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 .
Status of the Claims
The amendment filed on 12/08/2025 has been entered. Claims 1 and 4 have been amended and claim 3 has been canceled. Thus claims 1-2 and 4-17 are currently pending and are under examination.
Withdrawn Objections and Rejections
The minor informality of claim 1 has been corrected and thus the objection to the claim has been withdrawn.
Claim 1 has been amended to recite “the temperature of the fixed catalytic bed T1 is increased by a value of between 50C and 45°C.”. Neither Patent number EP0053657B1 (EP’657; cited in IDS 04/26/2023) nor Patent application publication number US2016/0002518A1 (US’518; cited in IDS 04/26/2023) anticipate claim 1 as currently amended. As such, the 102(a)(1) rejections of the record have been withdrawn.
Claim Objections
Claims 11 12-17 stand objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 (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 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, 4-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Patent number EP0053657B1 (EP’657; cited in IDS 04/26/2023).
Regarding claims 1-2, EP’657 exemplifies in Examples 2-3 a process for the production of trifluoroethylene in a reactor equipped with a fixed catalytic bed comprising a catalyst, said process comprising a stage a) of reaction of chlorotrifluoroethylene with hydrogen in the presence of the catalyst and in the gas phase in order to produce a stream comprising trifluoroethylene; said stage a) being carried out at a temperature of the fixed catalytic bed T1 of 200° C; and during stage a), the temperature of the fixed catalytic bed T1 is increased to 250° C (Table 1 and footnote) or to 300° C (Table 3 at 96 hr).
Regarding claim 6, EP’657 is silent that during the reaction of stage a), at a given moment t, the longitudinal temperature difference between the inlet of the fixed catalytic bed and the outlet of the fixed catalytic bed is less than 20° C. However, since the reference teaches every limitation of claim 1 in obtaining trifluoroethylene, there is a prima facie case of anticipation for the longitudinal temperature difference between the inlet of the fixed catalytic bed and the outlet of the fixed catalytic bed to be less than 20° C in EP’657. See MPEP § 2112.01.
Regarding claims 9-10, Example 2 ([0022]) of EP’657 teaches that prior to the reaction, the catalyst is prepared using Example 1, in which the last step for the preparation of the catalyst is treating the dried catalyst with hydrogen at 200° C to convert the PdCI2 to elemental palladium ([0020]). Example 2 then describes in [0022] that hydrogen and chlorotrifluoroethylene were then passed into the reactor and that during the first 22 hours of operation the furnace was kept at 200° C. Thus, it is understood that the temperature of 200° C does not change from the drying step to the step where hydrogen and chlorotrifluoroethylene are passed to the reactor. In other words, hydrogen and chlorotrifluoroethylene are introduced into the reactor at a temperature of 200° C.
Regarding claims 1, and 4-5, Example 2 of the reference increases the temperature from 200° C to 250° C and the latter temperature is maintained for 5.5 hrs. The increase of the temperature in EP’657 is by a value 50° C, but fails to teach that the increase is by a value of between 5° C and 45° C. However, the values in the claim and in EP’657 are merely close that a prima facie case of obviousness exists absent any showing of unexpected results or criticality. See MPEP § 2144.05.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a process for the production of trifluoroethylene in a reactor equipped with a fixed catalytic bed comprising a catalyst, said process comprising a stage a) of reaction of chlorotrifluoroethylene with hydrogen in the presence of the catalyst and in the gas phase in order to produce a stream comprising trifluoroethylene; said stage a) being carried out at a temperature of the fixed catalytic bed T1 of between 50° C. and 250° C.; wherein, during stage a), the temperature of the fixed catalytic bed T1 is increased provided that it does not exceed 300° C; and during stage a), the temperature of the fixed catalytic bed T1 is increased by a value of between 5° C. and 45° C. in view of the teachings of EP’657.
Response to Arguments
Applicant argues the obviousness analysis by discussing Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) cited in MPEP § 2144.05 and how the art’s rationale for obviousness set forth in the Office Action is distinct from the art’s rationale discussed in the Titanium Metals.
The Examiner disagrees. Firstly, the examiner notes that even though the obviousness of the claimed invention is based on MPEP § 2144.05, nowhere in this rationale relied on the Titanium Metals discussed by the MPEP. Furthermore, MPEP § 2144.05 cites more examples other than Titanium Metals which support the rationale “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”. For example, see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%). The art’s temperature and claimed temperature discussed in In re Aller appear to be merely close, and the court held the claimed temperature to be prima facie obvious over that of the reference.
As such, the examiner maintains that absent any evidence to the contrary, the claimed increase of the temperature of the fixed bed T1 by a value of between 5° C and 45° C is prima facie obvious over that of EP’657 that increases the temperature by a value 50° C.
Claims 7-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Patent number EP0053657B1 (EP’657; cited in IDS 04/26/2023) as applied to claims 1-2, 4-6 and 9-10 above, and further in view of Patent application publication number US20180251414A1 (US’414; cited in PTO-892 09/11/2025).
The teachings of EP’657 have been set forth above.
Regarding claims 7-8, EP’657 further teaches that the reaction is conducted in the presence of a catalyst comprising a supported platinum-group metal, such as ruthenium, rhodium, palladium, osmium, iridium or platinum. The support is an alkali magnesium fluoride such as sodium or potassium magnesium fluoride. However, the reference fails to teach that the support in the catalyst is based on aluminum or on carbon.
Regarding claim 11, EP’657 fails to teach the reaction pressure as instantly claimed.
The deficiencies are however cured by US’414.
Regarding claims 7-8, US’414 teaches the use of a catalyst comprising palladium and α-alumina in the process for hydrogenating α-alumina to obtain trifluoroethylene ([0039] and [0058]).
As such, using α-alumina carrier of US’414 in the catalyst and process of EP’657, a skilled artisan would still have a reasonable expectation of success in obtaining nothing more than the predictable product trifluoroethylene.
In accordance to MPEP 2143, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. In this case, at least prong (B) simple substitution of one known element for another to obtain predictable results applies.
Regarding claim 11, US’414 also teaches that the hydrogenation reaction is generally conducted at a pressure of from 0.01 to 5 MPaG (from 0.1 to 50 bar). As such, a skilled artisan would have been motivated to use the hydrogenation pressure taught by US’414 in the reaction process of EP’657 and would have a reasonable expectation of success in obtaining trifluoroethylene.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct a process for the production of trifluoroethylene in a reactor equipped with a fixed catalytic bed comprising a catalyst, said process comprising a stage a) of reaction of chlorotrifluoroethylene with hydrogen in the presence of the catalyst and in the gas phase in order to produce a stream comprising trifluoroethylene; said stage a) being carried out at a temperature of the fixed catalytic bed T1 of between 50° C. and 250° C.; wherein, during stage a), the temperature of the fixed catalytic bed T1 is increased provided that it does not exceed 300° C; and during stage a), the temperature of the fixed catalytic bed T1 is increased by a value of between 5° C. and 45° C., wherein said catalyst is a catalyst based on a metal from columns 8 to 10 of the Periodic Table of the Elements, deposited on a support based on aluminum or on carbon and wherein stage a) is carried out at a pressure of less than 2 bar in view of the teachings of EP’657 and US’414.
Allowable Subject Matter
The subject matter of claims 12-17 is free of prior art references. The closest prior art references have been set forth above but fail to teach or suggest the limitations of claims 12-17.
Conclusion
Claims 1-2 and 4-11 are rejected and no claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692