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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 10 is 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 10 recites the limitation “step (i) is performed in the presence of at least one further monomer in order to obtain a polycarbonate” in lines 1-2, which is indefinite because it is unclear how it further limits “The process of claim 9” because claim 9 recites the limitation “a process for preparing polycarbonate comprising the steps of (i) obtaining a ortho,para-, ortho,ortho- and/or para,para-bisphenol A according to the process of claim 1 and polymerizing the ortho,para-, ortho,ortho- and/or para,para-bisphenol A obtained in step (i)” in lines 1-4, which means that step (i) is not a step that can obtain a polycarbonate, and that it is the step of polymerizing that obtains a polycarbonate. Therefore, for further consideration of the claims, this limitation is interpreted as “the step of polymerizing is performed in the presence of at least one further monomer in order to obtain a polycarbonate”.
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 1-4 and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over De Brouwer et al. (WO 2012/150560 A1, cited in IDS, made of record on 06/30/2023).
Regarding claims 1, 7, and 8, De Brouwer teaches a method for the production of bisphenol A comprising contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter, wherein the method does not comprises a pretreatment and/purification step for the phenol and ketone [0017], wherein the ketone is acetone [0109, 0110, 0112], wherein the ketone reactant can be commercial grade or better [0112], wherein as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0112], where in the production of bisphenol A, phenol and acetone reactants can contain impurities [0099], wherein these impurities can deactivate the catalyst system, resulting in slower reaction rates and shorter catalyst lifetimes [0099], wherein the promoter catalyst system can tolerate impurities in reactant and/or recycle streams [0101], wherein the dimethyl thiazolidine attached promoter catalyst system can tolerate phenol and alcohol impurities without reducing the lifetime of the catalyst system [0127], wherein the dimethyl thiazolidine attached promoter catalyst system can tolerate other impurities detrimental to conventional catalyst systems [0127], wherein the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], wherein the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138], which reads on a process for preparing ortho,para and/or para,para-bisphenol A comprising the step of (a) condensing raw phenol and raw acetone in the presence of a catalyst system, wherein the catalyst system comprises an ion exchange resin catalyst and a sulfur containing cocatalyst, wherein the amount of cumene present in step (a) is higher than 0 ppm with respect to the total weight of the raw acetone, wherein the sulfur containing cocatalyst is selected from thiazolidines, wherein the cumene present in step (a) is introduced into the process step (a) as an impurity in the raw acetone.
De Brower does not teach a specific embodiment wherein the amount of cumene present in step (a) is higher than 1 ppm with respect to the total weight of the raw acetone, and does not teach a specific embodiment wherein cumene present in step (a) is introduced into the process step (a) as an impurity in the raw acetone and/or raw phenol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of cumene in De Brouwer’s acetone in De Brouwer’s method to be greater than 1 ppm with respect to the weight of De Brouwer’s acetone. The proposed modification would read on wherein the amount of cumene present in step (a) is higher than 1 ppm with respect to the total weight of the raw acetone as claimed, wherein the cumene present in step (a) is introduced into the process step (a) as an impurity in the raw acetone as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing the lifetime of De Bouwer’s catalyst system in De Bouwer’s method, and for optimizing the reaction rates in De Bouwer’s method because De Bouwer teaches that the method does not comprises a pretreatment and/purification step for the phenol and ketone [0017], that the ketone is acetone [0109, 0110, 0112], that the ketone reactant can be commercial grade or better [0112], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0112], that in the production of bisphenol A, phenol and acetone reactants can contain impurities [0099], that these impurities can deactivate the catalyst system, resulting in slower reaction rates and shorter catalyst lifetimes [0099], that the promoter catalyst system can tolerate impurities in reactant and/or recycle streams [0101], that the dimethyl thiazolidine attached promoter catalyst system can tolerate phenol and alcohol impurities without reducing the lifetime of the catalyst system [0127], and that the dimethyl thiazolidine attached promoter catalyst system can tolerate other impurities detrimental to conventional catalyst systems [0127], which means that the amount of cumene in De Brouwer’s acetone in De Brouwer’s method in ppm with respect to the weight of De Brouwer’s acetone would have affected the lifetime of De Bouwer’s catalyst system in De Bouwer’s method, and the reaction rates in De Bouwer’s method.
