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 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.
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 7, 9, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 20200021319 A) in view of Brocker et al. (US 7,576,246).
Regarding claim 7, the reference Kim et al. teaches an apparatus for preparing alkylene carbonate, comprising a reactor having a catalyst layer of polyamine-based heterogenous catalyst for reacting an alkylene oxide and carbon dioxide in the presence of the polyamine-based heterogenous catalyst to produce the alkylene carbonate (see Machine Translation, paras. [0021]; [0030]; [0089]). The reference Kim et al. further teaches that the heterogeneously catalyzed reaction may be carried out at a temperature in the range 80 to 150°C and pressure in the range 10 to 30 atmospheres (see paras. [0059]-[0060]). The reference Kim et al. further specifies that if the reaction temperature is too low, the reaction rate may be slowed down, and if the reaction temperature is too high, the reaction selectivity may decrease as the alkylene oxide undergoes self-polymerization (see para. [0059]). The reference Kim et al. further specifies that if the reaction pressure is less than 10 atmospheres, the reaction speed may be slowed down, and if it exceeds 30 atmospheres, there is no effect of improving the reaction speed, while the equipment cost may be excessive (see para. [0060]). The reference Kim et al. further teaches that a reaction solvent should be used during the heterogeneously catalyzed reaction, and that an alkylene carbonate identical to the product may be used as the reaction solvent (see para. [0063]).
The reference Kim et al. is, however, silent with respect to having the alkylene carbonate prepared in a continuous flow reactor apparatus as claimed by applicant. The reference Kim is silent with respect to the apparatus comprising a pump which supplies an alkylene oxide and carbon dioxide as raw materials to the reactor; a storage tank wherein an alkylene carbonate produced in the reactor is stored; and a pressure pump which recycles at least a part of the produced alkylene carbonate to the reactor.
The reference Brocker et al. teaches an apparatus for the isothermal operation of heterogeneously catalyzed reactions in a continuous flow reaction process involving at least three phases in the form of a gaseous phase, a liquid phase and a solid phase (see Abstract; col. 1, lines 5-18; Fig. 1). The reference Brocker et al. teaches that the apparatus may comprise: a reactor (1) filled with a solid catalyst (see col. 1, lines 5-11; Fig. 1); a pump (13, 21) for continuously supplying liquid phase and gaseous phase reactants to the reactor (see col. 4, lines 33-49; Fig. 1); a tank (10) wherein a liquid reaction product produced in the reactor is stored (see col. 4, lines 49-53; Fig. 1); and a pump (21) which recycles at least a part of the produced liquid product to the reactor (see col. 4, lines 33-49; Fig. 1). The reference Brocker et al. further teaches that the overall direction of flow of reaction fluid in the reactor should be upward (see col. 3, lines 56-57; Fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Kim et al. and Brocker et al., and modified the apparatus of Kim et al. to similarly include a pump which supplies an alkylene oxide and carbon dioxide as raw materials to the reactor; a storage tank wherein an alkylene carbonate produced in the reactor is stored; and a pressure pump which recycles at least a part of the produced alkylene carbonate to the reactor, as claimed by applicant, in application were it is desired to produce alkylene carbonate by a continuous flow reaction process as taught by Brocker et al.. Furthermore, the reference Kim et al. teaches for the need to recirculate at least a part of the produced alkylene carbonate to the reactor to function as a solvent for the alkylene oxide reactant, which is highly reactive and poses a risk of explosion (see para. [0063]).
Regarding claim 9, as no structural distinction is seen between the apparatus Kim et al. and Brocker et al., and the instantly claimed apparatus, the apparatus of Kim et al. and Brocker et al. is considered capable of performing the function recited in claim 9.
Regarding claim 10, the references Kim et al. and Brocker et al. teach the apparatus, wherein a reaction may be performed at a temperature of 80-150 ºC and a pressure of 10-30 atm for 3-5 hours (see Kim et al. paras. [0059]-[0062]).
Regarding claim 12, the references Kim et al. and Brocker et al. teach the apparatus, wherein the catalyst is one or more catalyst of Chemical Formulas 1 and 2 as specified in claim 12 (see Kim et al.: Chemical Formulas 1 and 2).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. in view of Brocker et al. as applied to claim 7 above, and further in view of Marquis et al. (US 6,156,160).
Regarding claim 11, the references Kim et al. and Brocker et al. do not specifically disclose a distillation tower connected to the storage tank and, when the alkylene carbonate in the storage tank reaches a predetermined level, the alkylene carbonate above the predetermined level is supplied to the distillation tower. However, as evidence by the Marquis et al. (see col. 5, lines 4-36; Fig. 1), it is typical in the art to arrange one or more distillation towers downstream of a reactor employed for the production of alkylene carbonate so as to produce a high purity alkylene carbonate by distillation. The reference Marquis et al. also teaches that the alkylene carbonate product may be sent to a storage unit prior to distillation (see col. 5, lines 14-15). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a distillation tower connected to the storage tank of Kim et al. and Brocker et al. such that when the alkylene carbonate in the storage tank reaches a predetermined level, the alkylene carbonate above the predetermined level is supplied to the distillation tower so as to produce a high purity alkylene carbonate by a distillation process as suggested by Marquis et al. (see col. 5, lines 9-36).
Response to Arguments
Applicant's arguments filed on 7 May 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that an alkylene oxide in liquid state and carbon dioxide in gas state are supplied via upward flow to prevent catalyst channeling (see Remarks, page 6), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's argument that the claimed approach serves the dual function of: (i) reintroducing dissolved unreacted materials into the reaction solution to maintain high yield, and (ii) absorbing heat of reaction to prevent rapid temperature rise (see Remarks page 7), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The reference Brocker et al. teaches for the continuous recycling of a liquid phase of the reaction product to the reactor (see col. 3, lines 58-64; col. 4, lines 33-60; Fig. 1). Thus, one of ordinary skill in the art would readily recognized that the continuous recycling of a liquid phase of the reaction product as taught by Brocker et al. can suitably serve the dual function of: (i) reintroducing any dissolved unreacted materials remaining in the liquid phase back into the reactor, and (ii) in the case of exothermic reactions, absorbing at least some of the heat of reaction (see col. 1, lines 5-18; col. 3, lines 58-64; col. 4, lines 33-60; Fig. 1). In considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (COPA 1968).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., packed catalyst layer of solid polyamine-based heterogeneous catalyst granules through which the liquid alkylene oxide and gaseous carbon dioxide are separately introduced and flow upward through the catalyst layer (see Remarks, page 8, lines 1-5)) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant also argues that the reference Brocker et al. contains no teaching or suggestion of upward flow as a way to prevent catalyst channeling in a packed solid catalyst layer (see Remarks, page 8, lines 6-18).
The examiner respectfully disagrees. Consistent with applicant’s definition of the term “channeling” as defined in the specification at page 7, lines 13-15, the upward flow in accordance to the teachings Brocker et al. (see col. 2, lines 25-31; col. 3, lines 56-57) would clearly prevent catalyst channeling by preventing the tendency for a gaseous reactant to coalesce and pass through a packed solid catalyst layer along only one side of the catalyst layer.
In response to applicant's argument that the temperature-maintaining function achieved through product recycling in the claimed invention has no counterpart in Brocker et al. (see Remarks, page 8, lines 9-13), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lessanework T Seifu whose telephone number is (571)270-3153. The examiner can normally be reached M-T 9:00 am - 6:30 pm; F 9:00 am - 1:00 pm.
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/LESSANEWORK SEIFU/Primary Examiner, Art Unit 1774
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