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 .
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.
Claims 1-21 are 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 1 recites the limitation "a photoautoxidative organic reaction solution". The claim does not clearly define the compositions of “a photoautoxidative organic reaction solution”. Thus, it is not clear what this limitation is referred to. For the purpose of examination, the above limitation will be broadly interpreted as “a solution containing at least one organic material”.
Claim 1 recites the limitation "light" at the end of the claim. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required. For the purpose of examination, the above limitation will be interpreted as “the solar light”.
Claim 3 recites the limitation “CTF-Ph, CTF-Th, CTF-BPh”. It is not clear what each of the abbreviations/acronyms stands for. Appropriate correction/clarification is required.
Claim 10 recites the limitation "the aromatic carbonyl compound is additionally mixed…, and additional mixed aromatic compound". It is not clear what this limitation is regarded. Also, there is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required.
Due to the dependency to the parent claim, claims 2-21 are rejected.
Claim Rejections - 35 USC § 102/103
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.
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, 4, and 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Shiraishi et al (PG-PUB US 2020/0048089).
Regarding claim 1, Shiraishi et al disclose a method of producing hydrogen peroxide (ABSTRACT). The method comprises steps of
(1) dispersing a photocatalyst with a reaction system in a container, wherein the reaction system comprises water and organic solvents (i.e., mixing a photocatalyst and a solution containing at least one organic material, paragraphs [0050] –[0056] & [0075]);
(2) saturating the dispersed photocatalyst with oxygen in the container (i.e., forming an oxygen saturated mixed solution…, paragraphs [0051] – [0052] & [0075]); and
(3) generating hydrogen peroxide by irradiating the dispersed photocatalyst and saturated oxygen with sunlight (paragraphs [0057] – [0058]).
Shiraishi teach that the reaction system may further contain an organic solvent and sunlight can be used as irradiation light source (paragraphs [0052], [0056], & [0058]). As such, it is rendered obvious by Shiraishi teachings of different embodiments that can be combined, absent of evidence to the contrary.
Regarding claim 2, Shiraishi teaches to disperse the photocatalyst in the solution and the concentration of photocatalyst may be in a range of 0.1 to 10 mg/ml (paragraph [0051]). It has been held that the disclosure in the prior art of any value within the claimed range is an anticipation of that range. And a prima facie case of obviousness exists in the case where the claimed range overlaps range disclosed by the prior art. In re Wertheim 191 USPQ 90.
Regarding claim 4, Shiraishi teaches to disperse the organic polymer photocatalyst in the solution and that the potential of CB is in a range of -1 to 0 while the potential of VB is in a range of 0. To 2.5 (paragraphs [0037] & [0051]). It has been held that the disclosure in the prior art of any value within the claimed range is an anticipation of that range. And a prima facie case of obviousness exists in the case where the claimed range overlaps range disclosed by the prior art. In re Wertheim 191 USPQ 90.
Regarding claim 19, Shiraishi teaches that the wavelength is in a range of 400 – 800 nm (paragraph [0057]). It has been held that the disclosure in the prior art of any value within the claimed range is an anticipation of that range. And a prima facie case of obviousness exists in the case where the claimed range overlaps range disclosed by the prior art. In re Wertheim 191 USPQ 90.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi et al (PG-PUB US 2020/0048089) as applied to claim 1 above, and further in view of Chu et al (“Photosynthesis of hydrogen peroxide in water: a promising on-side strategy of eater remediation”, Environ. Sci.: Water Res. Technol., 2022, 8, 2819-2842).
Regarding claim 3, Shiraishi teaches to disperse the organic polymer photocatalyst in the solution (paragraph [0051]), but does not teach the photocatalyst as being CTF-Ph, CTF-Th, CTF-BPh or g-C3N4. However, Chu et al disclose a method of producing hydrogen peroxide (ABSTRACT). Chu teaches that hydrogen peroxide can be photosynthesized by sunlight irradiating photocatalyst mixed in water and oxygen, wherein the photocatalyst comprises g-C3N4 (Figures 1 & 9, pages 2820 & 2833). Chu further indicates that the g-C3N4 photocatalyst increase the selectivity and improve production of hydrogen peroxide (pages 2820 & 2825).
Therefore, it would be obvious for one having ordinary skill in the art to utilize g-C3N4 photocatalyst as suggested by Chu in order to increase the selectivity and improve production of hydrogen peroxide while using the method of Shiraishi.
