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 .
Specification
The disclosure is objected to because of the following informalities:
Page 3, Line 28 reads “Similar peroxospezies can be derived …”. As understood by the examiner “peroxospezies” is German for “peroxospecies” which is a known term in the art.
Page 8, Line 9 reads “… and SO3 in a solvent …” but should read “… and SO3 in a solvent …”
Page 16, Line 3; Page 16, Line 26; and Page 16 Line 36 all list an amount of methanesulfonic acid without an associated unit. Given the size of the reactor and that grams (g) are used for the amount of methanesulfonic acid in the other examples it is understood that the unit should be grams. Appropriate correction is required.
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.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 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 12 recites “SO3 is added at least in a stoichiometric amount with respect to the peroxo compound”; this is indefinite. As understood by the examiner “a stoichiometric amount” corresponds to a molar ratio that is taken from a balanced chemical equation. However no such chemical equation that involves both SO3 and a peroxo compound is given. Furthermore it is understood that the reaction products of CO or CO2 are most likely formed by the decomposition of 1 molar equivalent or 2 molar equivalents of peroxo compounds, respectively. If this is the case then 2 balanced equations with 2 different molar ratios would exist and the phrase “a stoichiometric amount” would continue to be indefinite because it would be unclear as to which stoichiometric amount was being referred to. Applicant may amend by specifying a molar ratio between SO3 and the peroxo compound or by providing a single balanced chemical equation including reacting SO3 with a peroxo compound.
Claim 22 similarly recites the phrase “SO3 is added at least in a stoichiometric amount with respect to the peroxo compound” and is similarly rejected.
Claim 23 recites “the reaction mixture is dispersed into small droplets”. The phrase “small droplets” is a term of relative degree. The specification does not provide any guidance for one of ordinary skill in the art to understand how small the droplets must be in order to be considered “small”.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 requires “a solution obtained after the reaction may be subjected to a further treatment.”. The use of the phrase “may be” indicates that this is an optional limitation, in other words the solution after the reaction also may not be further treated while still being within the scope of Claim 13. Furthermore it is noted that Claim 1, upon which Claim 13 depends, uses the open ended claim language “A method … comprising”. In other words Claim 1 already allows for optional further treatments to be performed after the reaction. Therefore Claim 13 does not specify a further limitation of Claim 1.
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.
Claim(s) 1-4, 7-11, 13, and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0095197 A1 Richards. Claim 1 requires “A method for the decomposition, removal or destruction of at least one peroxo compound, comprising reacting a peroxo compound with an alkane and SO3.”. Richards discloses a reactor that reacts “The reagents which will be pumped into reactor 110 include:(i) methane … (ii) sulfur trioxide (SO3), … and, (iii) one or more "radical initiators", which in most cases will be sulfur-containing peroxide compounds.” [0030-0033]. Sulfur containing peroxide compounds are understood to be peroxo compounds. It is noted that the method of Richards and the instant application do not share an intended use, that is to say Richards is not directed towards a method of decomposing peroxo compounds, but rather a method of forming methanesulfonic acids which includes decomposing peroxo compounds.
The phrase “A method for the decomposition, removal or destruction of at least one peroxo compound” is considered intended use. MPEP 2111.02.II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”. In this case the limitations of the claimed invention are fully set forth in the body of the claim and the intended use of decomposing, removing or destroying at least one peroxo compound does not suggest structural limitations.
Claim 2 requires “the peroxo compound is selected from the group consisting of inorganic peroxoacids from the group of peroxoacids of boron, silicon, phosphorus, sulfur, nitrogen or carbon, salts of inorganic peroxoacids, hydrogen peroxide and mixtures thereof.”. Richards discloses the use of a group of peroxoacids of sulfur “Good candidates for use as the first peroxide compound (i.e., to simply initiate the chain reaction) include: (i) a compound called "Marshall's acid", which is a symmetric peroxide which effectively has two identical sulfuric acid radicals, attached to each other via a peroxide bond; … (ii) "methyl-Marshall's acid", which is Marshall's acid with a single methyl group bonded to one of the sulfuric groups; … (iii) di-methyl-sulfonyl peroxide (abbreviated as DMSP), which also can be called "di-methyl-Marshall's acid", since it has two methyl groups added to Marshall's acid (one at each end). … The list above is not exhaustive, and other nonsymmetric peroxide compounds can be used, such as a compound called Caro's acid” [0038-0042].
