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 .
DETAILED ACTION
This Office Action is responsive to Applicant's Remarks/After Non-Final rejection, filed April 20, 2026. As filed, claims 1-9 are pending; of which, claims 1 and 8 are currently amended.
Response to Remarks
Applicant’s amendments have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1.The rejection of claims 1-7, 9 under 35 U.S.C. 103 as being unpatentable over Lakkaraju et al. ChemCatChem 2016, 8, 3453 – 3457 is maintained.
Applicant’s arguments filed on 4/20/2026 have been fully considered but they were not persuasive for the following reasons.
Applicants argue that :” that Lakkaraju teaches away from the temperature range as recited in the present claims. Per the MPEP, a prima faciecase of obviousness may also be rebutted by showing the art, in any material respect, teaches away from the claimed invention. MPEP 2144.05.111.B. As noted in the Office Action, Lakkaraju specifies that the process, as taught in that reference, is conducted at a temperature range of 350° C to 390° C and that conversion of formate at temperatures below 350° C were negligible. See Lakkaraju, pg. 3454, para. 1. …Accordingly, Lakkaraju not only fails to disclose the temperature range as recited in the present claims, but states that the conversion at the recited temperature range would result in negligible effects. MPEP 2144.05.111.B. While Lakkaraju does not assert that a lower temperature range is dangerous, it does explicitly state that temperatures below 350° C (considerably higher than the upper bound of the temperature range provided in the present claims) provide negligible results. Further, while Lakkaraju arguably provides disclosure of adjusting reaction conditions such as temperature, times, and best yield conditions, there is no disclosure, teaching, or suggestion that Lakkaraju suggests modifying the temperature to below the temperature range set in Lakkaraju. In fact, Lakkaraju states that temperature below 350° C provide negligible results, arguably teaching other skilled artisans to not modify the temperature below 350° C. Accordingly, a skilled artisan would have no motivation to modify Lakkaraju in a manner that would encompass the temperature range provided for in the present claims. Applicant submits the remaining art of record fails to cure the deficiencies of Lakkaraju.” (Remarks page 6).
As stated in MPEP 716.02 (d) regarding unexpected results commensurate in scope with claimed invention “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).”
In reviewing the instant disclosure, the preparative examples show the reaction conducted at a temperature onset raging 152-162° C and isothermal reaction at 200°C (Table 1 on [0022]).
There are no examples or data of the instant disclosure outside of claimed range of 140-260 °C , showing criticality of instantly claimed temperature and conditions for the synthesis of the same compound as disclosed in the prior art.
As noted in the MPEP 2144.05 (“[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
The Applicant has not shown evidence of substantially improved and unexpected results between the instantly claimed process and the prior art process for producing the same compound from same starting materials and reagents by same steps.
Please note that if Applicant intends to rely on unexpected or unforeseen results, attention is invited to MPEP 716.02. Absent clear, convincing, side-by-side data demonstrating unobviousness vis-a-vis the prior art commensurate with the scope of protection sought and showing that the claimed process and process disclosed by prior art are distinct, the claims are considered prima facie obvious.
The rejection is still deemed proper and is thus maintained.
2.The rejection of claims 1-9 are under 35 U.S.C. 103 as being unpatentable over Lakkaraju et al. ChemCatChem 2016, 8, 3453 – 3457 and further in view of Kaczur, “Formate to Oxalate: A Crucial Step for Conversion of CO2 into Multi-carbon Compounds.” June 2004 is maintained for the same reasons as outlined above.
3. The objection to claims has been addressed by amendment.
Claim Rejections - 35 USC § 103 (maintained)
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 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.
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.
1.Claims 1-7, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lakkaraju et al. ChemCatChem 2016, 8, 3453 – 3457 (cited by Applicants in IDS).
Instant claims are drawn to process for preparing potassium oxalate which
process comprises contacting potassium formate with a base catalyst at a temperature
of from 140 to 260 °C, the base catalyst is a metal hydride.
The article by Lakkaraju discloses a conversion of formate salts of sodium or potassium to the corresponding oxalate, by thermal decomposition at various temperatures mediated by base catalyst such as NaH under inert atmosphere (abstract page 3452, Scheme, Table 1 reproduced below).
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The article by Lakkaraju teaches the quantitative conversion of formate into oxalate could be achieved by simple calcination of molten formate salts in the presence of NaH (page 3456 and Fig, 2; instant claims 1, 2, 4)
Regarding instant claims 4 and 9 the article by Lakkaraju discusses integrated process for convention carbonated to formats and formate to value-added products such as oxalic acid (abstract; page 3454; Scheme 1 and eq. 1 on page 3453).
Regarding instant claims 6 and 7 the prior art teaches on experimental section page 2457 the catalyst (e.g. NaH) in weighed amounts of 2.5% by mass were mixed in a nitrogen glove box.
The difference between the method for converting formate salts to oxalate by heating mediated by metal hydride catalyst disclosed by the prior art and the instantly claimed method in that the prior art teaches performing the reaction at various temperatures ranging from 350-390 °C instead of 140°C to 260 °C as required by instant claims 1 and 3.
Regarding the temperature of the formate coupling to oxalate, the article by Lakkaraju teaches adjusting reaction conditions such as temperature, times, best yield conversion to product yield on page 3452 and various experimental conditions are listed on Table 1. Therefore, the determination of the appropriate temperature formate to oxalate as an art recognized result-effective variables, is subject to routine optimization in the course of modification of the process of the prior art by Lakkaraju.
Furthermore, pertaining to the temperature of a process, it is noted that generally, differences such parameters will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See MPEP 2144.5.
The skilled artisan would have been motivated to modify the reaction conditions as part of routine optimization in attempting to obtain the highest product yield. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to optimize a reaction by varying experimental parameters in search of optimal conditions. See MPEP 2144.05 II.A:
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”)
The instantly claimed process therefore corresponds to the combination of prior art elements according to known methods to yield predictable results. There would have been a reasonable expectation for success since each element retains its intended function in the combination.
Absent factual unexpected, unobvious, and beneficial results, the claimed invention would have been suggested to one skilled in the art and therefore, the instant claimed invention would have been obvious to one skilled in the art.
2.Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lakkaraju et al. ChemCatChem 2016, 8, 3453 – 3457 cited by Applicants in IDS) as applied to claims 1-7, 9 above and further in view of Kaczur, “Formate to Oxalate: A Crucial Step for Conversion of CO2 into Multi-carbon Compounds.” June 2004 (cited in PTO-892 mailed 01/20/2026).
The teachings of the prior art by Lakkaraju. regarding claims 1-7, 9 are discussed above.
The prior art by Lakkaraju do not teach the limitations of claim 8, pertaining to the using additive reducing the potassium formate melting point.
However, the prior art by Kaczur, analogous prior art also drawn to formate to oxalate:, teach the use of small amounts of sodium hydroxide had a beneficial effect, producing oxalate below the melting point of formate (page 1).
In view of the high level of skill in the art, the optimization of a known processes has been herein shown to be prima facie obvious.
"Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results;". See MPEP § 2143.
Thus, the instant claims are obvious over the combined teachings of prior art.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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