Regarding claim 2, De Brouwer teaches that the dimethyl thiazolidine is a promoter [0120], that in one aspect, at least a portion of the promoter is ionically bound to the available acid sites of the ion exchange resin [0125], that in another aspect, at least a portion of the promoter is covalently bound to at least a portion of the ion exchange resin [0125], that in still another aspect, all or substantially all of the promoter is at least covalently bound to the ion exchange resin [0125], that in yet another aspect, the degree of attachment or binding between a promoter and an ion exchange resin can vary, such as, for example, covalent binding, ionic binding, and/or other interactions or attraction forces [0125], and that the promoter is not intended to be limited to any particular degree of attachment [0125], which means that optionally, at least a portion of De Brouwer’s dimethyl thiazolidine is neither ionically bound nor covalently bound to De Brouwer’s ion exchange resin, which optionally reads on wherein at least part of the sulfur containing cocatalyst is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a) as claimed.
De Brouwer does not teach a specific embodiment wherein at least part of the sulfur containing cocatalyst is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select De Brouwer’s dimethyl thiazolindine and De Brouwer’s ion exchange resin in De Brouwer’s method, such that at least a portion of De Brouwer’s dimethyl thiazolindine is neither ionically bound nor covalently bound to De Brouwer’s ion exchange resin. The proposed modification would read on wherein at least part of the sulfur containing cocatalyst is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because De Brouwer teaches that the dimethyl thiazolidine is a promoter [0120], that in one aspect, at least a portion of the promoter is ionically bound to the available acid sites of the ion exchange resin [0125], that in another aspect, at least a portion of the promoter is covalently bound to at least a portion of the ion exchange resin [0125], that in still another aspect, all or substantially all of the promoter is at least covalently bound to the ion exchange resin [0125], that in yet another aspect, the degree of attachment or binding between a promoter and an ion exchange resin can vary, such as, for example, covalent binding, ionic binding, and/or other interactions or attraction forces [0125], and that the promoter is not intended to be limited to any particular degree of attachment [0125], which means that optionally, at least a portion of De Brouwer’s dimethyl thiazolidine is neither ionically bound nor covalently bound to De Brouwer’s ion exchange resin. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 3, De Brouwer teaches that the method does not comprises a pretreatment and/purification step for the phenol and ketone [0017], that the ketone is acetone [0109, 0110, 0112], that the phenol starting materials can be commercial grade or better [0107], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0107], that in the production of bisphenol A, phenol and acetone reactants can contain impurities [0099], that these impurities can deactivate the catalyst system, resulting in slower reaction rates and shorter catalyst lifetimes [0099], that the promoter catalyst system can tolerate impurities in reactant and/or recycle streams [0101], that the dimethyl thiazolidine attached promoter catalyst system can tolerate phenol and alcohol impurities without reducing the lifetime of the catalyst system [0127], and that the dimethyl thiazolidine attached promoter catalyst system can tolerate other impurities detrimental to conventional catalyst systems [0127], which reads on wherein the amount of cumene present in step (a) is higher than 0 ppm with respect to the total weight of the raw acetone.
De Brower does not teach that the amount of cumene present in step (a) is higher than 1 ppm and equal to or lower than 5000 ppm with respect to the total mass of the raw phenol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of cumene in De Brouwer’s phenol in De Brouwer’s method to be greater than 1 ppm and less than 5000 ppm with respect to the total weight of De Brouwer’s phenol. The proposed modification would read on wherein the amount of cumene present in step (a) is higher than 1 ppm and equal to or lower than 5000 ppm with respect to the total mass of the raw phenol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing the lifetime of De Bouwer’s catalyst system in De Bouwer’s method, and for optimizing the reaction rates in De Bouwer’s method because De Bouwer teaches that the method does not comprises a pretreatment and/purification step for the phenol and ketone [0017], that the ketone is acetone [0109, 0110, 0112], that the phenol starting materials can be commercial grade or better [0107], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0107], that in the production of bisphenol A, phenol and acetone reactants can contain impurities [0099], that these impurities can deactivate the catalyst system, resulting in slower reaction rates and shorter catalyst lifetimes [0099], that the promoter catalyst system can tolerate impurities in reactant and/or recycle streams [0101], that the dimethyl thiazolidine attached promoter catalyst system can tolerate phenol and alcohol impurities without reducing the lifetime of the catalyst system [0127], and that the dimethyl thiazolidine attached promoter catalyst system can tolerate other impurities detrimental to conventional catalyst systems [0127], which means that the amount of cumene in De Brouwer’s phenol in De Brouwer’s method in ppm with respect to the total weight of De Brouwer’s phenol would have affected the lifetime of De Bouwer’s catalyst system in De Bouwer’s method, and the reaction rates in De Bouwer’s method.