Claim 3 requires “the peroxo compound is synthesized by adding H2O2 to a compound selected from the group consisting of sulfuric acid, oleum, SO3, methanesulfonic acid, inorganic oxoacids, salts of inorganic oxoacids, phosphoric acid, salts of phosphoric acid, boric acid, salts of boric acid, and mixtures thereof.”. The present specification indicates that Caro’s acid and Marshall’s acid is typically synthesized from the reaction of H2O2 and either sulfuric acid or chlorosulfuric acid, an inorganic oxoacid, respectively [Page 3, Lines 8-14]. Therefore in the method of Richards at least the Marshall’s acid or Caro’s acid is synthesized by adding H2O2 to sulfuric acid or an inorganic oxoacid, even if this step is performed by the chemical manufacturer of the acid reagents.
Claim 4 requires “mixtures of the peroxo compounds are used”. Richards discloses “it may be preferable to inject (either continuously, or intermittently) a mixture of (or a cycling pattern which includes) two or more different peroxide compounds” [0037].
Claim 7 requires “the alkane is methane, ethane, propane and or butane.”. Richards discloses methane “The reagents which will be pumped into reactor 110 include: (i) methane” [0030-0031].
Claim 8 requires “the reaction mixture comprises methanesulfonic acid”. Richards is directed to a method of producing methanesulfonic acid and therefore it is understood that the reaction mixture will comprise it shortly after the reaction begins.
Claim 9 requires “the method is performed at a temperature of from 25 °C to 100, and/or wherein the method is performed at a pressure of from 10 to 200 bar.”. Richards discloses “Preferred temperature ranges, for operating the MSA-forming reactor 110, usually will be about 40 to 90 С,
unless and until results in continuous-flow pilot plants indicate otherwise. The minimal pressure range, for small systems, usually will be at least about 40 bar (i.e., 40 times standard barometric pressure); for larger systems, pressures may exceed 100 bar” [0048].
Claim 10 requires “the method is a continuous process and the peroxo compound is dosed continuously into the reaction mixture, or wherein the method is carried out as batch process and the peroxo compound is added batchwise to one or more reactors.”. Richards discloses “it may be preferable to inject (either continuously, or intermittently) a mixture of (or a cycling pattern which includes) two or more different peroxide compounds” [0037].
Claim 11 requires “the method is performed in one or several reactors operated in a cascade of reactors, and/or wherein the reactors used in batch or continuous operation of the method are selected from the list group consisting of a continuously stirred tank reactor, an air lift reactor, a bubble column reactor, a trickle bed reactor, a pipe reactor and combinations thereof.”. Richards discloses a single reactor which reacts SO3, methane, and peroxides in Figure 1.
Claim 13 requires “a solution obtained after the reaction may be subjected to a further treatment.”. Richards discloses further treating in a reactor 120 “the initial "rich acid" stream
which emerges from the MSA-forming reactor 110 will necessarily contain substantial quantities of unreacted methane (as a heated gas that will be "entrained" in the hot liquid output stream), and unreacted SO3. To remove those unreacted components from the initial "rich acid" stream, they are passed through one or more devices, subassemblies, and processes, which are grouped together and collectively referred to as "evaporator 120" in FIG. 1.” [0053-0054].
Claim 15 requires “no additional reducing agents are used in the reaction and at the end of the reaction.”. Richards is silent towards reducing agents and therefore it is understood that they are not utilized in the reaction or after the reaction.
Claim 16 requires “the peroxo compound comprising comprises sulfur, phosphor, nitrogen, boron and/or hydrogen peroxide, and the alkane is methane.”. Richards discloses the peroxo compound comprises sulfur (see Claim 2) and the alkane is methane (see Claim 7).
