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 .
Applicant's election with traverse of Group III, claims 19-21 in the reply filed on 02/13/2026 is acknowledged. The traversal is on the ground(s) that a search for all the claims would not impose a serious burden on the Examiner. In fact, the International Searching Authority has searched all the claims. For the reasons presented above, Applicant submits that the Examiner has failed to meet the burden necessary in order to sustain the requirement for restriction. Applicant therefore requests that the requirement for restriction be withdrawn.
This is not found persuasive because examination is not limited to search. In addition to the search, much of the examination is devoted to determining patentability of claims. Said determination requires the formulation of rejection and responding to applicant’s arguments with regard to the same. The additional search and the determination of patentability for multiple, patentability distinct inventions and / or species would place serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is a concise explanation of the invention, not the claim limitations.. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 19 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.
Claim 19 recites the limitation “ allow degradation of bisphenol A” , therefore, it is unclear what would “allow” the degradation of bisphenol A. A machine, a reaction, a temperature, a pH, or any other means.
All the claims dependent of claim 19 are also rejected.
Claims 20-21 limitation “an apparatus that carries out degradation of bisphenol A" has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because apparatus that carries out degradation” is ambiguous regarding whether that structure or material is sufficient for performing the claimed function; The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 19-21 are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Blaschke et al. (US 2008/0108851 A1) “Blaschke” herein)
Claim 19.
Blaschke discloses, as best understood based on the indefiniteness above, a method for producing bisphenol A, the method comprising: [0073]
(i) subjecting acetone and phenol to dehydration condensation in the presence of an acid catalyst to obtain a reaction liquid B containing bisphenol A; [0014, 0019, 0043, 0095]
(ii) distilling off unreacted acetone and water from the reaction liquid B to obtain a concentrated liquid C; [0018, 0044-0048]
(iii) subjecting the concentrated liquid C to crystallization to obtain a slurry liquid, [0048-0049] and subjecting the slurry liquid to solid-liquid separation to obtain a mother liquor D and a cake d; [0049-0052]
(iv) purifying the cake d to obtain bisphenol A; [0053-0054]
(v) circulating part of the mother liquor D to supply to the subjecting (i) ; [0055, 0066]
(vi) obtaining a solution H1 or a solution H2 from a crude solution A and part of the mother liquor D, wherein the crude solution A is obtained by degrading a polycarbonate resin in a solvent to obtain a reaction liquid a1 containing bisphenol A and then distilling off the solvent from the obtained reaction liquid a1,
a bisphenol A content of the crude solution A is less than 90% by mass, [0055, 0066]
the solution H1 is a solution containing bisphenol A obtained by degrading bisphenol A contained in the crude solution A and the mother liquor D into phenol and isopropenylphenol under conditions that allow degradation of bisphenol A and then rebonding phenol and isopropenylphenol, [0043, 0055, 0066, 0077-0078] and
the solution H2 is a solution containing phenol obtained by degrading bisphenol A contained in the crude solution A and the mother liquor D into phenol and acetone under conditions that allow degradation of bisphenol A; [0043, 0055, 0066, 0077-0078] and
(vii) supplying the solution H1 or the solution H2 to the subjecting (i) and/or the -distilling (ii). [0055, 0066, 0070-0071, 0077-0078]
Or a different interpretation of Blaschke
Blaschke discloses, as best understood based on the indefiniteness above, a method for producing bisphenol A, the method comprising: [0073]
(i) subjecting acetone and phenol to dehydration condensation in the presence of an acid catalyst to obtain a reaction liquid B containing bisphenol A; [0014, 0019, 0043, 0095]
(ii) distilling off unreacted acetone and water from the reaction liquid B to obtain a concentrated liquid C; [0018, 0044-0048]
(iii) subjecting the concentrated liquid C to crystallization to obtain a slurry liquid, [0048-0049] and subjecting the slurry liquid to solid-liquid separation to obtain a mother liquor D and a cake d; [0049-0052]
