DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 21 June 2023, in the matter of Application No. 18/258,754. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-13 and 15-16 are pending.
Claims 1-13 have been amended.
Claim 14 has been cancelled.
Claims 15-16 have been newly added.
Thus, claims 1-13 and 15-16 represent all claims currently under consideration.
Priority
Acknowledgment is made of Applicants’ claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the present application filed 21 June 2023 and in the parent Application No. PCT/BR2021/050517, filed on 25 November 2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant claims foreign priority to Application No. BR10 2020 026453 2, filed on 22 December 2020.
Domestic Priority data as claimed by Applicant:
This application is a 371 of PCT/BR2021/050517 (12/22/2020)
Foreign Applications:
BRAZIL 10 2020 026453 2 (12/05/2019)
Information Disclosure Statement (IDS)
The information disclosure statement (IDS) submitted on 27 August 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the Examiner.
Claim Interpretation
The term “silica catalyst” as recited in claim 1 will be interpreted in a manner consistent with the written description as a catalyst without metals (Specification; paragraphs [0002] and [0032]).
The term “green ethers” as recited in claims 7-8 and 10-11 will be interpreted in a manner consistent with the written description as compounds such as diglycerol, cyclic ethers and/or 1-hydroxypropanone (Specification; paragraph [0039]).
The term “components remaining from the synthesis of biodiesel” as recited in claim 9 will be interpreted in a manner consistent with the written description as impurities in the glycerin such as sodium chloride and methanol that will be considered as the components capable of performing the recited active step, in a manner consistent with the written description (Specification; paragraph [0057]).
Specification
The disclosure is objected to because of the following informalities:
The Specification makes reference to Figure 6a (paragraph [0055] and Figure 6b (paragraph [0056]), yet the attached drawings are labeled as Figure 6e and Figure 6f, respectively, and this discrepancy renders the written description unclear as written. The Examiner notes that amending the figure numberings in the Specification to conform to the corresponding figures in the Drawings would adequately address this ambiguity.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 3, “…Homogenizing…” should read “…homogenizing…”
In lines 3-4, “…in peroxide solution…” should read “…in a peroxide solution…”
In line 5, “…Pumping…” should read “…pumping…”
In line 6, “…Leaving…” should read “…leaving…”
In line 7, “…Collecting…” should read “…collecting…”
Claim 2 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
In line 3, “…m2 g-1…” should read “…m2 g-1…”
In line 3, “…and presence of…” should read “…and the presence of…”
Claim 3 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
In line 3, “…H2O2…” should read “…H2O2…”
Claim 5 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
Claim 6 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
In lines 3-4, “…using a continuous flow reactor, also being used batch or semi-batch reactors…” should read “…using a continuous flow reactor and batch or semi-batch reactors…”
Claim 7 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
In line 3, “…100 at 250 ºC…” should read “…100 to 250 ºC …”
Claim 8 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
Claim 10 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
Claim 11 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
Claim 12 is objected to because of the following informalities:
In line 2, “…wherein it adds sodium salts…” should read “…wherein the method comprises the addition of sodium salts…”
Claim 13 is objected to because of the following informalities:
In line 2, “…wherein it…” should read “…wherein the method…”
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 1-13 and 15-16 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 residual glycerin…” in line 3. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. The Examiner notes that adequately addressing this ambiguity would ameliorate this claim rejection.
Regarding claims 2-13 and 15-16, these dependent claims do not resolve the indefiniteness of claim 1 described above.
Claim 2 recites “…a pure silica catalyst…” in line 2. However, the relationship between the “silica catalyst” of claim 2 and the silica catalyst recited in claim 1 on which the instant claim depends in unclear, and this ambiguity renders the instant claim indefinite. Further clarification is required. The Examiner notes that adequately addressing this ambiguity would ameliorate this claim rejection.
Claim 2 recites “…a high specific surface area (> 1000 m2 g-1)…” in lines 2-3. However, it is unclear whether or not the recited range is a required limitation because it is recited in parentheses, thus rendering the instant claim indefinite. Further clarification is required. The Examiner notes that adequately addressing this ambiguity would ameliorate this claim rejection.