Claim(s) 1, 6, 12, 14, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20200115332 A1 Ott et al. Claim 1 requires “A method for the decomposition, removal or destruction of at least one peroxo compound, comprising reacting a peroxo compound with an alkane and SO3.”. Ott et al. discloses “A particular embodiment of the invention comprises the activation of methane at a pressure of circa 100 bar in a solution of fuming sulfuric acid (SO3/H2SO4) of different concentrations (15 to 60%) with circa 1 mol % pre-catalyst comprising a hydrogen peroxide derivative (FIG. 1A).” [0049].
Claim 6 requires “the amount of peroxo compound used is in the range from 0.1 to 4.0 wt% H2O2 equivalents.”. It is understood that Claim 6 requires the peroxo compound in 0.1 to 4.0 wt% H2O2 equivalents as described in the instant application specification page 4, lines 6-9; in other words Claim 6 does not require H2O2 per se, but rather O-O bonds in amount that corresponds to 0.1-4.0 wt. % of the mixture if the same amount of moles of H2O2 were used for the calculation. Ott et al. discloses 0.12 wt. % H2O2 (see Claim 5, below).
Claim 12 requires “SO3 is added at least in a stoichiometric amount with respect to the peroxo compound to be removed, at the time of dosing”. Claim 12 does not have a definite meaning (see 112b rejection, above) however it is noted that Ott et al. and the instant application similarly add an excess of SO3 compared to H2O2 (see Claim 5, below).
Claim 14 requires “the amount of peroxo compound at the beginning of the method is reduced by at least 25 %.”. Ott et al. does not disclose the final amount of the peroxo compound however considering that the same reactants are reacted for a similar time at the same temperature (see Claim 5, below) a similar decomposition of H2O2 is expected.
Claim 24 requires “the peroxo compound comprises sulfur, phosphor, nitrogen, boron and/or hydrogen peroxide, and the alkane is methane.”. Ott et al. discloses a reaction between hydrogen peroxide and methane (see Claim 5, below). Additionally they disclose that hydrogen peroxide reacts to form monomethyl sulfonyl peroxide (“The asymmetric monomethyl sulfonyl peroxide (MMSP) was identified in the pre-catalyst mixture.” [0052]) which is identified as a sulfur containing peroxo compound.
Claim Rejections - 35 USC § 102/103
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.
Claim(s) 5 and 17-23 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 20200115332 A1 Ott et al. Claim 5 requires “a gas phase is obtained after the method, and said gas phase contains CO2 and/or CO.”. Ott et al. does not explicitly disclose a gas phase. However, a gas phase comprising CO2 and/or CO is understood to be an inherent property of reacting methane, SO3, sulfuric acid, and a peroxide compound together. The instant application specification discloses 5 comparative examples of a reaction between methane, SO3 and hydrogen peroxide that produced no or negligible amounts of CO2/CO and 4 examples of a reaction between methane, SO3, sulfuric acid, and hydrogen peroxide that produced a gas phase comprising a majority of CO2/CO. Ott et al. similarly discloses a reaction between methane, SO3, sulfuric acid, and hydrogen peroxide (detailed below). It is not reasonable to expect that the same reaction will have different products; it has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps — it would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”) (emphasis in original).
Instant Application Specification, Example 3 [Page 16]
Ott et al. Example 1 [0079]
Amount of methanesulfonic acid
33.97 g (32.5 wt. %)
2.04 g (0.76 wt. %) initial, 62.2 g (22.2 wt. %) final
Amount of SO3
19.65 g (18.8 wt. %)
83.6 g (31 wt. %)
Amount of CH4
99 bar
92.6 bar
Amount of H2O-2
1.36 g (1.3 wt. %)
0.31 g (0.12 wt. %)
Amount of H2SO4
49.1 g (46.9 wt. %)
183.5 g (68 wt. %)
Amount of H2O
0.59 (0.56 wt. %)
0.21 g (0.078 wt. %)
Temperature
50 °C
50 °C
Time
Undisclosed but likely 19.5 hours as the other examples (1 and 4)
16 hours
* wt. % calculated based on the mass of liquid phase reactants (does not include CH4)
As can be seen above the instant application and Ott et al. similarly disclose a reaction between methanesulfonic acid, SO3, methane, hydrogen peroxide, sulfuric acid, water, and no other components at the same temperature and for a similar time period. The only reasonable expectation is that the same products (in slightly different amounts due to the difference in wt. % of the reactants) are formed. This includes gaseous CO-2/CO. Or alternatively, whatever differences may exist in the amount of CO2/CO generated in the method of Ott et al. (no such concession is given), would have been small and obvious for one of ordinary skill in the art to have achieved.
