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 .
Non-Final Rejection
The Status of Claims:
Claims 1-16 are pending.
Claims 1-16 are rejected.
Claim 1 is objected.
DETAILED ACTION
1. Claims 1-16 are under consideration in this Office Action.
Priority
2. It is noted that this application is a 371 of PCT/IB2021/058294 09/13/2021 which has a foreign priority document, ITALY IT102020000022624 09/24/2020.
Drawings
3. The drawings filed on 3/20/23 are accepted by the examiner.
IDS
4. The IDS filed on 3/20/23 are reviewed by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the terms” Catalytic process” is recited. This expression is grammatically improper because an article “a” in front of the terms” Catalytic process” is needed. Appropriate correction is required.
In claim 1, the phrases” selected between ethylene oxide or propylene oxide”, “ selected between ethylene carbonate or propylene carbonate” are recited. These expressions can be award. The examiner recommends to change these expressions as followed: ” selected from ethylene oxide and propylene oxide”, “ selected from ethylene carbonate and propylene carbonate”. 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.
Claims 4, 8 and 16 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 pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation” the pressure ranges between 1 and 50 bar”, and the claim also recites “preferably between 1 and 10 bar” which is the narrower statement of the range/limitation.
In the present instance, claim 8 recites the broad recitation” continuously or discontinuously”, and the claim also recites “preferably continuously.” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The examiner recommends to put each of the narrowed limitations to the corresponding dependent claims.
Regarding claim 16, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
5. Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over McMullen (EP0047473) .
Determination of the scope and content of the prior art
McMullen discloses a catalytic process for converting an alkylene carbonate such as ethylene carbonate or propylene carbonate to the corresponding epoxide such as ethylene oxide or propylene oxide wherein a liquid phase comprising the alkylene carbonate and NaBr catalyst (see page 8 table 1) is heated at a temperature of about l00° C to. about 250° C to form a gaseous product mixture comprising said epoxide and carbon dioxide, the improvement for minimizing the formation of undesired aldehyde and/or ketone byproduct which comprises conducting the reaction of alkylene carbonate to epoxide at a pressure at 1 bar as in claim 4 (see page 8, table 1, ex.1) or below one atmosphere. (see page 9 , claim 1).
The current invention, however, differs from the prior art in that the claimed amount of the catalyst (moles of catalyst/ moles of ethylene carbonate) and the use of the modules(A), (B), and (C) in combination with CSTR reactor(s) and adsorption column, flat or filler columns, coiled tubular reactors, heat exchangers, a fluid bed reactor, extruder, powder compactor, granulator are unspecified in the prior art.
Ascertainment of the difference between the prior art and the claims
The difference between the instant application and the applied McMullen art is that the McMullen does not expressly teach the claimed amount of the catalyst (moles of catalyst/ moles of ethylene carbonate) and the use of the modules(A), (B), and (C) in combination with CSTR reactor(s) and adsorption column, flat or filler columns, coiled tubular reactors, heat exchangers, a fluid bed reactor, extruder, powder compactor, granulator.
Resolving the level of ordinary skill in the pertinent art.
Regarding the Claims 1-3, with respect to the lack of disclosing the amount of the catalyst in moles of catalyst/ moles of ethylene carbonate, the prior art does mention at least that the NaBr catalyst concentration is 0.066 moles/ liter (see page 8 ,table 1, example 1). Although the prior art does not exemplify the claimed range, the limitation of a process claim with respect to the amount of the catalyst does not impart patentability to the process when such a value is one of those which would be determined by one of ordinary skill in the field of producing allylene epoxide in achieving optimum condition for a high yield of the desired product. The catalyst in moles of catalyst/ moles of ethylene carbonate is well-understood by those of ordinary skill in the art to be a result-effective variable, especially when attempting to control the effective outcome by selecting the optimum range of the amount catalyst in moles of catalyst/ moles of ethylene carbonate. Therefore, it would have been obvious to the skilled artisan in the art to be motivated to control the optimum range of the amount of the catalyst in moles of catalyst/ moles of ethylene carbonate in order to achieve a high yield of the final product in the absence of an unexpected result. This is because the skilled artisan in the art would expect such a manipulation to be within the purview of the skilled artisan in the art.
Regarding the Claims 5-15, with respect to the lack of teaching the use of the modules(A), (B), and (C) in combination with CSTR reactor(s) and adsorption column, flat or filler columns, coiled tubular reactors, heat exchangers, a fluid bed reactor, extruder, powder compactor, granulator in the claimed process, the prior art is silent about them. However, they are directed to the mechanical expediencies in a relation to their corresponding physical arrangement for the epoxidation process. All apparatuses are well-known in the industrial chemical process.
So, if the skilled artisan in the art had desired to produce ethylene oxide or propylene oxide efficiently, it would have been obvious to the skilled artisan in the art to be motivated to use the well-known apparatuses in a well-organized manner.
This is because such a manipulation would expect to be within the purview of the skilled artisan in the art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
McMullen expressly discloses the catalytic process for converting ethylene carbonate or propylene carbonate to ethylene oxide or propylene oxide by reacting either ethylene carbonate or propylene carbonate in the presence of NaBr catalyst at a pressure of 1 bar. Although the prior art does not exemplify the claimed amount of the catalyst range in moles of catalyst/ moles of ethylene carbonate, the limitation of a process claim with respect to the amount of the catalyst does not impart patentability to the process when such a value is one of those which would be determined by one of ordinary skill in the field of producing allylene epoxide in achieving optimum condition for a high yield of the desired product. The catalyst in moles of catalyst/ moles of ethylene carbonate is well-understood by those of ordinary skill in the art to be a result-effective variable, especially when attempting to control the effective outcome by selecting the optimum range of the amount catalyst in moles of catalyst/ moles of ethylene carbonate.
So, it would have been obvious to the skilled artisan in the art before the effective filing date of the claimed invention to be motivated to control the optimum range of the amount of the catalyst in moles of catalyst/ moles of ethylene carbonate in order to achieve a high yield of the final product. This is because the skilled artisan in the art would expect such a manipulation to be within the purview of the skilled artisan in the art.
Conclusion
Claims 1-16 are rejected.
Claim 1 is objected.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 9/29/2025