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 the Claims
The preliminary amendment filed on 06/09/2023 has been entered. Claims 1-13 have been amended and claims 14-20 have been newly added. Thus claims 1-20 are currently pending and under examination.
Specification
In the specification dated 06/09/2023, the "single view” drawing is referred to as "Figure 1” (pgs. 10 and 12). In accordance to 37 CFR 1.84(u)(1), please amend the specification throughout to refer to “the Figure.”
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because 37 CFR 1.84(u)(1) indicates that if a single drawing is filed, the drawing must not be numbered. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-20 are 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.
Instant claims 1 and 12 recite the generic limitations “one or more liquid reactants”, “collecting means” and “feeding means”. These generic terms encompass a large amount of species and there is no disclosure of this term that would permit the determination of which species are within the scope of these generic terms. The disclosure contains insufficient written description to demonstrate applicant was in possession of these generic terms. Furthermore, the description does not place the public in possession of any of these generic groups of compounds.
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." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir.
1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989) ("[T]he description must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed."). Thus, an applicant
complies with the written description requirement "by describing the invention,
with all its claimed limitations, not that which makes it obvious," and by using
"such descriptive means as words, structures, figures, diagrams, formulas, etc.,
that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at
1966." Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP lists factors that can be used to determine if sufficient evidence of
possession has been furnished in the disclosure of the Application. These include "level
of skill and knowledge in the art, partial structure, physical and/or chemical properties,
functional characteristics alone or coupled with a known or disclosed correlation
between structure and function, and the method of making the claimed invention.
Disclosure of any combination of such identifying characteristics that distinguish the
claimed invention from other materials and would lead one of skill in the art to the
conclusion that the applicant was in possession of the claimed species is sufficient."
MPEP § 2163. While all of the factors have been considered, a sufficient amount for a
prima facie case are discussed below.
(1) Level of skill and knowledge in the art:
The relative level of skill possessed by one of ordinary skill in the art of chemical research is relatively high, as a majority of lead investigators directing scientific
research and development in this particular technological area possess a Ph.D. in a
scientific discipline such as organic synthetic chemistry, polymer chemistry, medicinal
chemistry, biochemistry, pharmacology, biology or the like.
(2) Partial structure:
Regarding “one or more liquid reactants” and “product stream”, the specification describes the terms as referring to phenol and acetone reactants and bisphenol product, however, the specification fails to adequately and satisfactorily describe other species that would fall as representative species of the entire claimed genus of one or more liquid reactants and products. The term 'representative number of species' means to something similar to 'a statistically significant sample size", however in view of the disclosure, one of skill in the art does not recognize that the applicant was in possession of the necessary common attributes or features possessed by the members of the genus of “one or more reactants” and “product stream”.
Regarding “collecting means” and “feeding means”, there is NO structure, material, or acts to entirely perform the recited function of feeding the reactants and collecting the product stream.
(4) Functional characteristics
No disclosure of functional characteristics of the generic limitations are present in the specification.
(5) Method of making the claimed invention:
The specification does not set forth method of making any reactants and products of that represent the entire genus as claimed.
As stated supra, the MPEP states that written description for a genus can be
achieved by a representative number of species within a broad generic. It is
unquestionable that instant claims are broad and generic, with respect to all possible
species encompassed by the claims. The possible structural variations are limitless
to any “one or more liquid reactants”, “collecting means” and “feeding means”. Although the claims may recite some functional characteristics, the claims lack written description because there is no disclosure of a correlation between function and structure of the compounds beyond those compounds specifically disclosed in the examples in the specification. Moreover, the specification lacks sufficient variety of species to reflect this variance in the genus. While having written description of the elected species and compounds identified in the specification tables and/or examples, the specification does not provide sufficient descriptive support for the myriad of compounds embraced by the claims.
The description requirement of the patent statue requires a description of an
invention, not an indication of a result that one might achieve if one made that invention.
See In re Wilder, 736, F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984)
(affirming rejection because the specification does "little more than outlin[e] goals
appellants hope the claimed invention achieves and the problems the invention will
hopefully ameliorate.") Accordingly, it is deemed that the specification fails to provide
adequate written description for the genus of the claims and does not reasonably
convey to one skilled in the relevant art that the inventor(s), at the time the application
was filed, had possession of the entire scope of the claimed invention.
Claim Rejections - 35 USC § 112
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-20 are 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 limitation “collecting means” and “feeding means” in claims 1 and 12 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim as there is insufficient description of the corresponding structure, material, or acts for performing the claimed function for collecting a product stream and for feeding at least a portion of reactants. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The term “substantially” in claim 10 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The shape of the reactor is rendered indefinite by the use of the term “substantially”.
The term “type” in claims 5 and 17 renders the claims vague and indefinite because the term does not limit the claims to the species recited in the claims, cross-linked polystyrene based ion-exchange resin, and thus is unclear as to how much variation of the recited species are tolerated by the use of term “type”.
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.
Claims 1-6, 9-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Patent number US6,013,845 (US’845) in view of Patent application publication number US2009/0137848A1 (US’848).
Regarding claims 1-2 and 12-15, US’845 teaches (throughout the document and Fig. 1), a method for carrying out a catalyzed chemical reaction between phenol and acetone reactants in an upflow reactor 4 comprising: feeding the reactants to a bottom section of the reactor via 21 positioned below a flow distributor plate 23, passing the reactants through the flow distributor plate 23, passing the reactants through a layer of aggregate 22 because the aggregate is any material which will not easily fluidize and is essentially inert to the reactants and products produced in the reactor (col. 2, ln. 62-64), passing said portion through a catalyst layer comprising a particulate catalyst 24, said catalyst layer being positioned above and in contact with said layer of the inert aggregate, wherein the reactants react to form a product stream comprising bisphenol that is collected via 26.
