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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/07/2026 has been entered.
Response to Amendment
The examiner acknowledges Applicant’s response filed on 01/07/2026 containing amendments to the claims. Claims 10-21 have been canceled. Claims 22-26 are new. No arguments are presented in the response.
The objections to claims 10-13 and the rejection of claim 14 under 35 USC 112(d) are withdrawn in view of the cancellation of said claims.
The following is a modified rejection based on the amendments to the claims.
Claim Objections
Claims 22-24 are objected to because of the following informalities.
Claim 22 recites
a source of N2 operationally coupled to the pre-heater;
a source of H2 operationally coupled to the pre-heater;
a pump configured to provide flow of reactants, N2 and/or H2 through the pre-heater and reactor at a flow rate of from 0.7 to 53.0 WHSV;
(emphasis added).
It is noted that “a reactant pre-heater” is recited after the above limitations. For clarity, Applicant is suggested to change the order of the recitations in the claim body such that “a reactant pre-heater” is introduced before “the pre-heater.”
Claim 22 further recites “at least one reactant reservoir” in line 3 and also recites “the reactant reservoir” in lines 10-11. For clarity, Applicant is suggested to amend the recitation to state “the at least one reactant reservoir.”
Claim 23 recites “The system of claim 22 further comprising another reactant reservoir containing H2, wherein the other reactant reservoir is configured to provide H2 to the pre-heater.” For clarity, Applicant is suggested to amend the claim to read “The system of claim 22 further comprising an additional reactant reservoir containing H2, wherein the additional reactant reservoir is configured to provide H2 to the pre-heater.”
Claim 24 recites “The system of claim 22 further comprising another reactant reservoir containing N2, wherein the other reactant reservoir is configured to provide N2 to the pre-heater.” For clarity, Applicant is suggested to amend the claim to read “The system of claim 22 further comprising an additional reactant reservoir containing N2, wherein the additional reactant reservoir is configured to provide N2 to the pre-heater.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 25 recites two additional reactant reservoirs, wherein a first reservoir contains H2 and is configured to provide H2 to the pre-heater, and a second reservoir contains N2 and is configured to provide N2 to the pre-heater. However, claim 22, upon which claim 25 depends, recites “a source of N2 operationally coupled to the pre-heater,” “a source of H2 operationally coupled to the pre-heater,” and “a pump configured to provide flow of reactants, N2 and/or H2 through the pre-heater and reactor,” which appear to render claim 14 redundant. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claims 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Chinta et al. (US 2017/0349503 A1), in view of Smith et al. (US 2020/0010767 A1) and Coupard et al. (US 2013/0090510 A1).
Regarding claim 22, Chinta discloses a system comprising:
a reactor (Fig. 4, 40) operationally coupled to reactant reservoirs (44a, 44b) containing ethanol and acetaldehyde ([0076]-[0077]);
a reactor outlet (52) operationally configured to convey reaction products to a product reservoir (68), the reactor outlet including a condenser (54) configured to separate butadiene from unreacted ethanol/acetaldehyde and other oxygenates ([0078]); and
a catalyst within the reactor, the catalyst comprising a metal component and a support material, e.g., a trimetallic catalyst system comprising Zr/Zn/Cu oxides supported on silica or magnesia-silica ([0039]-[0042], [0048]-[0049], [0055], [0076]).
With regard to “a source of N2 operationally coupled to the pre-heater,” Chinta teaches using nitrogen as a co-feed ([0079]), which reasonably suggests that the system comprises a source of nitrogen (reservoir) that is configured to provide N2 to be mixed with ethanol/acetaldehyde reactants.
With regard to “a source of H2 operationally coupled to the pre-heater,” Chinta discloses that the reactor may undergo in-situ regeneration in the presence of hydrogen ([0056]). Therefore, Chinta is considered to implicitly teach that the system comprising the reactor further contains a reservoir containing hydrogen, which can supply hydrogen during the regeneration cycle. Furthermore, it would be obvious for the reservoir containing hydrogen to be configured to provide H2 to the pre-heater because the regeneration operates at an elevated temperature ([0056]).
Chinta does not disclose a pump configured to provide flow of reactants, N2 and/or H2 through the pre-heater and reactor at a flow rate of from 0.7 to 53.0 WHSV.
