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 Claims
Claims 1 – 25 are pending.
Claim 26 cancelled.
Clams 1 – 25 are rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, 4, 5, 6, 7, 8, 9 and 10 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. The courts have stated:
“To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that “the inventor invented the claimed invention.” Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003).
An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
It is now well accepted that a satisfactory description may be found in originally-filed claims or any other portion of the originally-filed specification. See In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980); In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). However, that does not mean that all originally-filed claims have adequate written support. The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings.
In accordance with MPEP § 2163, specifically state that for each claim drawn to a single embodiment or species: (a) Determine whether the application describes an actual reduction to practice of the claimed invention; (b) If the application does not describe an actual reduction to practice, determine whether the invention is complete as evidenced by a reduction to drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole; (c) If the application does not describe an actual reduction to practice or reduction to drawings or structural chemical formula as discussed above, determine whether the invention has been set forth in terms of distinguishing identifying characteristics as evidenced by other descriptions of the invention that are sufficiently detailed to show that applicant was in possession of the claimed invention. (i) Determine whether the application as filed describes the complete structure (or acts of a process) of the claimed invention as a whole. (ii) If the application as filed does not disclose the complete structure (or acts of a process) of the claimed invention as a whole, determine whether the specification discloses other relevant identifying characteristics sufficient to describe the claimed invention in such full, clear, concise, and exact terms that a skilled artisan would recognize applicant was in possession of the claimed invention. The analysis of whether the specification complies with the written description requirement calls for the examiner to compare the scope of the claim with the scope of the description to determine whether applicant has demonstrated possession of the claimed invention. Below is such comparison.
I. Scope of claims
In the instant case: Claim 1 discloses a method for producing glycolic acid, wherein the glycolic acid is selectively hydrogenated in the presence of a catalyst comprising at least one transition metal element.
II. Scope of Disclosure
Reduction to Practice
The specification provides no guidance or working examples detailing a process for producing glycolic acid, wherein the glycolic acid is selectively hydrogenated in the presence of a catalyst comprising at least one transition metal element.
The specification only provides guidance for a method of producing glycolic acid comprised of selectively hydrogenating glyoxylic acid in the presence of a catalyst comprised of a transition metal element. (Examples 1 – 4).
III. Analysis of Fulfillment of Written Description Requirement
As stated supra, the MPEP states that written description for a single embodiment or species can be achieved if any description of sufficient, relevant, identifying characteristics that would lead on skilled in the art to the conclusion that the applicant was in possession of the claimed embodiment or species.
It is generally known in the art that hydrogenation of glycolic acid produces ethylene glycol.
US Patent 2,607,805 to Gresham (‘805). ‘805 discloses a process for the hydrogenation of hydroxy-substituted carboxylic acids and more particularly the direct hydrogenation of glycolic acid to ethylene glycol. (col. 1,ln 1-3).
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US Patent 2,285,448 to Loder (‘448). In ‘448 discloses a process for the catalytic hydrogenation of glycolic acid, its esters, and anhydrides to a polyhydric alcohol. (col. 1, ln 3 – 6).
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US Patent 4,141,930 to Nielsen (‘930). ‘930 discloses a process for preparing ethylene glycol by hydrogenating glycolic acid in the liquid phase in the presence of a catalytically effective amount of a catalyst consisting of metallic cobalt and thorium oxide. (col. 1, ln 30 – 33 & Example 2).
In the case of the claimed invention, the combination of references shows that the specification fails to provide adequate written description for the process and does not reasonably convey to one skilled in the relevant art that the inventor(s), at the time of the application was filed, has possession of the entire scope of the claimed invention.
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.
Claim 11 is 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 11 contains the trademark/trade name “Raney”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a type of catalyst and, accordingly, the identification/description is indefinite.
Claim Interpretation
During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). Claim terms are presumed to have the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67 USPQ2d 1438, 1441 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 67 USPQ2d 1132, 1136 (Fed. Cir. 2003).
In this instance for the purpose of continued examination, based on a reading of Applicant’s specification, the Examiner considers that in the phrase; “wherein the glycolic acid is selectively hydrogenated in the presence of a catalyst comprising at least one transition metal element”; glycolic acid should be “glyoxylic acid”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 – 4, 6 – 7, 9, 12 – 14 and 19 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oe Seiji et al. (JP 2009235054) (Seiji) (see English translation).