Claims 5, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi et al (PG-PUB US 2020/0048089) as applied to claim 1 above, and further in view of Ziegler et al (PG-PUB US 2011/0189471).
Regarding claim 5, , Shiraishi teaches to disperse the photocatalyst in two or more organic solvents including at least alcohol such as methanol (paragraphs [0051] & [0056]), but does not teach aromatic alcohol. However, Ziegler et al disclose a photocatalyst composition (ABSTRACT). Ziegler teaches that the photocatalyst may be dispersed in organic solvent, such as methanol and/or benzyl alcohol (paragraph [0047]). The teaching of Ziegler shows that benzyl alcohol is an equivalent solvent for the photocatalyst. Therefore, it would be obvious for one having ordinary skill in the art to utilize benzyl alcohol as an organic solvent because it is an art-recognized equivalent.
Regarding claim 11, Ziegler teaches benzyl alcohol (paragraph [0047]).
Regarding claim 12, Ziegler teaches benzyl alcohol (paragraph [0047]).
Regarding claim 13, Shiraishi teaches various organic solvents (paragraph [0056]), which comprise the same organic solvents as disclosed in the instant specification of paragraph [0069], hence having the same or similar properties regarding oxygen solubility.
Regarding claims 14-15, Shiraishi teaches various organic solvents including hydrophobic organic solvents (paragraph [0056]).
Regarding claim 16, Shiraishi teaches that water is a reactant for producing hydrogen peroxide (paragraph [0050]). One having ordinary skill in the art would have realized to adjust the amount of water in order to achieve desired production of hydrogen peroxide.
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi et al (PG-PUB US 2020/0048089) and Ziegler et al (PG-PUB US 2011/0189471) as applied to claim 5 above, and further in view of Pavan et al (“Photooxidation of Benzyl alcohol with heterogeneous photocatalysis in the UV ranges: the complex interplay with the autoxidative reaction”, cited in IDS).
Regarding claims 6 and 9, Ziegler teaches benzyl alcohol (paragraph [0047]), but Shiraishi/Ziegler does not teach aromatic carbonyl compound in the reaction system. However, Pavan et al disclose a photocatalysis for autoxidative reaction (ABSTRACT). Pavan teaches that benzaldehyde can accelerate the autoxidative reaction and benzaldehyde reacts with light in the presence of photocatalyst for autocatalysis (page 2543).
Therefore, it would be obvious for one having ordinary skill in the art to include benzaldehyde within the reaction system as suggested by Pavan in order to accelerate the autoxidative reaction for autocatalysis while using the method of Shiraishi/Ziegler.
The limitation of “the aromatic alcohol is partially oxidized” is a result of operating the claimed method. Since the method of Shiraishi/Ziegler/Pavan comprises substantially the same/similar steps as claim, it must have the same outcome.
Regarding claim 7, Pavan teaches benzaldehyde (page 2543).
Regarding claim 8, Pavan teaches benzaldehyde (page 2543).
Regarding claim 10, Pavan teaches benzaldehyde for autocatalysis, which affects reactivity (page 2543). One having ordinary skill in the art would have realized to adjust the amount of benzaldehyde in order to achieve desired reactivity.
Claims 17-18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi et al (PG-PUB US 2020/0048089) as applied to claim 1 above.
Regarding claim 17, Shiraishi teaches to saturate the dispersed photocatalyst with oxygen in the container and that oxygen concentration affects the reactivity (paragraphs [0051] – [0052] & [0075]). Since the amount of oxygen in the reaction system depends upon the oxygen flow rate a, one having ordinary skill in the art would have realized to adjust the oxygen flow rate supplying to the dispersed photocatalyst in order to achieve desired oxygen concentration for the desired production.
Regarding claim 18, and 20-21, Shiraishi teaches to saturate the dispersed photocatalyst with oxygen in the container and that the time of light irradiation and light intensity can be suitably determined (paragraphs [0051] – [0052] & [0058]). Therefore, one having ordinary skill in the art would have realized to optimize the irradiation time and light intensity in order to achieve desired production.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-8, and 10-20 of co-pending Application No. 18/427570 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims a method comprising substantially the same steps as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-21 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIUYU TAI whose telephone number is (571)270-1855. The examiner can normally be reached Mon.-Fri. 9:00-5:00.
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/XIUYU TAI/Primary Examiner, Art Unit 1795
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