact of the complex with H2 to produce the active intermediate); n is 2, wherein L is H (anionic) and CO (neutral). This complex does not anticipate those claimed because one R1 is not an aryl group, as is required with Q1 is NH.
In claim 16, Huang teaches a genus of metal complexes for carrying out the reversible hydrogenation/dehydrogenation cycle of the following formula (II):
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. When M is Ru; X is halogen; R5 is hydrogen or alkyl; Z is N or CR6, wherein R6 is H or an alkyl, aryl, aralkyl, amino, hydroxyl, or alkoxyl group; T is NH or CH2; Q is P; R1 to R4 are alkyl or aryl; n is 0-2; p and L is a netural or anionic ligand, these complexes overlap with those of instant claims 7 and 8. Thus there is significant overlap between the genus of claimed complexes and those disclosed in claim 16 of Huang and they have the same utility as catalysts for hydrogenation/dehydrogenation reactions. See MPEP 2144.08.
It would have been prima facie obvious to combine the teachings of Joszai, Guan, Filonenko, and Huang to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to employ one of the claimed catalysts in the combined process of Joszai and Guan, because both Filonenko and Huang teach that significantly structurally similar analogs of the claimed catalysts are known in the art to hydrogenate CO2 to formic acid. Huang further teaches a well-defined genus which significantly overlaps with the claimed species and has the same hydrognation activity as those claimed. Therefore, replacing one known and predictable homogeneous formic acid hydrogenation complex (that of the Guan) with another (those of Filonenko and Huang) is prima facie obvious and will predictably produce formates in the combined process of Joszai and Guan with a reasonable expectation of success. Also see MPEP 2143(I)(B) and MPEP 2144.08.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023) in view of Guan (“Conversion of CO2 from air into formate using amines and phosphorus-nitrogen PN3P-Ru(II)pincer complexes”. Green Chem, 2018, p. 4201, including Supporting Information p. S1-S34, of record), as applied to claims 1 and 3-6 and further in view of Joo (“Molecular catalysis in liquid multiphase systems” Topics in Catalysis 5, 1998, p. 113, of record) and Sasson (US 2018/0123153, published on 5/3/2018, of record).
The Applicant claims a method wherein a quaternary ammonium salt is further used as a phase transfer catalyst in the first step. Joszai and Guan are silent regarding phase transfer catalysts.
Joo is a brief review regarding types of molecular catalysis in liquid multiphase systems. See abstract. In Fig. 2A on p. 1114, Joo teaches that it is known in the art that phase transfer catalysts, including quaternary ammonium salts, can be included in systems comprising an organic and an aqueous phase to facilitate contact between the catalyst in the organic phase and the reactant in the aqueous phase:
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. Also see final paragraph of p. 113.
Sasson teaches homogeneous transition metal catalyst systems for the reversible bicarbonate-formate hydrogenation/dehydrogenation cycle in a biphasic (organic and aqueous phases) system. See abstract and [0001-0012]. Sasson teaches that a phase transfer catalyst, including quaternary ammonium salts, may be added to the reaction mixture to enhance mixing between the catalyst in the organic layer and the formate in the aqueous layer. See [0038-0039].
It would have been prima facie obvious to combine the teachings of Joszai, Guan, Huang, Joo and Sasson to arrive at the instantly claimed process with a reasonable expectation of success before the effective fiilng date of the claimed invention. A person of ordinary skill would have been motivated to include a quaternary ammonium salt phase transfer catalyst in the combined process of Joszai and Guan because Joo and Sasson teach that when reactions are carried out in two phases (organic and aqueous) and the catalyst is only soluble in the organic phase and the reactant is only soluble in the aqueous phase, that phase transfer catalysts, including quaternary ammonium salts, can predictably facilitate contact between the catalyst and reactant, thus improving the efficiency of the reaction. Also see MPEP 2143(I)(B).
Response to Applicant Arguments on p. 7-9 of the response filed on 5/1/2026
Applicant argues that the Office Action fails to set forth a prima facie case of obviousness because the proposed modification would change the fundamental operation process as described in Joszai. Applicant argues that the rejection of record is based on an improper modification changing both the single-phase system of Joszai and changing Joszai’s catalyst from a water-soluble catalyst to an organic-soluble catalyst. Applicant argues Joszai’s reaction was not designed as a two-phase system, nor was Joszai’s catalyst designed to operate in an organic layer. Applicant argues that the prior art does not teach the limitations of “wherein the method further includes a second step of separating a solution including the homogeneous catalyst from the reaction solution obtained by the first step, by partitioning”. Applicant argues that Joszai and Guan use different reaction mechanisms and the teachings from the references cannot be combined to arrive at the claimed process. Applicant argues that Guan describes a two-phase reaction employing biphasic THF/H2O, wherein CO2 only enters the organic phase, where the reaction proceeds, and it is then returned to the aqueous phase. Applicant argues Guan’s reaction scheme is completely different from the reaction mechanism in Joszai wherein a single aqueous phase was used to dissolve CaCO3 and the Rh catalyst.
