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 .
Priority
This application claims the benefit of US Provisional Application 63/404,928 dated 08 September 2022 as reflected in the filing receipt mailed on 13 July 2023.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 step (c) states “passing part of the solution comprising alkali taurinate of step (b)” and step (d) states “the other part of the solution comprising alkali taurinate of step (b)”. The step (d) “the other part” appears to lack clarity and/or antecedent basis. The step (d) “the other part …” is interpreted as “a remainder of the part of the solution comprising alkali taurinate of step (b)”.
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.
Claims 1-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 step (b) recites the limitation “the solution of step (a)”. There is insufficient antecedent basis for this limitation in the claim. Step (a) recites only one solution which is “a mother liquor solution”. The claim is interpreted to yield a solution of step (a).
Claim 1 step (c) recites “a bipolar membrane electrodialysis to produce a catalytic amount of alkali hydroxide”; while, step (a) recites “a catalytic amount of alkali hydroxide” and “a bipolar membrane electrodialysis”. There is insufficient antecedent basis for the step (c) limitations in the claim. The step (c) limitations are interpreted as “the bipolar membrane electrodialysis to produce the catalytic amount of alkali hydroxide”.
Claim 1 step (d) recites “a mother liquor solution comprising alkali isethionate”; while, step (a) recites “a mother liquor solution comprising alkali isethionate”. There is insufficient antecedent basis for the step (d) limitation in the claim. The step (d) limitation is interpreted as “the mother liquor solution comprising alkali isethionate”.
Claims 5 and 14 recite “the molar amount of alkali isethionate in the mother liquor solution”. There is insufficient antecedent basis for the limitation in the claims. The limitations are interpreted as “a molar amount of the alkali isethionate in the mother liquor solution”.
Claims 6 and 15 recite “wherein the molar yield of taurine is greater than 90% on the basis of ammonium isethionate”. There is insufficient antecedent basis for the limitations in the claims. The limitations are interpreted as “wherein a molar yield of the taurine is greater than 90% on a basis of the ammonium isethionate”.
Claim 8 step (b) recites the limitation “the solution of step (a)”. There is insufficient antecedent basis for this limitation in the claim. Step (a) recites only one solution which is “a mother liquor solution”. The claim is interpreted to yield a solution of step (a).
Claim 8 step (c) recites “a bipolar membrane electrodialysis to produce a catalytic amount of alkali hydroxide”; while, step (a) recites “a catalytic amount of alkali hydroxide” and “a bipolar membrane electrodialysis”. There is insufficient antecedent basis for the step (c) limitations in the claim. The step (c) limitations are interpreted as “the bipolar membrane electrodialysis to produce the catalytic amount of alkali hydroxide”.
Claim 8 step (d) recites “a mother liquor solution comprising alkali isethionate”; while, step (a) recites “a mother liquor solution comprising alkali isethionate”. There is insufficient antecedent basis for the step (d) limitation in the claim. The step (d) limitation is interpreted as “the mother liquor solution comprising alkali isethionate”.
Claim 11 recites “wherein the amount of the solution comprising alkali taurinate”. There is insufficient antecedent basis for the limitation in the claim. The limitation is interpreted as “the part of the solution comprising alkali taurinate”.
Claim 13 recites “the total molar amount of taurinates”. There is insufficient antecedent basis for the limitation in the claim. The limitation is interpreted as “a total molar amount of taurinates”.
Claims 2-15 depend from base claims 1 and 8, and are included in this rejection as they do not correct the informalities identified in base claims 1 and 8.
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.
Claims 1-3, 5-12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US20180162806, published 14 June 2018, hereinafter Hu ‘806) in view of Casanova et al. (US20210229040, published 29 July 2021, hereinafter Casanova), as evidenced by Kopko (US20180347874, published 06 December 2018).
