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 .
Status of the Claims
The preliminary amendment filed on 06/14/2023 has been entered. Claims 1-10 have been amended, and are currently pending and under examination.
Specification
In the specification dated 08/23/2023, the "single view” drawing is referred as "Fig. 1” ([0008]) and Figure 1 ([0094]-[0095]). In accordance with 37 CFR 1.84(u)(1), please amend the specification throughout to refer to “the Figure.”
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because 37 CFR 1.84(u)(1) indicates that if a single drawing is filed, the drawing must not be numbered and the abbreviation "Fig." must not appear. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Claim Objections
Claim 4 is objected to because of the following informalities: the chemical identifier R-31 has to be preceded by either the full chemical name or chemical formula. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 9 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.
Regarding claim 9, the phrase "(residence time)" is interpreted as “such as residence time” or “for example residence time” and renders the claim indefinite because it is unclear whether the limitation within the parentheses is part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2020/0246611 (WO’611; cited in IDS 06/14/2023 and machine translation attached herewith).
Regarding claims 1-2, 4 and 8, WO’611 teaches in Examples 1-6 and 8-17 and Tables 1-5 methods for producing a reaction gas containing 1,1,2-trifluoroethane (R-143) and (E,Z)-1,2-difluoroethylene (R-1132(E,Z)), the method comprising subjecting a starting material gas containing difluoromethane (R-32) to a reaction that involves thermal decomposition at a temperature of 800° C, 850° C, 900° C, 950° C or 1050° C.
Regarding claim 1, WO’611 exemplifies a pressure of 0.01 MPaG and further teaches in the non-exemplified embodiment that the reaction can also be conducted at a reaction pressure of 0 to 0.6 MPaG ([0007]). The instantly claimed reaction pressure, 0.9 MPaG or more and 2.0 MPaG or less is merely close to that of WO’611 and in view of MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, absent any showing of unexpected results or criticality.
Regarding claim 2, the reference teaches pre-pressurizing the starting material at a pressure of 0 to 0.6 MPaG ([0021], the pressure range at which the raw material is subjected to). The instantly claimed pressure, 0.1 MPaG or more and 2.0 MPaG or less, overlaps with the pre-pressure range of WO’611. MPEP § 2144.05 states that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
The reference is silent that the process obtains a selectivity of R-143 in the reaction gas of 30 to 60 mol %. However, since the claimed reaction process is taught by WO’611, in which a pre-pressure range overlaps with that of the reference, there is a prima facie case of obviousness for the selectivity of R-143 in the reaction gas of WO’611 to be in the range of 30 to 60 mol %. See MPEP § 2112.01.
Regarding claim 4, WO’611 teaches in example 7 and Table 3 that (E,Z)-1,2-difluoroethylene (R-1132(E,Z)) is also obtained from chlorofluoromethane (R-31). The reference fails to exemplify combining the starting material gas containing R-32 with R-31 in an amount of 0.01% or more and 10% or less of the volume of the difluoromethane (R-32) to form a mixed gas. However, the non-exemplified embodiment of WO’611 teaches that (E,Z)-1,2-difluoroethylene (R-1132(E,Z)) can be obtained from different starting materials by subjecting a raw material gas containing at least one fluoromethane selected from the group consisting of chlorodifluoromethane (R-22), chlorofluoromethane (R-31), difluoromethane (R-32), and fluoromethane (R-41) to a reaction including thermal decomposition (pg. 3, [0006]). Thus, any starting material comprising any combination of the above starting materials, including the starting material gas containing R-32 in combination with R-31 in an amount of 0.01% or more and 10% or less of the volume of the difluoromethane (R-32) as instantly claimed, would yield nothing more than the predictable products comprising (E,Z)-1,2-difluoroethylene (R-1132(E,Z)). Furthermore, in view of Table 3, 1,1,2-trifluoroethane (R-143) is also obtained from R-32, and as such, the combination of R-32 and R-31 would also produce R-143 in addition to R-1132(E,Z).
Regarding claim 5, as set forth above, the reference teaches a reaction pressure of 0 to 0.6 MPaG ([0007]).
Regarding claim 6, WO’611 teaches the reaction is carried out using a metal reaction vessel having an iron content of 10% by mass or less (pg. 6).
Regarding claim 7, the raw material gas of Tables 1-5 contains a concentration of R-32 of 10 vol%, 99.9 vol%, or 98 vol%, calculated based on the amount of water vapor or diluent gas present in the starting material gas composition.