Claim 17 requires “A method for manufacturing CO2 and/or CO from a peroxo compound, comprising reacting peroxo compound with an alkane and SO3.” It is noted that the body of Claim 17 is identical to the body of Claim 1, and they differ only by the preamble. The preamble of a Claim is not given patentable weight unless it suggests a structural or procedural limitation. Here the preamble of Claim 17 suggests that CO2 or CO must be produced by the method. Ott et al. does not explicitly disclose the production of CO2 or CO, however this is understood to be inherent to the method and/or producing CO2/CO upon conducting the claimed method would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (see the analysis of Claim 5, above).
Claim 18 requires “the amount of peroxo compound used is in the range from 0.1 to 4.0 wt% H2O2 equivalent, and/or where-in the method is performed at a temperature of from 25 °C to 100 °C, and/or wherein the method is performed at a pressure of from 10 to 200 bar.”. Ott et al. discloses 0.12 wt. % H2O2, 50 °C, and about 100 bar (see Claim 5, above).
Claim 19 requires “the amount of peroxo compound used is in the range from 0.5 to 3 wt% H2O2 equivalent.”. Ott et al. discloses “Preferably the pre-catalyst is employed in an amount of from 0.01 mol % to 30 mol %, based on the amount of sulfur trioxide.” [0033]. Using the amount of SO3 disclosed in Example 1 (see Claim 5, above) corresponds to an amount of H2O2 of between 0.0036 and 10.66 grams or 0.0013 to 3.96 wt. %, which fully encompasses the range claimed.
Claim 20 requires “the reaction mixture contains methanesulfonic acid”. Ott et al. discloses methanesulfonic acid as part of the precatalyst mixture “The pre-catalyst was prepared by dropwise addition of 464 µL of hydrogen peroxide (60%) over a cold mixture (0° C.) of 12 mL sulfuric acid (98%) and 1.38 mL MSA (99.5%).” [0079].
Claim 21 requires “the method is a continuous process and the peroxo compound is dosed continuously into the reaction mixture, or wherein the method is carried out as batch process and the peroxo compound is added batchwise to one or more reactors.”. Ott et al. discloses both continuous and batch reactions “For production in a pilot plant, the reaction may be carried out in continuous reactors (FIG. 1B).” [0049] and “400 mL batch reactors were used to carry out a detailed investigation of the reaction mechanism and the reaction optimization (Table 1)” [0050].
Claim 22 requires “SO3 is added at least in a stoichiometric amount with respect to the peroxo compound, at the time of dosing.”. Claim 22 does not have a definite meaning (see 112b rejection, above) however it is noted that Ott et al. and the instant application similarly add an excess of SO3 compared to H2O2 (see Claim 5, above).
Claim 23 requires “the reaction mixture is dispersed into small droplets, and/or wherein a fixed bed, Raschig Rings, and/or structured packings are used.”. The instant application specification discloses that small droplets can be formed via stirring or a nozzle [Page 13, Lines 2-3]. Although Ott et al. does not explicitly disclose small droplets, they similarly identify the problem of liquid-gas mass transport (“Diffusion of methane into the mixture is key in the conversions to MSA, propellers with gas diffusion must be used.” [0050]) and suggest strong stirring to fix the problem. Additionally Example 1 uses a stirring rate of 1,000 rpm [0079]; this stirring would have produced the required small droplets.
Conclusion
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/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736