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 .
Claim Interpretation
For purposes of examination, it is noted that the claims are replete with elements deemed optional, specifically, those following the claim language “in particular,” “especially,” “i.e.,” “preferably,” “especially,” “such as,” “more preferably,” and any other similar language not particularly noted. These optional limitations are not being substantively examined and will not be so examined until such time that amendment may be made to make the optional elements required elements of the claim.
Claims directed to an apparatus must be distinguished from the prior art on the basis of structural differences. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”) (emphasis in original). Likewise, the “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937 (CCPA 1963).
It is firmly rooted that because an apparatus is a structure, an apparatus must be distinguished from prior art on the basis of its structure, and where a prior art structure is inherently “capable of” performing the claimed function of the apparatus, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
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.
Claims 50-69 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claims 62 and 65, the limitations “said conveying plane” (claim 62) and “said plane for conveying said first reagent” (claim 65) lack appropriate antecedent basis. The same applies to claim 63 by virtue of its dependency upon claim 62.
With respect to claims 50-69, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claims recite broad recitations, and the claims also recite narrower statements of the range/limitation – specifically, the limitations following the claim language “in particular,” “especially,” “i.e.,” “preferably,” “especially,” “such as,” and “more preferably.” The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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.
Claims 50-52 and 55-69 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lanteri (US 3,931,273).
With respect to claims 50 and 52, Lanteri discloses a continuous falling film reactor to obtain a product through a gas-liquid reaction, between a first reagent and a second reagent (see Lanteri, Abstract; and column 6, lines 3-6), the reactor comprising: (a) a reactor body, or outer shell, adapted to house a plurality of chambers, for a reaction between said first reagent and said second reagent; said chambers, having a respective inner surface (see Lanteri, column 4, lines 48-67); (b) introduction means of said first reagent into said chambers (see Lanteri, column 5, lines 35-46); and (c) introduction means of said second reagent (see Lanteri, column 5, lines 2-10); means, or head being provided for the introduction of said first reagent, wherein said means, or head, for the inlet of said first reagent, comprise, or comprises, corresponding nozzle means for the passage of said first reagent towards the respective reaction chamber (see Lanteri, column 5, lines 35-46); and wherein said nozzle means are in the form of said nozzle means calibrated so as to cause a predetermined load loss of said first reagent feeding towards the respective reaction chamber (inherently disclosed as a function of any nozzle assembly and, in any event, not structurally distinguishing), and such as to ensure a controlled flow rate of said first reagent entering the respective reaction chamber so as to evenly distribute the first reagent on the respective inner surface of the reactor body (see Lanteri, column 6, lines 1-29).
With respect to claim 51, the claim does not structurally distinguish over the reactor of Lanteri. Claims directed to an apparatus must be distinguished from the prior art on the basis of structural differences. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”) (emphasis in original).
With respect to claim 55, Lanteri discloses wherein the inlet for the first reagent may be an annular cavity (see Lanteri, column 5, lines 2-34) (describing and illustrating cylindrical housing and tubular flow passages).
With respect to claim 56, Lanteri discloses wherein the annular conduit is defined between a first and second body coaxially coupled one inside the other (see Lanteri, column 6, lines 9-12).
With respect to claim 57, the claim does not structurally distinguish over the reactor of Lanteri. Claims directed to an apparatus must be distinguished from the prior art on the basis of structural differences. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”) (emphasis in original).
With respect to claims 58-64, Lanteri discloses wherein the means for introduction of the first reagent comprises means for distributing the first reagent between the reaction chambers (see Lanteri, column 5, lines 18-24), such means having a circular outer profile (see Lanteri, Fig. 1 and accompanying text). Further disclosed are means (peripherally supply channel) for supplying the first reagent to the conveying plane (see Lanteri, column 4, line 33), such means extending peripherally outwards to the conveying plane (see Lanteri, Fig. 1). Such supply channel comprises a bottom surface and a side surface (see Lanteri, Fig. 1).
With respect to claim 65, Lanteri discloses wherein the plane (19) for conveying the first reagent is arranged at a height level that is lower than the bottom surface of the peripheral channel (conduit for entry of reactant B1) (see Lanteri, Fig. 1).
With respect to claims 66 and 67, Lanteri discloses wherein the means for inputting the second reagent (conduit indicating entry of A1) is supported by the reactor housing body (see Lanteri, Fig. 1), such means comprising a tubular conduit (see Lanteri, Fig. 1).
With respect to claims 68 and 69, Lanteri further discloses wherein the reactor further comprises means for cooling the reaction chamber, such means including a septum means to define flow along a predetermined path (see Lanteri, Fig. 1) (illustrating cooling water inlet F and outlet E).
Claim Rejections - 35 USC § 103
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 53 and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Lanteri (US 3,931,273).
With respect to claims 53 and 54, see discussion supra at paragraph 11. Lanteri illustrates wherein the nozzle (25) length and diameter is considerably narrower and shorter than that of reaction tube (23), Lanteri defining the reaction tube (23) as having diameter of 8-18 mm and length of 0.8-5.0 meters (see Lanteri, column 4, lines 63-67; and column 5, lines 1-2). Where the only difference between the prior art and the claims are a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions does not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Mey (US 3,328,460); Toyoda (US 3,879,172); Pryce (US 3,891,689); Aigner (US 2008/0306295); and Foley (WO 2015/196019 A1). The cited art generally discloses falling film reactor apparatus suitable for conducting continuous reaction between a first and second reagent (see respective Abstracts and claims for each cited reference).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Boyer whose telephone number is (571) 272-7113. The examiner can normally be reached Monday through Friday from 10:00 A.M. to 7:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Randy Boyer/
Primary Examiner, Art Unit 1771
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