(iv) purifying the cake d to obtain bisphenol A; [0053-0054]
(v) circulating part of the mother liquor D to supply to the subjecting (i) ; [0055, 0066]
(vi) obtaining a solution H1 or a solution H2 from a crude solution A and part of the mother liquor D, wherein the crude solution A is obtained by degrading a polycarbonate resin in a solvent to obtain a reaction liquid a1 containing bisphenol A and then distilling off the solvent from the obtained reaction liquid a1,
a bisphenol A content of the crude solution A is less than 90% by mass, [0055, 0066]
the solution H1 is a solution containing bisphenol A obtained by degrading bisphenol A contained in the crude solution A and the mother liquor D into phenol and isopropenylphenol under conditions that allow degradation of bisphenol A and then rebonding phenol and isopropenylphenol, [0043, 0055, 0066, 0077-0078] and
the solution H2 is a solution containing phenol obtained by degrading bisphenol A contained in the crude solution A and the mother liquor D into phenol and acetone under conditions that allow degradation of bisphenol A; [0043, 0055, 0066, 0077-0078] and
(vii) supplying the solution H1 or the solution H2 to the subjecting (i) and/or the -distilling (ii). [0055, 0066, 0070-0071, 0077-0078]
Blaschke does not explicitly disclose the terminology as recited within the claimed invention: subjecting acetone and phenol to dehydration condensation in the presence of an acid catalyst. However, Blaschke discloses that Reaction of acetone and phenol to give p,p'-BPA and isomers, with the formation of water, in adiabatic fixed bed reactors in the presence of a co-catalyst [0095] which serves as the subjecting acetone and phenol to dehydration condensation in the presence of an acid catalyst. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Claim 20
Blaschke discloses the method according to claim 19, wherein the crude solution A and part of the mother liquor D are mixed, and a mixed liquid G obtained is supplied to an apparatus that carries out degradation of bisphenol A in the obtaining (vi). [0070-0071, 0094-107]
Claim 21
Blaschke discloses the method according to claim 19, wherein the crude solution A and part of the mother liquor D are each supplied to an apparatus that carries out degradation of bisphenol A in the obtaining (vi), and the degradation is carried out while a mixed liquid G as a mixture of the crude solution A and part of the mother liquor D is prepared in the apparatus. [0070, 0071, 0094-0107]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Evitt et al. (US 2009/0221858 A1) Bisphenol-A Plant Yield Enhancement teaches An improved process is provided for producing bisphenol-A (BPA) comprising steps of (1) contacting benzene and a C.sub.3 alkylating agent to produce an alkylation effluent comprising cumene; (2) oxidizing the cumene to produce the corresponding hydroperoxide; (3) cleaving the hydroperoxide to produce product comprising phenol and acetone; (4) reacting acetone with phenol to form a reaction product stream comprising crude bisphenol-A product; (5) distilling the reaction product stream, while sending downstream to a BPA-phenol adduct crystallization and purification step, the resulting concentrated BPA phenolic feed stream; (6) producing BPA-phenol adduct crystals by crystallization of the concentrated BPA phenolic feed stream; (7) separating the BPA-phenol adduct crystals by solid-liquid separation; (8) cracking a stream comprising at least a portion of said final mother liquor to recover a product; and (9) recovering and feeding the phenol product of step (8) to step (4) and/or step (7), Gammil et al. (US 5874644 A) Method And System For Bisphenol A Production Using Controlled Turbulence teaches Methods/systems for making a relatively high-purity bisphenol A product from phenol and acetone. Controlled turbulence is used to form bisphenol A adduct solids having improved physical properties. Phenol is separated from the bisphenol A product while inhibiting decomposition of bisphenol A, and Hirano et al. (US 6686508 B2) Provided is a production process for high quality bisphenol A which is reduced in a sulfonic acid-containing heavy matter contained in the product and which is improved in a hue. In an after-treating step for a reaction mixed solution obtained by condensing excess phenol with acetone in the presence of an acid catalyst, a filtering step by a filter is provided at least in one step between a step for dissolving an adduct of bisphenol A and phenol by using a phenol-containing solution and a step for crystallizing and separating the above adduct from this solution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 03/09/2026