The rejected claims cover, inter alia, a method for producing glycolic acid comprising selectively hydrogenating glyoxylic acid, wherein the (glycolic acid) glyoxylic acid is selectively hydrogenated in the presence of using a catalyst comprising at least one transition metal element.
Dependent clams 2, 6 and 7 further limit the catalyst. Dependent claims 3, 4, 12 – 14 and 19 further limit the reaction conditions.
However, Seiji discloses a method for hydrogenating a substrate by a catalytic action with a hydride metal complex of formula (4).
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. ( para. [0007] – [0008]). Example 8 discloses the following: To an aqueous solution of pH 8 containing 50μ mol of glyoxylic acid as a reaction substrate, 1 μ mol of a hydride metal complex of the following structural formula (4) synthesized by the method of Example 1 was added, and reacted with hydrogen gas (0.5 MPa) at a reaction temperature of 60° C. for 1 hour. One hour after the start of the reaction, 24μ mol of glycolic acid was obtained. (para. [0064, pp. 25). Further, it is stated that water-soluble aldehydes (glyoxylic acids) are converted to the corresponding alcohols more efficiently than water-insoluble aldehydes (benzaldehydes and o-fluorobenzaldehyde). Table 2 summarizes the aldehyde hydrogenation catalyzed by the hydride metal complex of formula (4) under optimal conditions. (para. [0049]).
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.
Claim(s) 1, 3, 5, 8, 9, 10, 15, 16, 17 and 18, is/are rejected under 35 U.S.C. 103 as being unpatentable over Oe Seiji et al. (JP 2009235054) (Seiji), in view of Rylander (Hydrogenation catalysts, reactors, and reaction conditions, Chapter 1, The catalytic hydrogenation in organic synthesis, 1979) (Rylander), and further in view of Rylander (Hydrogenation of aldehydes, Chapter 5, The catalytic hydrogenation in organic synthesis, 1979) (Rylander 2).
The rejected claims cover, inter alia, a method for producing glycolic acid comprising selectively hydrogenating glyoxylic acid, wherein the (glycolic acid) glyoxylic acid is selectively hydrogenated in the presence of using a catalyst comprising at least one transition metal element.
Dependent claims 3, 5, 8, 9, 10, 15, 16, 17 and 18 further limit the reaction conditions.
However, Example 8 of Seiji discloses the following: To an aqueous solution of pH 8 containing 50μ mol of glyoxylic acid as a reaction substrate, 1 μ mol of a hydride metal complex of the following structural formula (4) synthesized by the method of Example 1 was added, and reacted with hydrogen gas (0.5 MPa) at a reaction temperature of 60° C. for 1 hour. One hour after the start of the reaction, 24μ mol of glycolic acid was obtained. (para. [0064, pp. 25).
The difference between Seiji and the claimed invention is as follows: the reaction medium comprises water and at least one another solvent selected from the group consisting of ethanol, acetone, acetonitrile, methanol, and combinations thereof (claim 5); transition metal element not supported, (claim 8); transition metal element is supported on a support (claim 9); the transition metal element is supported on a support, which is not a nanotube (claim 10); the glyoxylic acid is selectively hydrogenated with a glyoxylic acid conversion rate of no less than 40% (claim 15); the glyoxylic acid is selectively hydrogenated with a glycolic acid selection rate of 40% to 90% (claim 16); the concentration of glyoxylic acid in the reaction medium is in the range of 1-50wt% relative to the total weight of glyoxylic acid and the reaction medium (claim 17); and the content of the catalyst is in the range of 1-20wt% relative to the weight of the glyoxylic acid (claim 18).