Hu ‘806 teaches the instant application claims 1 and 8 limitations of a cyclic process for producing taurine where additional acid is eliminated from neutralizing ammonium taurinate, thus avoiding the formation of inorganic salt byproducts, comprising: mixing a solution of alkali isethionate or regenerated alkali isethionate, alkali ditaurinate, and alkali tritaurinate, i.e., regenerated mother liquor, with an excess of ammonia and an alkyl hydroxide catalyst, i.e., step a), then subjecting the solution/mother liquor to an ammonolysis reaction with or without the removal of excess ammonia to yield a solution comprising alkali taurinate, i.e., step b), see Paras. [0030];[0034]-[0050], Fig. 1, where the alkyl hydroxide used in step a) is produced by splitting a mixture of alkali isethionate and alkali ditaurinate in the mother liquor into an acidic component, i.e., a mixture of isethionic acid and ditaurine, and an alkali hydroxide component, by using bipolar membrane electrodialysis, where the mixed acidic solution of isethionic acid and ditaurine is used as an acid after the ammonolysis to produce the desired pH of the taurine solution of 5 to 6; while, alkali hydroxide is recycled as a catalyst for the ammonolysis reaction, see Paras. [0041]-[0049], i.e., step c). Then ammonium isethionate is added to the ammonolysis solution/mother liquor or a part thereof containing ditaurine and alkali taurinate before or after the removal of excess ammonia to react with alkali taurinates to yield alkali isethionate and ammonium taurinate, i.e., step d), where after the separation of taurine, the mother liquor, containing regenerated alkali isethionate, alkali ditaurinate, and alkali tritaurinate, is saturated with ammonia and is subjected to the ammonolysis reaction, i.e., the mother liquor is regenerated back to steps a) and b), see Paras. [0039]-[0045];[0070]-[0073], Fig. 1, meeting:
The cyclic process of steps a), b), c), and d) in instant application claim 1 and in instant application claim 8.
Hu ‘806 teaches the instant application claims 6, 7, and 15 limitations of the process for the production of taurine from ammonium isethionate is in a high overall yield, i.e., greater than 90% to nearly quantitative, without generating any inorganic salt as byproduct, such as alkali sulfate or alkali halide, see Paras. [0029];[0051], meeting:
Within the molar range in instant application claim 6 and instant application claim 15; and,
The lack of impurities in instant application claim 7.
Hu ‘806 teaches the instant application claim 12 limitations of the mixed acidic solution of isethionic acid and ditaurine is used as an acid after the ammonolysis to produce the desired pH of the taurine solution of 5 to 6; while, alkali hydroxide is recycled as a catalyst for the ammonolysis reaction, see Paras. [0041]-[0049], meeting and within the pH range in instant application claim 12.
Hu ‘806 teaches the instant application claims 5 and 14 limitations of the process is a cyclic process where the amount of alkali hydroxide catalyst used is not limited, but is usually from 0.01 to 10 in molar ratio to the alkali isethionate, the alkali hydroxide is generated within the production unit by using bipolar membrane electrodialysis and the mother liquor containing the alkali isethionate is continuously processed, see Paras. [0042]-[0049]; therefore, the alkali hydroxide catalyst produced by bipolar membrane electrodialysis is from 15% to 35% of a molar amount of the alkali isethionate in the mother liquor solution, meeting and within the range in instant application claim 5 and instant application claim 14.
Hu ‘806 does not specifically teach:
Passing the alkali taurinate solution through a bipolar membrane in step c) to
produce alkali taurinate in instant application claim 1;
Passing only part of the alkali taurinate solution through a bipolar membrane
in step c) in instant application claim 8; and,
The limitations of instant application claims 2, 3, and 9-11.
Hu ‘806 teaches “[t]aurine can be referred to as 2-aminoethanesulfonic acid and is one of the amino sulfonic acids found in the tissues of many animals”, see Para. [0003].
Casanova relating to an electrodialysis method for preparing an amino acid from
a salt of the amino acid in a two-compartment electrodialysis bipolar membrane and/or a three-compartment electrodialysis bipolar membrane, see Paras. [0002];[0004];[0007];[0116], Fig. 4.
Casanova teaches the instant application claims 1, 2, 3, 9, and 10 limitations of feeding a solution of an amino acid alkaline salt into a two-compartment electrodialysis bipolar membrane resulting in a product amino acid alkali salt and an alkyl hydroxide, see Fig. 4; Paras. [0053];[0110]-[0114], and feeding a solution of an amino acid alkaline salt and alkali hydroxide into a three-compartment electrodialysis bipolar membrane resulting in a product amino acid, amino acid alkali salt and alkyl hydroxide, see Fig. 4; Paras. [0053];[0110]-[0114], meeting the bipolar membrane production passing in instant application claim 1, and configuration in instant application claim 2, in instant application claim 3, in instant application claim 9, and in instant application claim 10.