Claim 2 recites “…the process of heterogeneous catalysis…” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…the process of heterogeneous catalysis…” will be read as “…a process of heterogeneous catalysis…”
Claim 3 recites “…the process of homogeneous catalysis…” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…the process homogeneous catalysis…” will be read as “…a process of homogeneous catalysis…”
Claim 4 recites “…the residual glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Claim 4 recites “…the process of obtaining biodiesel…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…the process of obtaining biodiesel…” will be read as “…a process of obtaining biodiesel…”
Claim 5 recites “…the conversion of residual glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Regarding claim 6, this dependent claim does not resolve the indefiniteness of claim 5 described above.
Claim 6 recites “…using a continuous flow reactor, also being used batch or semi-batch reactors…” in lines 3-4. However, it is unclear as written whether or not two types of reactors are being used, and if so it is unclear how they are being used (i.e., in parallel or in series, which reactor(s) contain catalyst, etc.), and this ambiguity renders the instant claim indefinite. Further clarification is required. The Examiner notes that adequately addressing this ambiguity would ameliorate this claim rejection. For the purposes of examination, “…using a continuous flow reactor, also being used batch or semi-batch reactors…” will be read as “…using a continuous flow reactor, a batch reactor, or a semi-batch reactor…” in a manner consistent with the written description (c.f., Specification; paragraph [0045], and Fig. 2).
Claim 6 recites “…the conversion of residual glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Claim 7 recites “…the conversion of residual glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Regarding claim 8, this dependent claim does not resolve the indefiniteness of claim 7 described above.
Claim 8 recites “…the conversion of residual glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Claim 9 recites “…the conversion of residual glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Claim 9 recites the phrase “…homogeneous catalysis occurs by the action of components remaining from the synthesis of biodiesel…” in lines 2-3. However, it is unclear what components are included or not included in the recited limitation, and this ambiguity renders the instant claim indefinite. For the purposes of examination, impurities in the glycerin such as sodium chloride and methanol will be considered as the components capable of performing the recited active step, in a manner consistent with the written description (Specification; paragraph [0057]). The Examiner notes that adequately addressing this ambiguity would ameliorate this claim rejection.
Claim 10 recites “…the conversion of commercial glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. Furthermore, the method of claim 1 on which the instant claim depends recites that “residual glycerin” is used, which is inconsistent with the limitation “commercial glycerin” recited in the instant claim. Further clarification is required. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Regarding claim 11, this dependent claim does not resolve the indefiniteness of claim 10 described above.
Claim 11 recites “…the conversion of commercial glycerin…” in line 2. There is insufficient antecedent basis for this limitation in the claim. Furthermore, the method of claim 1 on which the instant claim depends recites that “residual glycerin” is used, which is inconsistent with the limitation “commercial glycerin” recited in the instant claim. Further clarification is required. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Claim 12 recites “…commercial glycerin…” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Furthermore, the method of claim 1 on which the instant claim depends recites that “residual glycerin” is used, which is inconsistent with the limitation “commercial glycerin” recited in the instant claim. Further clarification is required. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection.
Regarding claim 13, this dependent claim does not resolve the indefiniteness of claim 12 described above.
Claim 13 recites “The method of claim 12, wherein it employs inorganic or organic salts.” However, it is unclear as written which step of the method the inorganic or organic salts are employed because it is not clear whether the recited limitation “inorganic or organic salt” is intended to refer to the “sodium salts” of claim 12 on which the instant claim depends, and this ambiguity renders the instant claim indefinite. Further clarification is required. The Examiner notes that amending the claim language, for example if “The method of claim 12, wherein it employs inorganic or organic salts.” were to read “The method of claim 12, wherein the sodium salts are inorganic or organic salts.” would ameliorate this claim rejection.
Regarding claims 15-16, these dependent claims do not resolve the indefiniteness of claim 13 described above.
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.
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 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.