Regarding claim 9, WO’611 teaches the residence time for which the raw material gas is subjected to the reaction is preferably 0.2 to 3 seconds, more preferably 0.5 to 1 second ([0022]).
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for producing a reaction gas containing 1,1,2-trifluoroethane (R-143) and/or (E,Z)-1,2-difluoroethylene (R-1132(E,Z)), the method comprising:
- subjecting a starting material gas containing difluoromethane (R-32) to a reaction that involves thermal decomposition at a pressure of 0.9 MPaG or more and 2.0 MPaG or less and a temperature of 600° C. or more and 1000° C. or less, thereby obtaining the reaction gas,
- supplying a starting material gas containing difluoromethane (R-32), which has been pre-pressurized to a pressure of 0.1 MPaG or more and 2.0 MPaG or less, in a reactor under a pressure condition lower than the pre-pressurization pressure, and subjecting the starting material gas to a reaction that involves thermal decomposition at a temperature of 600° C. or more and 1000° C. or less, thereby obtaining the reaction gas, wherein the selectivity of R-143 in the reaction gas is 30 to 60 mol %,
- before supplying a starting material gas containing difluoromethane (R-32) in a reactor, combining the starting material gas with R-31 in an amount of 0.01% or more and 10% or less of the volume of the difluoromethane (R-32) to form a mixed gas, and subjecting the mixed gas to a reaction that involves thermal decomposition at a temperature of 600° C. or more and 1000° C. or less, thereby obtaining the reaction gas
in view of the teachings of WO’611.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over International publication WO2020/0246611 (WO’611; cited in IDS 06/14/2023 and machine translation attached herewith) as applied to claims 1 and 6-9 above, and further in view of International publication WO2019/194214A1 (WO’214).
The teachings of WO’611 has been set forth above, but the reference fails to teach or suggest the method comprises subjecting 1,1,2-trifluoroethane (R-143) contained in the reaction gas to a dehydrofluorination reaction. The deficiency is however cured by WO’214.
WO’214 teaches in examples 1-2 a method of dehydrofluorinating HFC-143 to obtain a product comprising (E)-HFO-1132 and (Z)-HFO-1132. The reference teaches that 1,2-difluoroethylene (HFO-1132) is considered to be promising refrigerant compounds that have a low global warming potential (GWP). Similarly, WO’611 teaches the same application of R-1132 as a refrigerant to replace difluoromethane (R-32) and 1,1,1,2,2-pentafluoroethane (R-125), due to its small global warming potential (GWP).
It is noted that the exemplified thermal decomposition reactions of R-32 in the examples of WO’611 produce R-143 at a relatively higher selectivity in the reaction product compositions (Table 1-5), thus a skilled artisan would have been motivated to subject the reaction compositions of WO’611 to the dehydrofluorination method of WO’214 with a reasonable expectation of success in obtaining more of the 1,2-difluoroethylene (HFO-1132) product with industrial application as set forth above.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for producing a reaction gas containing 1,1,2-trifluoroethane (R-143) and/or (E,Z)-1,2-difluoroethylene (R-1132(E,Z)), the method comprising subjecting a starting material gas containing difluoromethane (R-32) to a reaction that involves thermal decomposition at a pressure of 0.9 MPaG or more and 2.0 MPaG or less and a temperature of 600° C. or more and 1000° C. or less, thereby obtaining the reaction gas, wherein the reaction gas contains 1,1,2-trifluoroethane (R-143), and the method comprises subjecting 1,1,2-trifluoroethane (R-143) contained in the reaction gas to a dehydrofluorination reaction in view of the combination of WO’611 and WO’214.
Claims 1, 4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Patent number JP2013241348A (JP’348; cited in IDS 06/14/2023 and machine translation attached herewith).
Regarding claims 1 and 4, JP’348 teaches in Example 6 ([0040]), a method for producing a reaction gas containing 1,2-difluoroethylene (R-1132), the method comprising subjecting a starting material gas containing difluoromethane (R-32) to a reaction that involves thermal decomposition at a temperature of 980° C. JP’348 further exemplifies a reaction pressure of 0.02 MPa and further teaches in the non-exemplified embodiment that the reaction can also be conducted at a reaction pressure of 0 to 2 MPa ([0005]). The instantly claimed reaction pressure, 0.9 MPaG or more and 2.0 MPaG or less lies inside of that of JP’348 and in view of MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts "overlap or lie inside ranges disclosed by the prior art".
