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 .
Detailed Action
This office action is in response to applicant’s communication filed on 4/9/23.
Claims 1-47 are pending in this application and are being examined in this Office Action.
Applicant's election with traverse of Group 1, claims 1-14, in the reply filed on 3/3/26 is acknowledged. The traversal is on the ground(s) that there is no serious burden on the examiner to examine all the claims. This is not found persuasive because the claims of the various groups are divergent in subject matter and are drawn to patentably distinct groups.
Claims 15-47 are withdrawn from consideration being drawn to the non-elected invention.
Applicant’s election of the following compound is acknowledged herewith:
methanol
Thus, additionally, claims 10-13 are hereby withdrawn from consideration being non-readable on the elected species. Accordingly, the claims have been searched solely to the extent of the species as shown herein. The search has not been extended to determine the patentability of the other species encompassed by the claims.
As a result, claims 1-9 and 14 are being examined in this Office Action.
Priority
The applicant claims benefit as follows:
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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, 3-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, 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.
Claims 1 and 6 are indefinite because of the claim language “highly pure” TETA. The specification doesn’t define the metes and bounds of what constitutes “highly pure”, such that one would know what is included and what is excluded in this high purity. The dependent claims are rejected as being dependent on a rejected claim. Appropriate correction is required.
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 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 of this title, 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 are rejected under 35 U.S.C. 103 as being unpatentable over Jonas et al. (US 20120029203, pub date Feb. 2, 2012).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Jonas et al. teaches the preparation of highly pure triethylenetetramine (TETA) diacid salts, such as TETA disuccinate, from the free TETA by reaction with at least 2 equivalents of acid, e.g. succinic acid, to form the TETA salt, e.g. TETA disuccinate salt. This TETA salt is precipitated as solid from solution by the addition of an alcohol. Suitable alcohols for precipitation of the TETA salt product include ethanol, methanol and isopropanol. (paragraphs 156-161 and E. Purification of Triethylenetetramine, paragraphs 270-271)
Further purification and crystal production for the TETA salt, e.g. TETA disuccinate, is performed by recrystallizations by slow evaporation of a supersaturated solution in a water/ethanol mixture over a period of 3 weeks to give the TETA salt, e.g. TETA disuccinate in high purity, e.g. from 80% to 100% purity. Crystal quality/purity can be enhanced by additional recrystallizations (paragraphs 165-166 and 270-275)
Jonas et al. exemplifies the recrystallization of a TETA salt, specifically exemplified by TETA dihydrochloride, by taking a suspension of the TETA salt in an ethanol solution, heating the TETA salt in the ethanol solution to 48 degree C for 1 hour until a clear solution was obtained and any solid dissolves. Then adding additional ethanol and seed crystals for recrystallization at 32 degree C. Stirring for 30 minutes at about 29 to 32 degree C until a suspension forms, then cooling to 3 degree C for hours, purging with nitrogen, filtering to give the recrystallized highly pure TETA salt solid, e.g. purity of 100% for TETA dihydrochloride salt. Jonas et al. also teaches this synthetic scheme can also be illustrated with TETA disuccinate. Jonas et al. teaches the equivalency of the TETA tetrahydrochloride, TETA dihydrochloride, TETA succinate and TETA disuccinate salts. (paragraphs 21, 73, 77-78, 272-274)
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Jonas et al. is deficient in the sense that it does not exemplify applicant’s methanol solvent for recrystallization. Instead Jonas et al. exemplifies the use of ethanol as the recrystallization solvent.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to substitute ethanol for methanol as the recrystallization solvent, especially since Jonas et al. teaches that methanol can be used in the purification of the TETA salt. Since Jonas et al. teaches that both methanol and ethanol can be used to precipitate the TETA salt from solution, it would be reasonable to expect that both methanol and ethanol can be used in an equivalent manner as purification and recrystallization solvents.
Note that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
The similarity of methanol and ethanol, as lower alcohol solvents, suggests the solvents have similar properties and utilities. Note that the prior art provides the same effect desired by the applicant, the utilization of lower alcohol solvents for the isolation and purification of TETA salts for the chemical industry.
With regard to the impurity of the initial TETA, since Jonas et al. does not teach the TETA is pure and further teaches the purification of TETA, it would be reasonable to expect that the initial unpurified TETA would read on applicant’s impure TETA. Furthermore, with regard to applicant’s impurity of TETA in claim 5, the initial purity or impurity of TETA would not be a patentable distinction for the preparation of pure TETA, especially since Jonas et al. teaches that crystal quality/purity can be enhanced by additional recrystallizations. Thus no matter the purity or impurity of the initial TETA, the claimed preparation of pure TETA would be merely dependent on the number of recrystallizations performed. Therefore, it would be obvious to utilize a range of impure TETA for preparation and purification of the TETA salt, since the purification of the TETA product salt is merely dependent on the number of recrystallizations performed.
With regard to the purity of the TETA salt product, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the purity of the TETA salt since pure forms of known compounds are obvious, especially since Jonas et al. already teaches very high purities, e.g. 100% purity for the TETA salt product.
When claiming a purer form of a known compound, it must be demonstrated that the purified material possess properties and utilities not possessed by the unpurified material. Ex parte Reed, 135 U.S.P.Q. 34, 36 (P.O.B.A. 1961), on reconsideration, Ex parte Reed, 135 U.S.P.Q. 105 (P.O.B.A. 1961).
It has been well established that the mere purity of compound, in itself, does not render a substance unobvious Ex Parte Gray (BPAI 1989) 10 PQ2D 1922.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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