US’485 is silent that the inert aggregates have a density of at least 2000 kg/m3 and an average particle size of from 500 to 5000 μm, the particulate catalyst consists of catalyst particles with a density of at most 65% of the density of the inert particles and an average particle size, in use, of from 500 to 1500 μm, and the height of the layer of inert particles is at least 40 times the average particle size of the inert particles.
However, the reference teaches the same inert aggregates and catalyst particles as described in the specification, i.e. inert aggregates/particles as comprising sand or ceramic balls, and particulate catalyst comprising crosslinked sulfonic acid ion exchange resins. As such, there is a prima facie case of anticipation in the reference for the inert aggregates to have a density of at least 2000 kg/m3 and an average particle size of from 500 to 5000 μm, and the particulate catalyst to consist of catalyst particles having a density of at most 65% of the density of the inert particles and an average particle size, in use, of from 500 to 1500 μm. See MPEP § 2112.01. Furthermore, based on Fig. 1, the height/thickness of the layer of inert aggregates 22 appears to be at least 40 times the average particle size of the inert particles shown in dots.
Regarding claims 4 and 11, US’845 is silent about the product composition as claimed, however, since the reference teaches the same reactants phenol and acetone as instantly claimed, there is a prima facie case of obviousness for the product stream of US’845 to comprise the composition as in the claims.
Regarding claims 5-6, US’845 teaches the aggregate is comprised of silica sand, ceramic balls, or a combination of both (col. 2, lines 63-66) and the catalyst crosslinked sulfonic acid ion exchange resin catalyst (col. 3, ln. 21-30).
Regarding claim 10, reactor 4 of the reference is cylindrical in shape as shown in Fig. 1.
Regarding claim 17, US’845 further teaches the use of covalently bonded co-catalysts with the cross linked polystyrene based ion-exchange resin (col. 3, ln. 32-42).
Regarding claims 1 and 12, while US’845 teaches that the layer of inert aggregates 22 is in contact with flow distributor plate 23, the reference fails to teach that the layer of inert aggregates is positioned above the flow distributor plate. Instead, the reference teaches, in view of Fig. 1, a portion of the layer of inert aggregates 22 aligns the entire height of the distributor plate layer 23 and the upper portion of the aggregate layer 22 sits on top of distributor plate 23. However, in view of MPEP § 2144.04, rearrangement of parts is one of the examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients. In this instance, rearrangement of the layer of the inner aggregates and the distributor plate would not have modified the operation of the upflow reactor. In fact, US’845 teaches that the reactor system improves the per[-]pass yield of product by increasing the plug flow character of the reactor and/or reducing back mixing in the reactor (col. 2, ln. 22-25). The same advantages have been described in the instant specification, by stating that “The function of the layer of inert particles is to homogeni[z]e the flow of the reactants as much as possible so that the reactants will move through the catalyst bed in a plug flow mode or at least substantially in plug flow mode” and “As a result the catalyst bed or catalyst layer stability will be improved and back mixing and channeling through the catalyst layer is reduced to a minimum” (pg. 4, ln. 30-35). As such, the instantly claimed layer of inert particles positioned above the flow distributor plate is deemed obvious over the positioning of US’845.
Regarding claims 9 and 19-20, US’845 fails to teach the height of the layer of inert articles as instantly claimed. Instead, the reference teaches that the amount of such aggregate is not critical, but sufficient aggregate should be present to provide support to the reactor internals and disperse the flow of reactants throughout the interior of the reactor (col. 2, ln. 58-62). Thus, a skilled artisan would have been able to determine the optimum workable height of the aggregate layer to support the reactor internals through routine optimization in view of result-effective parameter recognized by US’845, i.e. the amount and hence the height of the aggregate layer. See MPEP § 2144.05.
Regarding claims 1, 3, 12 and 16, US’845 fails to teach that the upflow reactor is operated at a weight hourly space velocity of at least 1.0. The deficiency is however cured by US’848.
US’848 teaches a process for the manufacture of a polyphenol compound such as bisphenol-A by introducing into a reaction zone a phenolic compound reactant, a carbonyl compound reactant, and a catalyst promoter by feeding the reactants via line 126 to an upflow reactor CR (Fig. 1). The reference further teaches that the contact time of the polyphenol and carbonyl compound reactants over the acidic catalyst is equivalent to a weight hourly space velocity of from about 0.1 to about 10 hr−1 ([0042]). As such, a skilled artisan would have been motivated to use the weight hourly space velocity of US’848 in the process of US’845 with a reasonable expectation of success in obtaining nothing more than the bisphenol product.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to conduct the method and obtain a reactor for carrying out a catalyzed chemical reaction as instantly claimed in view of the teachings of US’848 and US’845.
Allowable Subject Matter
The subject matter of claims 7-8 and 18 are free of prior art references. The closest prior art references and their teachings have been set forth above, but fail to teach or suggest that the distributor plate is a slotted plate with a plurality of openings having a size smaller than the average particle size of the inert particles and preferably having a size from 50 to 500 μm or from 150 to 300 μm and with a porosity of 10-50%, porosity being defined as the percentage of open area relative to the surface area in flow direction of the distributor plate.
Conclusion
Claims 1-20 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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