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 3/19/26. Claims 1-20 are pending. Claims 3-9 and 11-20 remain withdrawn. Claims 1-2 and 10 are under examination.
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)). Kumar teaches that methanol carbonylation is a common and conventional reaction process. Kumar et al. teaches that “one of the coproducts in methanol carbonylation is methyl acetate” (page 12, second and third paragraphs)
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. Kumar et al. teaches “Multistep processes, which use separate reactors for each reaction, cannot exploit the potential synergy of the three reactions. If these three reactions are conducted simultaneously, methanol synthesis drives forward the shift reaction and DME synthesis drives both the methanol and shift reactions. Consequently, a one-step process is more flexible and can operate under a wider range of conditions than a multistep process [2]. However, a single-step gas-phase process would still experience a large reactor exotherm from the high net heat of reaction.” (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.
In other words, since Kumar et al. teaches the benefits of a simultaneous one step process over a multistep process which is more flexible and can operate under a wider range of conditions than a multistep process, it would be obvious to perform Kumar et al.’s multistep process in the same catalytic vessel through a simultaneous one step process. Thus it would be obvious for one of ordinary skill in the art to perform the multistep process of the carbonylation of methanol and the hydrolysis of methyl acetate in a single catalytic vessel to produce acetic acid and dimethyl ether, because one step processes are more flexible and can operate under a wider range of conditions than a multistep process. Furthermore, one would be motivated to exploit the potential synergy of multistep reactions by performing the multistep process in a single catalytic vessel through a one step process, absent evidence to the contrary. Combining multiple reactions in a single vessel is an obvious optimization step and old in the art.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant’s argument that there is no motivation for the carbonylation of methanol but instead teaches the carbonylation of dimethyl ether.
The examiner does not agree with applicant’s argument. Kumar et al. clearly teaches both. Kumar teaches that methanol carbonylation is a common and main reaction process. Kumar et al. additionally teaches that “one of the coproducts in methanol carbonylation is methyl acetate” (page 12, second and third paragraphs)
It appears that applicant might be implying that Kumar et al. is teaching away from methanol carbonylation. However, “the prior art' s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” (MPEP 2143.01, 2100-139, section 1) Thus the mere existence of some particularly preferred embodiments in Kumar et al. does not constitute a teaching away for the well-known methanol carbonylation process of making methyl acetate.
The examiner acknowledges applicant’s argument for unexpected results of a decrease in capital and operating costs when the reactions are done in the same catalytic vessel. Applicants point to Figure 5 and paragraph 82, which are reproduced below:
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The examiner however does not find applicant’s Figure 5 and paragraph 82 convincing. The examiner contends that the applicant has not shown a true side by side comparison or concrete data for unexpected results. Applicant should provide comparative data and evidence that reflects their unexpected results.
Thus, the examiner contends that the applicant has not provided factual support of these advantages or shown comparative results with the closest prior art. These general statements are not sufficient to support an assertion of unexpected results, without factual data to support these statements. Thus the examiner interprets this statement as opinion and not as fact. “The arguments of counsel cannot take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).” (MPEP 716.01(c), 700-290)
The USPTO relies on the applicants to provide evidence of a nexus between rebuttal evidence and the claimed invention. As the Court of Appeals for the Federal Circuit (CAFC) stated in In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). This hard evidence would include tables or data and not mere argument. Also see Amicus Inc. v. Post-Tension of Texas Inc., 5 USPQ2d 1735 (1987); Ecolochem v. Mobile Water Technology, 8 USPQ2d 1065 (1988); Lantech Inc. v. Kaufman Co. of Ohio Inc., 12 USPQ2d, 1076 (1989).
Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success and solution of a long-felt need (see MPEP 716.01).
Furthermore, since Kumar et al. teaches the benefits of a simultaneous one step process over a multistep process which is more flexible and can operate under a wider range of conditions than a multistep process, it would be obvious to perform Kumar et al.’s multistep process in the same catalytic vessel through a simultaneous one step process. Thus it would be obvious for one of ordinary skill in the art to perform the multistep process of the carbonylation of methanol and the hydrolysis of methyl acetate in a single catalytic vessel to produce acetic acid and dimethyl ether, because one step processes are more flexible and can operate under a wider range of conditions than a multistep process. Furthermore, one would be motivated to exploit the potential synergy of multistep reactions by performing the multistep process in a single catalytic vessel through a one step process, absent evidence to the contrary. Combining multiple reactions in a single vessel is an obvious optimization step and old in the art.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 extension fee 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 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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