However, Smith teaches using a pump to feed C2-C5 alcohols into a dehydration reactor at a desirable whsv condition ([0024]-[0027], [0052]).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Chinta by including a pump for the purpose of introducing reactants into a dehydration reactor, as taught by Smith, because (i) Chinta discloses a dehydration reactor where reactants such as ethanol and acetaldehyde are fed to the reactor ([0076]-[0077]), (ii) Smith teaches using a pump to introduce alcohol reactants into a dehydration reactor, and (iii) this merely involves application of a known technique for feeding reactants to operate a reactor to yield predictable results.
With respect to the claimed WHSV range of “0.7 to 53.0,” it is noted that claim 22 is an apparatus claim and a functional limitation does not differentiate a claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114. II. In any event, one would have been motivated to find an optimal WHSV condition for the Chinta process by routine experimentation, because China is silent on WHSV conditions and it is not inventive to discover optimum or workable ranges by routine experimentation where the general conditions of a claim are disclosed in the prior art. MPEP 2144.05 II. It is further noted Smith suggests that the pump is capable of maintaining the reactant flow rate from various WSHV conditions, e.g., 9.1 in Example 10 and 1.0 in Example 11 ([0064]-[0065]).
Chinta, in view of Smith, does not disclose a reactant pre-heater operationally coupled to both the reactor and the reactor reservoir and configured to heat the reactants prior to entry into the reactor.
However, it is noted that the process of Chinta is operated at an elevated temperature, e.g., 148-425°C ([0035]).
Coupard, drawn to a process for conversion of ethanol to ethylene, teaches heat-exchanging an ethanol feedstock with an effluent, which allows for obtaining latent heat and/or condensation enthalpy of the effluent that is used to heat and vaporize the ethanol feedstock ([0083]-[0084]).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to modify Chinta/Smith by including a heat exchanger (pre-heater) where the feedstock is heat exchanged with the effluent prior to entry to the reactor, as taught by Coupard, because (i) the process of Chinta is operated at an elevated temperature, e.g., 148-425°C ([0035]) at which the reactants are expected to be vaporous, (ii) Coupard teaches a method of heating and vaporizing a feed stream with an internal heat source, thereby improving energy efficiency, and (iii) this involves application of a known technique to improve a known process to yield predictable results.
Chinta does not explicitly teach that the reactor is configured to produce a reaction product comprising “molar majorities of 1-butene and/or 2-butene.” However, Chinta teaches a system having the same structure (including catalysts) and the same reactants as the claimed invention; thus, Chinta’s system is considered to be capable of conducting the recited function of producing molar majorities of 1-butene and/or 2-butene. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114. II.
Regarding claim 23, Chinta discloses that the reactor may undergo in-situ regeneration in the presence of hydrogen ([0056]). Therefore, Chinta is considered to implicitly teach that the system comprising the reactor further contains a reservoir containing hydrogen, which can supply hydrogen during the regeneration cycle. Furthermore, it would be obvious for the reservoir containing hydrogen to be configured to provide H2 to the pre-heater because the regeneration operates at an elevated temperature ([0056]).
Regarding claim 24, Chinta teaches using nitrogen as a co-feed ([0079]), which reasonably suggests that the system comprises a source of nitrogen (reservoir) that is configured to provide N2 to be mixed with ethanol/acetaldehyde reactants.
Regarding claim 25, Chinta discloses that the reactor may undergo in-situ regeneration in the presence of hydrogen ([0056]). Therefore, Chinta is considered to implicitly teach that the system comprising the reactor further contains a reservoir containing hydrogen, which can supply hydrogen during the regeneration cycle. Furthermore, it would be obvious for the reservoir containing hydrogen to be configured to provide H2 to the pre-heater because the regeneration operates at an elevated temperature ([0056]).
Chinta teaches using nitrogen as a co-feed ([0079]), which reasonably suggests that the system comprises a source of nitrogen (reservoir) that is configured to provide N2 to be mixed with ethanol/acetaldehyde reactants.
Regarding claim 26, Chinta discloses that the reactor may operate at a temperature of 148-425°C or 250 to 500°C ([0035]). Therefore, Chinta’s reactor is structurally capable of operating at the claimed temperature of “between 200 and 450°C.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON Y CHONG whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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/JASON Y CHONG/Examiner, Art Unit 1772