Claims 1-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Chagas et al. (Chem. Eng. J. 2019, 369, 1102-1108; IDS of 08-27-2024; published 03-13-2019; hereinafter “Chagas”), in view of Gavrilescu et al. (Acta Biotechnol. 1995, 15, 3-26; hereinafter “Gavrilescu”) and Zhang et al. (US 2013/0035507 A1; hereinafter “Zhang”).
Regarding claim 1, Chagas teaches metal-free bifunctional silica as a catalyst for the conversion of waste glycerol from biodiesel for the sustainable production of formic acid (Chagas; Title; Abstract). Chagas further teachings that there is a growing interest in the glycerol oxidation for formic acid production due to its considerable efficiency as a hydrogen carrier and direct application in fuel cells (Chagas; page 1102, Col. 2, paragraph 1). Thus, the skilled artisan would recognize that the catalytic conversion of glycerol to formic acid would result in the production of a high added value product, in a manner consistent with the instant claim.
Chagas further teaches that residual glycerol contains methanol and dissolved salts such as NaCl, and the residual glycerol used in the disclosed method was found to contain NaCl and water (Chagas; page 1102, Col. 1, paragraph 1; page 1103; Col. 1, paragraph 3).
In one catalytic test, Chagas teaches continuous flow reactions carried out in a packed bed reactor (PBR) filled with mesh silicon carbide and catalyst, wherein the feeding consisted of a mixture of 1/1 residual glycerol and hydrogen peroxide (30%, v/v) under continuous flow, and the reaction was monitored for 8 hours (Chagas; page 1103, Col. 2, paragraph 4). The skilled artisan would interpret the feeding of the solution of residual glycerin and peroxide solution under continuous flow as taught by Chagas as pumping the solution to a reactor containing silica catalyst inside, in a manner consistent with step b) of the instant claim.
Chagas fails to explicitly teach (1) homogenizing the residual glycerin containing salts and impurities in peroxide solution by means of a static mixer, as recited in step a) of the instant claim; (2) leaving the mixture b) in the reactor for a residence time of 2 hours, as recited in step c) of the instant claim; and (3) collecting the products obtained in c) and separating them by distillation, as recited in step d) of the instant claim.
Regarding point (1), Gavrilescu teaches the intensification of transfer processes in biotechnology and chemical engineering using static mixers (Gavrilescu; Title). Gavrilescu further teaches that today, static mixers are used in all fields of chemical and biochemical engineering and studies of flow behavior, pressure drop, mixing behavior, particle coalescence, and mass and heat transfer demonstrate that they are advantageous over process intensification (Gavrilescu; page 4, paragraph 4). In addition, static mixers can remove any mistakes made by the equipment designed for heat and mass transfer (Gavrilescu; page 4, paragraph 4). Of particular note, since static mixers frequently require no additional space (in-line mixers) and they can be applied to media with large viscosity differences, they are being increasingly used in continuous processes (Gavrilescu; page 5, paragraph 3). In addition, Gavrilescu teaches that static mixers are used in chemical processes to achieve rapid mixing of fluids with low energy requirements, and are also used for thermal homogenization when a breakdown can occur on the heat transfer surface (Gavrilescu; page 22, paragraph 6 and page 23, paragraph 3). Finally, Gavrilescu teaches that static mixers are (1) insensitive and non-responsive to temperature; (2) they can be well sealed against the surroundings; and (3) maintenance and wear are small and since they do not require additional space (in-line disposed) they are very economical (Gavrilescu; page 23, paragraph 3).
Regarding point (2), although Chagas teaches a continuous reactor example wherein the reaction is monitored for 8 hours, as detailed above, Chagas also demonstrates that excellent glycerol conversion (nearly 90%) and formic acid selectivity (nearly 80%) is achieved at a reaction time of 2 hours (Chagas; page 1107, Fig. 8A and Fig. 8C). Therefore, one of ordinary skill could reasonably arrive at a reactor residence time of 2 hours in view of the teachings of Chagas and through routine experimentation that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”
Regarding point (3), Zhang teaches a process for producing formic acid by a hydrothermal oxidation reaction with glycerol, wherein glycerol is subjected to an oxidation reaction in the presence of air, oxygen or H2O2 as the oxidant at a temperature range of 150 to 450 ºC (Zhang; Title; Abstract). In addition, Zhang teaches the use of crude glycerol from the biodiesel manufacturing process has the potential to be an important biorefinery feedstock (Zhang; paragraphs [0002]-[0004] and [0040]). Of particular note, Zhang teaches that the formic acid produced after the hydrothermal oxidation reaction can be separated according to a distillation process (Zhang; claim 8; paragraphs [0014] and [0048]).
