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
Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group 1, claim(s) 1-18, drawn to a process for converting syngas to acrylic acid
Group 2, claim(s) 19-20, drawn to process for converting a carbonaceous material into acetic acid.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The compounds in the groups clearly lack a special technical feature being obvious over Kumar et al. (Valorizing Industrially Produced CO2: A reliable and cost effective solution for carbon capture and its conversion to marketable products., Enerkem (Non-confidential report) May 20, 2016: pages 1-16), in applicant’s IDS filed 5/19/23. Please see the 103 rejection below.
Species Election
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
The particular reaction step. See the reaction steps in claim 1. Also see the reaction steps in claims 7 and 14 versus claim 11-13 versus claims 15-18.
Thus the examiner requests the applicant select an initial reaction step for search purposes.
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: 1
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Demian Barbas on 10/29/2025 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-18 and reaction step d) in claim 1 as the elected species. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 3-9 and 11-18 are withdrawn and being non-readable on the elected species. Claims 1-2 and 10 are being examined in this office action.
Priority
The applicant claims benefit as follows:
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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 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. 1 03(a) are summarized as follows:
Applicant Claims
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue, and resolving the level of ordinary skill in the pertinent art.
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 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kumar et al. (Valorizing Industrially Produced CO2: A reliable and cost effective solution for carbon capture and its conversion to marketable products., Enerkem (Non-confidential report) May 20, 2016: pages 1-16), in applicant’s IDS filed 5/19/23.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Kumar et al. teaches a novel aldol condensation catalyst for direct one-step acrylic acid synthesis from acetic acid and formaldehyde (see applicant’s limitation in claim 1 step d)) and teaches hydrolysis of methyl acetate to acetic acid (see applicant’s limitation in claim 1 step c)). (page 3, second paragraph, last sentence, last paragraph, 3rd sentence; page 6, see “(Task 3)”; page 14, last paragraph to page 15, full page)
Kumar et al. teaches the synthesis of dimethyl ether (DME) from syngas (H2 and CO). The syngas reacts to produce methanol (see applicant’s limitation in claim 1 step a)). Then the methanol is is dehydrated to form dimethyl ether (DME) (see applicant’s limitation in claim 1 “carbonylation of methanol” “producing dimethyl ether (DME)). (page 13, first 2 paragraphs, see Reaction 2 and Reaction 3; page 8, first paragraph, 3rd line)
Kumar et al. teaches methanol carbonylation produces methyl acetate (MA), which is the main product when methanol is in excess and acid catalysts are present (see applicant’s limitation in claim 1 step b)). (page 12, last paragraph, first sentence)
Kumar et al. teaches “all the experiments were completed in a fixed bed plug flow reactor”, “conventional gas-phase reactors must be run at low per-pass conversions to maintain reactor temperature”, “the conversion of acetic acid would be less in a single pass through the reactor, but the unreacted acetic acid can be separated from the product stream and recycled back into the reactor” and the procedures can be performed in air atmosphere. (page 13, paragraph after “(Reaction 3)”, 3rd sentence; page 15, second to the last paragraph, first line; page 16, first paragraph, last sentence; page 14, first paragraph, line 15)
Kumar et al. teaches a direct one step dimethyl ether synthesis using syngas, a direct one-step acrylic acid synthesis from acetic acid and formaldehyde in an aldol condensation and the benefits of a one step process over a multistep process which is more flexible and can operate under a wider range of conditions than a multistep process. (page 3, last paragraph, 4th line; page 13, 3rd to the last paragraph; page 16, last paragraphs, lines 5-6)
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Kumar et al. is deficient in the sense that it does not teach applicant’s limitation in claim 1 for a single catalytic vessel to produce acetic acid and DME from methanol and methyl acetate.
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 utilize a single catalytic vessel for both reactions to produce acetic acid and DME from methanol and methyl acetate, since using the same vessel for both reactions streamlines the production steps and lowers expense for multiple reaction vessels. This is especially the case, since Kumar et al. already teaches the benefits of a one step process over a multistep process which is more flexible and can operate under a wider range of conditions than a multistep process.
Conclusion
No claim is 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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