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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/10/2026 has been entered.
Response to Amendment
Applicant's communication in response to the Office action dated: 11/24/2025 is noted. Amendment to claims 1-4 is entered. Claims 1-4 are pending.
Response to Arguments
Applicants’ arguments with respect to claim(s) 1-4 have been considered but are moot because the new ground of rejection uses a new reference, Miller et al (supplied with IDS) that along with previous reference, Elliott addresses all the new limitations added in the amended claims.
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elliott (US 2008/0275260 A1) and Miller et al (US 2006/0014977 A1).
With respect to claims 1-4, Elliott discloses an apparatus for preparing alkyl carboxylic acid esters (Abstract, paragraph 0023). The esterification/hydrolysis reactor (claimed preliminary reactor) is connected with a feed (fatty acid or oil source) and an alcohol source (Fig. 2) with a first solid acid catalyst to form a first product mixture or reactor effluent. The generated product mixture which may then be treated to remove water (and optionally remove glycerin and/or co-solvent) from the esterification reactor to produce a dried product mixture. The dried product mixture from the esterification reactor may be fed along with an alcohol (e.g., BtOH) and optionally additional co-solvent (if needed) and contacted with a solid acid catalyst in a second reactor which is Direct esterification reactor (claimed main reactor) (paragraph 0046, 0047, 0048; Fig. 1B, and Fig. 2). Elliott further discloses methods for the removal of water from the product mixture are known to one of ordinary skill in the art and may include for example and without limitation contacting the product mixture with water abating materials such as drying agents. Additional water removal methods known to those of ordinary skill in the art include use of a flash drum, distillation, molecular sieves, or combinations thereof (Paragraph 0045). It is known to those skilled in the art that distillation of product mixture from esterification reactor will give alcohol and carboxylic acid at the top, while unreacted alcohol and ester at the bottom.
Elliott also discloses that the second reactor is connected with a second alcohol supply passage separate from the first alcohol supply passage and a passage from the second reaction product discharged from the distillation column (Fig. 2). Elliott further discloses a separation and purification unit removing alcohol and collecting carboxylic acid ester from the direct esterification reactor (claimed main reactor) (Fig. 2).
Elliott discloses using any monoalcohol including ethanol (paragraph 0040) and any fatty acid from C2-C24 (paragraph 0029), which obviously includes lactic acid. This indicates that using lactic acid and ethanol as feed will produce ethyl lactate as claimed. Elliott discloses using 100% anhydrous ethanol in his Example 5.
It is to be noted here that a fatty acid is a carboxylic acid.
Also, it should be noted that the claimed invention is drawn to an apparatus and limitations added to the process, like: feed composition, higher purity of second alcohol stream than the first alcohol stream, and reflux details will not affect the structure of the apparatus.
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Elliott does not appear to specifically disclose hydrolysis of a lactic acid agglomerate comprising a dimer, a trimer, or an oligomer of lactic acid.
Miller et al disclose a process and apparatus for production of organic esters using reactive distillation column and acid catalyst (abstract, Fig. 1 and 7) similar to Elliott. Miller et al also disclose an apparatus 100 wherein dimer ethyl ester, and trimer ethyl ester are separated in a separation column 106, hydrolyzed in column 109 and then recycled to lactic acid via recycle line 111 to the lactic acid feed 101 at the upper part of column 103 (Paragraph 0115, Fig. 7). The details are provided in paragraphs 0116 to 0131).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use lactic acid, ethanol, and dimers and trimers as feed to produce ethyl lactate as claimed.
Elliott also discloses that the reactor may be any type, including reactive distillation column, charged with a solid acid catalyst (paragraph 0022, 0051, 0052, 0053).
Elliott further discloses that the reaction product from esterification reactor (preliminary reactor) is supplied to an upper portion of the direct esterification reactor (Main reactor) and the second alcohol stream is supplied to the lower portion of the direct esterification reactor (Fig. 2).
Elliott discloses recovering water and alcohol separated from the distillation column and alcohol being recycled back to the reactor (Paragraph 0051, 0052). It is to be noted that recovery and/or recycle of water and alcohol from distillation column is done through a condenser at the top and refluxing a part of the condensed alcohol as a regular practice.
It is known to those skilled in the art that the alcohol collection passage connects distillation column with the reflux unit, main reactor and the preliminary reactor. Miller et al disclose details of reflux from the top of the distillation column (Fig.1, Examples 1-8, paragraph 0069-0075 Table 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PREM C SINGH whose telephone number is (571)272-6381. The examiner can normally be reached Monday-Friday 6:00 AM to 3:00 PM (Eastern).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Mallari can be reached at 571-272-4729 The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
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