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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 2014/0136456 (hereafter KR’456) in view of KR 2019/0142642 (hereafter KR’642).
Applicant’s arguments have been considered but are not persuasive.
Applicant argues that the cited references do not teach or suggest the specific combination of temperature and pressure ranges now recited in claim 1 and that the Examples, Comparative Examples, and Reference Examples allegedly establish criticality, synergy, and unexpected results. The argument is not persuasive because the evidence of record is insufficient to outweigh the prima facie case of obviousness.
As set forth in the rejection, KR’456 discloses the same general isocyanate production process, including phosgenation of an amine, separation of a gas phase from a liquid isocyanate-containing product, and post-treatment of the liquid product to remove solvent and low- and high-boiling components. KR ’456 further teaches process temperatures overlapping the claimed ranges, including reaction temperatures of 20-180°C and post-treatment temperatures of 120-230°C. KR’642 teaches formation and use of an amine salt prior to phosgenation to moderate the reaction and produce isocyanate. Thus, the cited references provide both the same process context and a reason to employ an amine salt in the phosgenation process.
Applicant’s newly added temperature and pressure limitations do not patentably distinguish the claims. Temperature, pressure, and vacuum level are conventional process-control variables in distillation, degassing, desolvation, and removal of low- and high-boiling components. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, where a claimed range overlaps or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists absent a showing that the claimed range is critical. In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). The claimed temperature and pressure ranges represent optimization of known result-effective variables used to control volatility, residence time, removal efficiency, thermal exposure, and product decomposition during purification of an isocyanate reaction product.
Applicant’s evidence does not overcome the prima facie case. Although Applicant relies on Examples, Comparative Examples, and Reference Examples, the data do not establish unexpected results commensurate in scope with claim 1. Claim 1 broadly encompasses any “salt of amine compound,” any solvent, and any isocyanate compound prepared within the recited ranges. The evidence cited by Applicant appears limited to selected embodiments and selected operating points. Such limited data do not establish that the alleged improvement occurs across the full breadth of the claimed method.
Nor has Applicant provided a comparison against the closest prior art process. The relied-upon examples compare selected conditions inside and outside Applicant’s claimed ranges, but do not show a direct comparison with the process conditions of KR ’456, either alone or as modified by KR ’642. Evidence of unexpected results is most probative when it compares the claimed invention with the closest prior art. The present showing does not sufficiently establish that the claimed process provides results unexpected over the combined teachings of KR ’456 and KR ’642.
Applicant also has not established criticality of the claimed endpoints. The cited data may show that certain tested conditions outside the claimed ranges produced less favorable results, but that does not demonstrate that each endpoint of each claimed range is critical. For example, the data do not establish that the lower and upper limits for each of the degassing, desolvation, low-boiling removal, and high-boiling removal steps are critical throughout their full scope. A showing that one or two selected values outside a range perform less favorably does not, by itself, establish criticality of the entire claimed range.
Applicant’s assertion of “synergy” is likewise unsupported. The remarks characterize the temperature and pressure profile as providing a synergistic effect, but the record does not show that the combined operation of the claimed ranges produces an effect greater than the expected result of optimizing known purification variables. Attorney argument cannot substitute for evidence. The data cited by Applicant show ordinary process sensitivity to temperature and pressure in a purification sequence, which is expected in distillation and vacuum-removal operations involving thermally sensitive compounds.
The cited references need not expressly teach the exact optimized values recited in the claim. Obviousness does not require bodily incorporation of one reference into another, nor does it require an express teaching of every optimized condition when the prior art provides the same process, overlapping operating ranges, and a reason to optimize. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-21, 82 USPQ2d 1385, 1396-97 (2007). Here, a person of ordinary skill in the art would have had reason to select temperatures and pressures that remove gas, solvent, low-boiling impurities, and high-boiling impurities while minimizing thermal decomposition. That is the ordinary objective of purification and post-treatment of an isocyanate-containing reaction product.
Accordingly, Applicant has not shown that the claimed temperature and pressure ranges produce unexpected results commensurate in scope with claim 1, nor has Applicant shown criticality for each claimed range or a persuasive nexus between the alleged results and the full claimed subject matter. The evidence is therefore insufficient to outweigh the prima facie case of obviousness based on KR ’456 in view of KR ’642.
The rejection of claim 1 under 35 U.S.C. § 103 is maintained.
Claims 2-4 and 8-10 remain unpatentable for the reasons previously stated. These claims depend from claim 1 and do not add limitations sufficient to overcome the rejection. Claims 2-4 merely recite particular orders of known degassing, desolvation, low-boiling removal, and high-boiling removal steps. Reordering known process steps for operational convenience, absent a showing of criticality or unexpected results, would have been an obvious process modification under KSR. Claims 8 and 9 recite known xylylene diamines and amine salts expressly taught by KR ’642. Claim 10 recites use of a thin-film evaporator, which is a conventional apparatus for removal of high-boiling materials under reduced pressure and would have been selected as a matter of routine process design.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -6:30 pm).
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/DEBORAH D CARR/ Primary Examiner, Art Unit 1691
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