Casanova teaches the instant application claims 8 and 11 limitations of the amount of the feed salt stream introduced into a bipolar membrane separator may be a portion of 50% or less of the initial feed salt stream first introduced, see Para. [0116]; Claims 52 and 60, and some of the product acid stream is recirculated to the bipolar membranes, see Paras. [0143]-[0145], Figs. 4 and 17, as evidenced by Kopko, which is in the field of processing fluids, a portion of a separated feed stream is “approximately 5 to 20 percent” of the initial feed stream, see Abstract, Para. [0032], Fig. 2, meeting:
The bipolar membrane production partial passing in instant application claim 8; and,
Within the range of the portion passing through the bipolar membrane in instant application claim 11.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Hu ‘806 to adjust the amount of the process flow and/or split the process flow to the bipolar membrane, see MPEP 2144.04 IV.C., VI.C., and 2144.05, and to use any amino acid salt as the salt feed to the bipolar membranes, as taught by Casanova, such as taurine, with a reasonable predictability of success for the purpose of improved production of an amino acid from a salt of the amino acid, wherein the process results in commercially acceptable current efficiencies, commercially acceptable yields of the amino acid, the economic recycle of valuable products, and the control of the pH throughout the membranes allowing for more flexibility in the type of membrane used and overall membrane longevity, see Casanova, Paras. [0006];[0116]-[0117].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and both Hu ‘806 and Casanova teach bipolar membrane separation of amino acid, amino acid salt, and alkali hydroxide, a person of ordinary skill in the art has good reason to produce an amino acid from its salt by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of improving the production of an amino acid from a salt of the amino acid, wherein the process results in commercially acceptable current efficiencies, commercially acceptable yields of the amino acid, the economic recycle of valuable products, and the control of the pH throughout the membranes allowing for more flexibility in the type of membrane used and overall membrane longevity, see Casanova, Paras. [0006];[0116]-[0117] and MPEP 2141.
“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, the starting isethionate or taurine salt feed into the bipolar membrane of Hu ‘806 is substantially the same as the starting isethionate or taurine salt feed into the bipolar membrane of the instant claims; therefore, the resultant streams after the bipolar membrane passage of Hu ‘806 will inherently also be the same as the instantly claimed resultant taurine, alkali taurinate, and alkali hydroxide streams after the bipolar membrane passage.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Further, selection of a known material, such as a taurine as the product amino acid obtained from a salt thereof, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the percentage of the separated feed stream sent to a bipolar membrane or bypassing a bipolar membrane, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the concentration of the catalyst or the portion of the separated feed stream to be treated, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Claims 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US20180162806, published 14 June 2018, hereinafter Hu ‘806) in view of Casanova et al. (US20210229040, published 29 July 2021, hereinafter Casanova), as evidenced by Kopko (US20180347874, published 06 December 2018), as applied to claims 1-3, 5-12, 14, and 15 in the 35 USC 103 rejection above, in further view of Hu (US20150299113, published 22 October 2015, hereinafter Hu ‘113).
Hu ‘806 teaches the instant application claims 4 and 13 limitations of recycle of the alkali hydroxide catalysts after bipolar membrane separation and the amount of catalyst used is not limited, but is usually from 0.01 to 10 in molar ratio of the catalyst to alkali isethionate, see Paras. [0048]-[0049], meeting step c) in instant application claim 4 and in instant application claim 13.
Hu ‘806 does not teach the molar amount limitations in instant application claims 4 and 13.
Hu ‘113 relating to a cyclic process for the production of taurine from alkali isethionate, see Abstract, Fig. 1.
Hu ‘113 teaches the instant application claims 4 and 13 limitations of sodium hydroxide is added to the mother liquor comprised of 25-30% of sodium ditaurinate and tritaurinate, 5-7% of taurine, and 7-8% of sodium sulfate in an amount sufficient to turn taurine to sodium taurinate, sodium ditaurinate to disodium ditaurinate, and disodium tritaurinate to trisodium tritaurinate, where the molar amount of sodium hydroxide is equal to, or slightly more than, the molar amount of total taurinates in the solution, see Para. [0036], meeting and within the range of the molar amount of alkali hydroxide in instant application claim 4 and in instant application claim 13.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Hu ‘806 to adjust the amount of alkali hydroxide catalysts added, see MPEP 2144.05 I and as taught by Hu ‘113, with a reasonable predictability of success for the purpose of catalytically influencing the reaction by turning the taurinates to alkali taurinates, see Hu ‘113, Paras. [0027];[0036].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and both Hu ‘806 and Hu ‘113 teach alkali hydroxide catalytic reactions, a person of ordinary skill in the art has good reason to produce and amino acid from its salt by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of catalytically influencing the reaction by turning the taurinates to alkali taurinates, see Hu ‘113, Paras. [0027];[0036] and MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the concentration of the catalyst, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Relevant Art
Collier et al. (US20140158538, published 12 June 2014) relating to the bipolar membrane processing of fluid streams, see Abstract; Paras. [0056]-[0057];[0188]-[0189];[0308], teaches bypass circuits, conduits, and flow paths are “configured or operable to create an alternate fluid pathway to convey a fluid around one or more other components of a fluid circuit such that at least a portion of the fluid does not contact or pass through the one or more other components” and are controlled by a bypass regulator “such as valve that can determine the amount of fluid that can pass through a by-pass portion of a fluid circuit”, see Paras. [0068]-[0069].
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699