Regarding claim 4, JP’348 teaches in examples 1-5 that 1,2-difluoroethylene (R-1132) is also obtained from thermal decomposition of chlorofluoromethane (R-31). However, the reference fails to exemplify combining the starting material gas containing R-32 with R-31 in an amount of 0.01% or more and 10% or less of the volume of the difluoromethane (R-32) to form a mixed gas.
In accordance with MPEP § 2143, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. In this case, at least prong (B) Combining prior art elements according to known methods to yield predictable results applies.
Thus, using any starting material comprising any combination of the above starting materials, including the starting material gas containing R-32 in combination with R-31 in an amount of 0.01% or more and 10% or less of the volume of the difluoromethane (R-32) as instantly claimed, would yield nothing more than the predictable products comprising 1,2-difluoroethylene.
Regarding claim 7, the starting material gas of JP’348 contains R-32 and 90 vol% of steam ([0040]), and thus the amount of R-32 in the starting material is 10 vol%.
Regarding claim 8, JP’348 teaches in the non-exemplified embodiment that the reaction temperature for the synthesis reaction in the present invention is preferably 400 to 1,200° C ([0012]).
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for producing a reaction gas containing 1,1,2-trifluoroethane (R-143) and/or (E,Z)-1,2-difluoroethylene (R-1132(E,Z)), the method comprising:
- subjecting a starting material gas containing difluoromethane (R-32) to a reaction that involves thermal decomposition at a pressure of 0.9 MPaG or more and 2.0 MPaG or less and a temperature of 600° C. or more and 1000° C. or less, thereby obtaining the reaction gas,
- before supplying a starting material gas containing difluoromethane (R-32) in a reactor, combining the starting material gas with R-31 in an amount of 0.01% or more and 10% or less of the volume of the difluoromethane (R-32) to form a mixed gas, and subjecting the mixed gas to a reaction that involves thermal decomposition at a temperature of 600° C. or more and 1000° C. or less, thereby obtaining the reaction gas
in view of the teachings of JP’348.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Patent number JP2013241348A (JP’348; cited in IDS 06/14/2023 and machine translation attached herewith) as applied to claims 1, 4 and 7-8 above, and further in view of International publication WO2020/0246611 (WO’611; cited in IDS 06/14/2023 and machine translation attached herewith).
The teachings of JP’348 is set forth above.
Regarding claim 6, JP’348 further teaches the reaction is carried out using a reaction vessel that includes materials such as glass, iron, nickel, and alloys containing
iron or nickel as the main component ([0016]), but fails to teach or suggest that the reaction vessel has an iron content of 10% by mass or less (pg. 6). The deficiency is however cured by WO’611.
Like JP’348, WO’611 also teaches a method for producing a reaction gas containing 1,2-difluoroethylene (R-1132), the method comprising subjecting a starting material gas containing difluoromethane (R-32) to a reaction that involves thermal decomposition. WO’611 further teaches the reaction is carried out using a metal reaction vessel having an iron content of 10% by mass or less (pg. 6).
As such, one of ordinary skilled in the art would have been motivated to use the reaction vessel of WO’611 in the reaction process of JP’348 with a reasonable expectation in obtaining nothing more than the R-1132 product.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a method for producing a reaction gas containing 1,1,2-trifluoroethane (R-143) and/or (E,Z)-1,2-difluoroethylene (R-1132(E,Z)), the method comprising subjecting a starting material gas containing difluoromethane (R-32) to a reaction that involves thermal decomposition at a pressure of 0.9 MPaG or more and 2.0 MPaG or less and a temperature of 600° C. or more and 1000° C. or less, thereby obtaining the reaction gas, wherein the reaction is carried out using a metal reaction vessel having an iron content of 10% by mass or less in view of the teachings of JP’348 and WO’611.
Allowable Subject Matter
Claim 3 is allowed. The closest prior art references have been set forth above. Furthermore, both WO’611 and JP’348 teach the use of heat transfer medium, wherein the heat transfer medium in JP’348 may be at least one gas selected from the group consisting of water vapor, nitrogen, and carbon dioxide. However, none of the references teach or suggest that the heat medium contains anhydrous hydrogen fluoride as instantly claimed.
Conclusion
Claims 1-2 and 4-10 are rejected and claim 3 is allowed.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692