Regarding claim 4, De Brouwer teaches that the method for the production of bisphenol A comprises contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter [0017], that the ketone is acetone [0109, 0110, 0112], that the bisphenol A can comprise any combination of components, purities, and properties described therein, including various aspects wherein any individual component, purity, and/or property, such as, for example, organic purity can be either included or excluded from the composition [0152], that thus, combinations wherein comprising any one or more components, purities, and/or properties, but excluding other components, purities, and/or properties recited therein are contemplated [0152], that the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], that the ketone reactant can be commercial grade or better [0112], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0112], and that the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138], which suggests separating the product of De Brouwer’s step of contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter in De Brouwer’s method into a fraction comprising De Brouwer’s p,p-bisphenol A and o,p-bisphenol A and into a fraction comprising De Brouwer’s phenol that is unreacted, De Brouwer’s ketone that is acetone that is unreacted, and De Brouwer’s impurities that comprise cumene, which suggests wherein the process further comprises the following step: (b) separating the mixture obtained after step (a) into a bisphenol A fraction comprising at least one of ortho,para- or para,para-bisphenol A and a phenol fraction, wherein the phenol fraction comprises unreacted phenol and cumene as claimed.
De Brouwer does not teach a specific embodiment wherein the process further comprises the following step: (b) separating the mixture obtained after step (a) into a bisphenol A fraction comprising at least one of ortho,para-, ortho,ortho-, or para,para-bisphenol A and a phenol fraction, wherein the phenol fraction comprises unreacted phenol and cumene. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to separate the product of De Brouwer’s step of contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter in De Brouwer’s method into a fraction comprising De Brouwer’s p,p-bisphenol A and o,p-bisphenol A and into a fraction comprising De Brouwer’s phenol that is unreacted, De Brouwer’s ketone that is acetone that is unreacted, and De Brouwer’s impurities that comprise cumene. The proposed modification would read on wherein the process further comprises the following step: (b) separating the mixture obtained after step (a) into a bisphenol A fraction comprising at least one of ortho,para- or para,para-bisphenol A and a phenol fraction, wherein the phenol fraction comprises unreacted phenol and cumene as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for purifying De Brouwer’s bisphenol A that is produced in De Brouwer’s method for the production of bisphenol A because De Brouwer teaches that the method for the production of bisphenol A comprises contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter [0017], that the ketone is acetone [0109, 0110, 0112], that the bisphenol A can comprise any combination of components, purities, and properties described therein, including various aspects wherein any individual component, purity, and/or property, such as, for example, organic purity can be either included or excluded from the composition [0152], that thus, combinations wherein comprising any one or more components, purities, and/or properties, but excluding other components, purities, and/or properties recited therein are contemplated [0152], that the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], that the ketone reactant can be commercial grade or better [0112], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0112], and that the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138].
Regarding claim 6, De Brouwer teaches that when using a recycled phenol stream, the dimethyl thiazolidine catalyst system can provide levels of p,p-bisphenol A that are within about 10 %, within about 8 %, without about 6 %, within about 4 %, or within about 2 % of values obtained using a fresh phenol stream [0134], that when using a recycled phenol stream, the dimethyl thiazolidine catalyst system can provide levels of p,p-bisphenol A that are within about 5 % of values obtained using a fresh phenol stream [0134], that the method for the production of bisphenol A comprises contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter [0017], that the ketone is acetone [0109, 0110, 0112], that the bisphenol A can comprise any combination of components, purities, and properties described therein, including various aspects wherein any individual component, purity, and/or property, such as, for example, organic purity can be either included or excluded from the composition [0152], that thus, combinations wherein comprising any one or more components, purities, and/or properties, but excluding other components, purities, and/or properties recited therein are contemplated [0152], that the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], that the ketone reactant can be commercial grade or better [0112], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0112], and that the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138], which optionally reads on wherein the process further comprises the additional step of (c) using at least a part of the phenol fraction obtained in step (b) as educt in step (a).