The prior art as taught by Chagas, Gavrilescu, and Zhang reside in the closely overlapping technical field of chemical processes, and are therefore deemed analogous art, as described in MPEP § 2141.01(a). In addition, both Chagas and Zhang teach the production of formic acid from the oxidation reaction of glycerol that is sourced from biodiesel (i.e., residual glycerol), and the teachings of Zhang demonstrate that distillation is an established method for separating formic acid from the reaction components. Furthermore, Gavrilescu teaches that static mixers are routinely employed in chemical processes, and are increasingly used in continuous reactors. As such, the skilled artisan would be sufficiently motivated to incorporate the teachings of Gavrilescu and Zhang to the method of Chagas to pursue an improved method for the sustainable production of formic acid from residual glycerol with a reasonable expectation of success. Such an endeavor would result in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A) and applying a known technique to a known device (method, or product) ready for improvement to yield predictable results, as described in MPEP § 2143(I)(D).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Chagas to incorporate the teachings Gavrilescu and Zhang to implement a static mixer to homogenize the glycerol and peroxide solution and collect and separate the reaction products by distillation to arrive at the claimed method. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, an improved method for the sustainable production of formic acid that achieves rapid mixing of fluids with low energy requirements in an economical fashion and affords purified and separated reaction products using a purification method known in the prior art to separate formic acid from the oxidation of residual glycerin sourced from biodiesel, as described above.
Regarding claim 2 depending from claim 1, Chagas teaches the synthesis of a mesoporous silica (synthetic SiO2) with high specific surface area of 1489 m2 g-1 and with a high amount of Lewis acid sites as identified by pyridine adsorption experiments (Chagas; Abstract; page 1103, Col. 1, paragraphs 4-6 and Col. 2, paragraph 5; page 1104, Col. 1, paragraph 2; page 1105, Fig. 3A). The SiO2 catalyst specific surface area taught by Chagas resides within the range recited by the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 3 depending from claim 1, Chagas teaches the use of hydrogen peroxide (30%, v/v) in a continuous flow packed bed reactor (Chagas; page 1103, Col. 2, paragraph 4). This value resides close to the range recited within the instant claim. MPEP § 2144.05(I) states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”
Regarding claim 4 depending from claim 1, Chagas teaches a sustainable route for the production of formic acid (widely used commodity chemical) from residual glycerol of biodiesel production (Chagas; Abstract; page 1107, Col. 2, paragraph 1; page 1108, Col. 1, paragraph 1).
Regarding claims 5, 7, and 10 depending from claim 1, claim 6 depending from claim 5, claim 8 depending from claim 7, and claim 11 depending from claim 10, Chagas teaches the conversion of residual glycerol into formic acid at 150 ºC in the presence of a silica catalyst and hydrogen peroxide (Chagas; Abstract; page 1103, Col. 2, paragraph 3; page 1106, Fig. 6; page 1107, Fig. 8). The reaction temperature taught by Chagas resides within the range recited in instant claims 5, 7, and 10, respectively. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In addition, Chagas teaches that the reactions for glycerol conversion were investigated in batch and continuous flow reactors, and GC-MS chromatogram revealed the major product was formic acid, followed by 1-hydroxypropanone (Chagas; page 1104, Col. 2, paragraph 6; page 1106; Fig. 6 and Fig. 7). The use of batch and continuous reactors in the method of Chagas are consistent with the limitations of instant claims 6, 8, and 11, and the production of formic acid and green ethers formed by the method of Chagas is consistent with the limitations of instant claims 7-8 and 10-11, respectively.