The Applicant’s arguments have been fully considered but are not persuasive. Regarding the alleged inoperability of the combined process of Joszai and Guan, the Office respectfully disagrees with the Applicant’s assertion. MPEP 2145(III) recites: In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.").
As argued in the rejection of record:
“It would have been prima facie obvious to combine the teachings of Joszai and Guan to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to prepare the calcium formate of Joszai by replacing the alkaline carbonates (Na2CO3 and NaHCO3) of Guan with CaCO3 because the biphasic catalyst system of Guan is superior in terms of recyclability and separability of the product and catalyst than the single-phase system of Joszai. Further, both catalyst systems predictably employ a hydrogenation with H2, of CO2 and alkali or alkaline earth metal carbonates, which are analogous to one another, in the presence of a soluble platinum group (Rh or Ru) complex catalyst to reliably produce the corresponding formates. Therefore, the skilled artisan would find that there is a reasonable expectation of success that the catalyst and conditions of Guan would predictably produce the calcium formate of Joszai if the sodium carbonates were replaced with calcium carbonates. Also see MPEP 2143(I)(B).”
Thus, Joszai and Guan are teaching analogous reactions which take place in different combinations of solvents and catalysts. There is no indication that replacing the sodium carbonate salts of Guan with CaCO3 to produce calcium formate would not be a predictable and operable process. The rejection never suggested that the skilled artisan would have to change any other part of the predictable reaction systems to achieve the claimed product, other than change the carbonate source in Guan to obtain calcium formate rather than sodium formate. Calcium formate will be predictably formed using both sets of conditions and mechanisms, the single-phase system of Joszai and the biphasic system of Guan if they both employ calcium carbonate salts. Therefore, no further motivation is required to arrive at the claimed process other than the obvious motivation to replace one known and predictable carbonate salt with another to obtain the desired alkali or alkaline earth metal formate. See MPEP 2143(I)(B). The Applicant is silent regarding why it would not be predictable and obvious to obtain calcium formate, taught as desirable compound made by an analogous process in Joszai, by substituting the exemplified sodium carbonates with calcium carbonates in the process of Guan. The skilled artisan would not have to mix and match the conditions of the two reaction systems other than substituting one known reactant for another in a predictable manner.
Double Patenting
See p. 19-25 of the OA dated 2/6/2026 for rejections of record which are maintained herein. The rejection over 18/043973 is no longer provisional as ‘973 has issued into US 12606513.
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 and 3-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of US 12606513 (‘513) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
The claims of ‘513 teach a broader variant of the instant process wherein the carbonate and formates are not limited to alkaline earth metal carbonates and formates. The claims of ‘513 otherwise teach the same process as that claimed using the same catalysts and solvents.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘513 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘513 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘513 would predictably produce calcium formate according to the instantly claimed process. Previously a provisional rejection over US app. no. 18/043973.
Claims 1 and 3-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of co-pending Application No. 18/043960 (‘960) (reference application) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘906 a broader variant of the instant process wherein the catalyst and ligand are limited to that of instant claims 7 and 8 and require the phase transfer catalyst of instant claim 9. The claims of ‘906 do not require carbon dioxide in the hydrogenation step or the using of an alkaline earth metal carbonate or bicarbonate to produce the corresponding formate.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘906 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have included CO2 in the reaction and employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘906 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘906 would predictably produce calcium formate according to the instantly claimed process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of co-pending Application No. 18/840951 (‘951) (reference application) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
The claims of ‘951 teach a broader variant of the instant process wherein the carbonate and formates are not limited to alkaline earth metal carbonates and formates. The claims of ‘951 otherwise teach the same process as that claimed using the same catalysts and solvents.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘951 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘951 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘951 would predictably produce calcium formate according to the instantly claimed process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of co-pending Application No. 18/841329 (‘329) (reference application) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
The claims of ‘329 teach a broader variant of the instant process wherein the carbonate and formates are not limited to alkaline earth metal carbonates and formates (see claims 6-7). The claims of ‘329 otherwise teach the same process as that claimed using the same catalysts and solvents.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘329 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘329 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘329 would predictably produce calcium formate according to the instantly claimed process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of co-pending Application No. 19/108913 (‘913) (reference application) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
The claims of ‘913 teach a broader variant of the instant process wherein the carbonate and formates are not limited to alkaline earth metal carbonates and formates (see claims 9-10). The claims of ‘913 otherwise teach the same process as that claimed using the same catalysts and solvents.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘913 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘913 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘913 would predictably produce calcium formate according to the instantly claimed process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant Arguments on p. 10 of the response filed 5/1/2026
Applicant argues that the double patenting rejections should be withdrawn for the same reasons as set forth in subsections (a) and (b) regarding the rejections under 35 USC 103. The arguments have been fully considered but are not persuasive. The double patenting rejections rely on the combination of the claims of the applications/patents and Joszai. Therefore, arguments against the combination of Joszai and Guan are not persuasive.
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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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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