However, with regard to the reaction medium comprises water and at least one another solvent selected from the group consisting of ethanol, acetone, acetonitrile, methanol, and combinations thereof (claim 5), the Examiner turns to the teaching of Seiji and Rylander. In discussing their hydrogenation reaction Seiji states that H2O ligands are known to accelerate heterogeneous H2 activation in polar solvents to release H3O+. (para. [0050]). For the hydrogenation of aldehydes, based on Rylander, it is common general knowledge that a mixture of solvents can be used as a reaction medium. Further, Rylander states that solvents are often used in catalytic hydrogenation because they serve to increase the ease of handling and the ease of catalyst recovery, to moderate exothermic reactions, to increase rate and selectivity and to permit hydrogenation of solid material. (page 3, para. 3 E. Solvents). These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Regarding the transition metal element not supported (claim 8) and is supported on a support (claim 9), and the transition metal element is supported on a support, which is not a nanotube (claim 10); the Examiner turns to the teaching of Rylander and Rylander 2. The prior art of Rylander recognized the use of heterogeneous hydrogenation catalyst of two types, supported and unsupported. (pp. 1, para. 1 A. types of catalyst). Rylander disclosing that carbon or alumina are a good support for the majority of reactions. (pp. 2 para. 3 C. choosing a support). Rylander 2 discloses that transition metal catalyst used in hydrogenation of aldehydes can be supported. (pp. 72 para. 2). As such, These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Regarding the glyoxylic acid is selectively hydrogenated with a glyoxylic acid conversion rate of no less than 40% (claim 15), and the glyoxylic acid is selectively hydrogenated with a glycolic acid selection rate of 40% to 90% (claim 16); the Examiner turns to the teaching of Seiji. Table 2 of Seiji discloses the conversion percentage of the glyoxylic acid to glycolic acid at 44% and 98%. As such, these limitations are obvious and would have been to one of ordinary skill in the art before the effective filing date of the invention.
With regard to the concentration of glyoxylic acid in the reaction medium is in the range of 1-50wt% relative to the total weight of glyoxylic acid and the reaction medium (claim 17), the Examiner turns to the teaching of Seiji. In Example 8 of discloses that the reaction uses 50 µmol of glyoxylic acid in an aqueous solution. Seiji fails to specifically disclose the concentration range of the glyoxylic acid in the aqueous solution; however, these levels can easily be determined by routine experimentation based on the teaching of Seiji. Where 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to the content of the catalyst is in the range of 1-20wt% relative to the weight of the glyoxylic acid (claim 18), the Examiner turns to the teaching of Seiji. Example 8 of Seiji discloses that 1 µmol of hydride metal complex (4) was added to the reaction with the weight of the glyoxylic acid being 50 µmol. Seiji fails to specifically discloses the catalyst range in the reaction solution; however, these levels can easily be determined by routine experimentation based on the teaching of Seiji. Where 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim Rejections - 35 USC § 103
Claim(s) 20 – 25 are rejected under 35 U.S.C. 103 as being unpatentable over Metabolic Explorer (WO 2010/108909) (Metabolic).
Rejected claims 20 – 22 cover, inter alia, glycolic acid produced by or derived from the method according to claim 1, wherein the glyoxylic acid has a bio-based carbon content of above 50%.
However, Metabolic discloses a method of producing glycolic acid starting from sugar from bio sources. (abstract) The process of Metabolic involves the transformation of the sugars first to glyoxylate, which is further transformed into glycolate. (pp. 2, ln 12 – 13).
Applicant is reminded that claim 20 is claimed in a Product-by-Process format. The PTO takes the following position with respect to Product- by-Process claims. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698,227 USPQ 964, 966 (Fed. Cir. 1985). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221,223 (CCPA 1979). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Metabolic. Therefore, the claim is obvious in view of the prior art.
Rejected claims 23 – 25 cover, inter alia, a glycolic acid with a bio-based carbon content of above 50% and below 100%. Further, dependent clams 24 and 25 teach that the glycolic acid has a mean isotopic 13C deviation.
However, Metabolic discloses a method of producing glycolic acid starting from sugar from bio sources. (abstract) The process of Metabolic involves the transformation of the sugars first to glyoxylate, which is further transformed into glycolate. (pp. 2, ln 12 – 13). As such, the bio-based glycolic acid of Metabolic appears to be indistinguishable from the bio-based glycolic of the instant claims.
Regarding the mean isotopic 13C deviations as claimed, it would appear that these ranges are within the expected ranges for any bio-based organic compound. (applicant’s description, page 4, ln 30 to page 5, ln 16).
It is noted that a prima facie case of obviousness has been established when the reference discloses all the limitations of a claim except for a property and the examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention but has a basis for shifting the burden of proof to applicant, as per In re Fitzgerald, 619 F.2d 67,205 USPQ 594 (CCPA 1980). See also In re Best, 195 USPQ 430,433 (CCPA 1977) as to the providing of this rejection under 35 USC 103.
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP H0925253 (Takahashi Hiroko et al.) Hydrogenation of carboxylic acid to obtain an alcohol, an ether, a lactone etc..
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692