Further regarding claims 5-8 and 10-11, Chagas demonstrates in control experiments that both SiO2 and H2O2, used independently or together, are able to catalyze the conversion of glycerol into formic acid (Chagas; page 1105, Col. 1, paragraphs 1-2 and Col. 2, paragraphs 1-2). Therefore, the skilled artisan would recognize that the method of Chagas comprises both heterogeneous (via solid SiO2 catalyst) and homogenous (via H2O2 solution) catalysis, in a manner consistent with the instant claims.
Further regarding claims 10-11, although Chagas fails to explicitly teach the conversion of commercial glycerin into formic acid and green ethers, as recited in the instant claims, Chagas does teach that it is known that impurities present in the crude glycerol affects the catalyst performance, and that the SiO2 catalyst of Chagas presents good stability, even when using the residual glycerol containing impurities from the biodiesel production and a SiO2 catalyst without active phases from transition metals (Chagas; page 1103; Col. 1, paragraph 1; page 1105, Col. 2, paragraph 2). Thus, the skilled artisan would reasonably deduce that the method of Chagas could also be applied with commercial glycerol (i.e., glycerol of higher purity) with a reasonable expectation of success. Therefore, as with claim 1, it would have been prima facie obvious to combine Chagas, Gavrilescu, and Zhang to arrive at the instantly claimed invention.
Regarding claim 9 depending from claim 1, Chagas teaches the conversion of residual glycerol into formic acid at 150 ºC in the presence of a silica catalyst and hydrogen peroxide (Chagas; Abstract; page 1103, Col. 2, paragraph 3; page 1106, Fig. 6; page 1107, Fig. 8).
Although Chagas does not explicitly teach the conversion of residual glycerin by homogeneous catalysis occurs by the action of components remaining from the synthesis of biodiesel, as recited in the instant claim, Chagas does teach that it is known that impurities present in the crude glycerol substantially affects the catalyst performance, and that the SiO2 catalyst of Chagas presents good stability, even when using the residual glycerol containing impurities from the biodiesel production and a SiO2 catalyst without active phases from transition metals (Chagas; page 1103; Col. 1, paragraph 1; page 1105, Col. 2, paragraph 2). In addition, Chagas demonstrates in control experiments that both SiO2 and H2O2, used independently or together, are able to catalyze the conversion of glycerol into formic acid (Chagas; page 1105, Col. 1, paragraphs 1-2 and Col. 2, paragraphs 1-2). Therefore, the skilled artisan would recognize that the method of Chagas comprises homogenous (via H2O2 solution) catalysis, in a manner consistent with the instant claim. Finally, since the residual glycerin employed in the method of Chagas contains NaCl, in a manner consistent with the recited components remaining from the synthesis of biodiesel as described in the written description (Specification; paragraph [0057]), the skilled artisan could reasonably deduce that the method of Chagas intrinsically teaches the limitation of the instant claim. Therefore, as with claim 1, it would have been prima facie obvious to combine Chagas, Gavrilescu, and Zhang to arrive at the instantly claimed invention.
Regarding claim 12 depending from claim 1, claim 13 depending from claim 12, and claims 15-16 depending from claim 13, Chagas teaches the silica-catalyzed conversion of residual glycerol into formic acid, wherein the crude glycerol composition was determined by thermogravimetry to contain 6% salt, NaCl, 16% H2O, and 78% glycerol (Chagas; page 1103; Col. 1, paragraph 3). Furthermore, Chagas teaches that residual glycerol is known to contain methanol and dissolved salts such as NaCl (Chagas; page 1102, Col. 1, paragraph 1).
Further regarding claim 12, although Chagas does not explicitly teach the recited method step of adding sodium salts before step a) of homogenization of commercial glycerin with peroxide solution, as recited in the instant claim, the method of Chagas does employ glycerol that already contains NaCl. In effect, the addition of NaCl to commercial glycerin would generate a composition consistent with residual glycerin, as detailed above. Therefore, this difference merely reflects a reordering of process steps that is non-inventive in nature. MPEP § 2144.04(IV) states that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.”
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed method. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Derek Rhoades whose telephone number is (703)-756-5321. The Examiner can normally be reached Monday–Thursday, 7:30 am–5:00 pm EST; Friday, 7:30 am–4:00 pm EST.
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692