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
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018-529694 (hereafter JP’694) in view of WO 2019/245192 (hereafter WO’192).
JP’694 discloses a method for producing an isocyanate comprising reacting an amine with phosgene in the presence of a solvent to obtain an isocyanate-containing reaction product (claims 1 and 4; Fig. 1; paras. [0020] – [0023]), separating gas from the reaction product (claims 1 and 4; Fig. 1; paras. [0024] – [0026]), scrubbing the gas with solvent to obtain a phosgene-containing liquid (claims 1 and 4; Fig. 1; paras. [0027] – [0029]), and returning phosgene-containing solvent to the reaction system (claims 1 and 4; Fig. 1; paras. [0030] – [0032]). JP’694 further discloses use of chlorinated aromatic solvents including monochlorobenzene and dichlorobenzene (paras. [0022], [0104]).
Claim 1 differs from JP’694 in that (i) the amine is supplied as a salt, and (ii) the phosgene-containing liquid is distilled to separate phosgene and solvent, with phosgene recycled to the reaction step and solvent recycled to the scrubbing step.
With respect to (i), use of an amine salt instead of a free amine is a known equivalent in phosgenation processes because amine salts dissociate under reaction conditions to form free amine. Substitution of one known equivalent for another to perform the same function is an obvious modification. In re Fout, 675 F.2d 297 (CCPA 1982).
With respect to (ii), WO’192 discloses distilling a phosgene/solvent mixture after scrubbing and recycling phosgene to the reaction step and solvent to the scrubbing step (Fig. 1; paras. [0045] – [0055]). Recycling of reactants and solvents to improve efficiency and reduce losses is standard practice in chemical process design. Combining known process steps to achieve predictable results is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Claim 2 recites temperature and pressure for degassing. JP’694 discloses degassing under reduced pressure and elevated temperature (Fig. 1; paras. [0024]–[0026]). Selecting specific values within workable ranges is routine optimization. In re Aller, 220 F.2d 454 (CCPA 1955); In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).
Claim 3 recites specific cleaning solvents. JP’694 expressly discloses monochlorobenzene and dichlorobenzene (paras. [0022], [0104]). Selection of similar known solvents would have been obvious.
Claim 4 recites packed or tray-type scrubbers. Such gas-liquid contactors are conventional alternatives used interchangeably, and selecting between them is a routine engineering choice. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Claims 5–7 recite desolvation and removal of low- and high-boiling materials with specified conditions. JP’694 discloses solvent removal, separation of polymeric fractions, and removal of low-boiling components (Fig. 1; paras. [0035] – [0043]). The order of purification steps and operating conditions are routine process design choices. In re Boesch, 617 F.2d 272 (CCPA 1980).
Claims 8–12 recite specific amines. These are known precursors for isocyanate production and fall within the scope of suitable amines taught by JP’694 (paras. [0018] – [0021]). Selecting known reactants for use in a known process is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Claim 13 recites amine salts. Such salts are conventional handling forms and are known equivalents to free amines in phosgenation reactions. In re Fout.
Claims 14–15 recite aromatic and ester solvents. JP’694 teaches aromatic solvents, and ester solvents are well-known inert solvents for phosgenation and distillation. Selection from known solvent classes is routine. In re Aller.
For the foregoing reasons, claims 1–15 are rejected under 35 U.S.C. §103 as being obvious over JP’694 in view of WO’192.
Claim Rejections - 35 USC § 112
Claims 1, 8-15 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 8–12 recite broad classes of amines, including aliphatic amines, cyclic amines, sulfur-containing amines, bifunctional and multifunctional amines, and numerous specific compounds.
The specification does not reasonably convey possession of the full scope of these amine classes because: only limited examples of amine compounds are described, and
the specification does not describe common structural features or properties that would indicate all listed amines behave similarly in the claimed process.
Without representative species or structural guidance, the specification does not demonstrate possession of the full scope of the claimed amine classes.
Claims 14–15 recite aromatic hydrocarbon-based solvents and ester-based solvents, including a wide range of chemically diverse compounds.
The specification does not adequately describe use of all claimed solvents in the reaction and scrubbing steps, nor does it explain why all listed solvents would be expected to function similarly under the claimed conditions. The absence of representative examples or common structural features raises a question as to whether the inventors were in possession of the full scope of the claimed solvent genus.
Claims 1 and 13 require reacting a salt of an amine compound, including hydrochloride and carbonic acid salts.
The specification does not sufficiently describe: how different salt forms are introduced into the reaction system, whether pretreatment or dissociation is required, or how salt form affects solubility and reaction behavior in the solvent.
Without such description, the specification does not reasonably convey possession of the claimed use of amine salts across the full scope of the claims.
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, 5-7 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 that the scrubbing step is performed “under a negative pressure of 700 torr or more and less than 760 torr.” This limitation is indefinite because:
the term “negative pressure” is ambiguous and may refer to gauge pressure or absolute pressure; and a pressure of 700 to less than 760 torr is close to atmospheric pressure, which conflicts with the ordinary meaning of “negative pressure.”
Because it is unclear what pressure conditions are required by the claim, the scope of the scrubbing step cannot be determined with reasonable certainty.
Claim 1 recites reacting in the presence of “a solvent” and scrubbing with a “cleaning solvent,” while claims 14–15 recite solvent types without clarifying whether the same solvent must be used in both steps. The claims do not specify whether: the solvent in the reaction step must be the same as the cleaning solvent in the scrubbing step, or different solvents may be used.
Because this distinction affects the scope of the claims and is not clarified, the relationship between these solvents is indefinite.
Claims 5–7 recite removing “low boiling materials” and “high boiling materials.”
These terms are relative and indefinite because: no boiling point ranges are provided,
no reference pressure is specified, and no specific components are identified.
Without objective boundaries, a person of ordinary skill in the art cannot determine which components are intended to be removed at each step, and therefore cannot determine the scope of the claims with reasonable certainty.
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