De Brouwer does not teach a specific embodiment wherein the process further comprises the additional step of (c) using at least a part of the phenol fraction obtained in step (b) as educt in step (a). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to separate the product of De Brouwer’s step of contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter in De Brouwer’s method into a fraction comprising De Brouwer’s p,p-bisphenol A and o,p-bisphenol A and into a fraction comprising De Brouwer’s phenol that is unreacted, De Brouwer’s ketone that is acetone that is unreacted, and De Brouwer’s impurities that comprise cumene, and to use a recycled phenol stream comprising De Brouwer’s phenol that is unreacted with De Brouwer’s phenol in De Brouwer’s step of contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter in De Brouwer’s method. The proposed modification would read on wherein the process further comprises the additional step of (c) using at least a part of the phenol fraction obtained in step (b) as educt in step (a) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for purifying De Brouwer’s bisphenol A that is produced in De Brouwer’s method for the production of bisphenol A, and because it would have been beneficial for reusing unreacted phenol because De Brouwer teaches that when using a recycled phenol stream, the dimethyl thiazolidine catalyst system can provide levels of p,p-bisphenol A that are within about 10 %, within about 8 %, without about 6 %, within about 4 %, or within about 2 % of values obtained using a fresh phenol stream [0134], that when using a recycled phenol stream, the dimethyl thiazolidine catalyst system can provide levels of p,p-bisphenol A that are within about 5 % of values obtained using a fresh phenol stream [0134], that the method for the production of bisphenol A comprises contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter [0017], that the ketone is acetone [0109, 0110, 0112], that the bisphenol A can comprise any combination of components, purities, and properties described therein, including various aspects wherein any individual component, purity, and/or property, such as, for example, organic purity can be either included or excluded from the composition [0152], that thus, combinations wherein comprising any one or more components, purities, and/or properties, but excluding other components, purities, and/or properties recited therein are contemplated [0152], that the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], that the ketone reactant can be commercial grade or better [0112], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0112], and that the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138].
Regarding claim 9, De Brouwer teaches that the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], that the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138], that bisphenol synthesized using the method can be useful in producing polycarbonate [0142], that bisphenol prepared from the method can produce a polycarbonate [0142], that bisphenol A produced using the method can result in polycarbonate materials [0145], and that polycarbonate is produced from bisphenol A prepared by the method [0145], which reads on a process for preparing polycarbonate comprising the steps of (i) obtaining a ortho,para-, and/or para,para-bisphenol A according to the process of claim 1, and (ii) polymerizing the ortho,para-, and/or para,para-bisphenol A obtained in step (i) as claimed.
Regarding claim 10, De Brouwer teaches that the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], that the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138], that the bisphenol A prepared by the method can be used to produce polycarbonate copolymer materials, for example a polyester-polycarbonate copolymer, a polysiloxane-polycarbonate copolymer, an alkylene terephthalate-polycarbonate copolymer, or a combination thereof [0151], and that the bisphenol A prepared by the method can be used to produce other polycarbonate copolymers not specifically recited therein [0151], which reads on wherein step (i) is performed in the presence of at least one further monomer in order to obtain a polycarbonate as claimed.
Regarding claim 11, De Brouwer teaches that the dimethyl thiazolidine is a promoter [0120], that in one aspect, at least a portion of the promoter is ionically bound to the available acid sites of the ion exchange resin [0125], that in another aspect, at least a portion of the promoter is covalently bound to at least a portion of the ion exchange resin [0125], that in still another aspect, all or substantially all of the promoter is at least covalently bound to the ion exchange resin [0125], that in yet another aspect, the degree of attachment or binding between a promoter and an ion exchange resin can vary, such as, for example, covalent binding, ionic binding, and/or other interactions or attraction forces [0125], and that the promoter is not intended to be limited to any particular degree of attachment [0125], which means that optionally, at least a portion of De Brouwer’s dimethyl thiazolidine is neither ionically bound nor covalently bound to De Brouwer’s ion exchange resin, which optionally reads on wherein at least 75 mol-% of the sulfur containing cocatalyst of the catalyst system is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a).
D Brouwer does not teach a specific embodiment wherein at least 75 mol-% of the sulfur containing cocatalyst of the catalyst system is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select De Brouwer’s dimethyl thiazolindine and De Brouwer’s ion exchange resin in De Brouwer’s method, such that at least three-fourths of De Brouwer’s dimethyl thiazolindine is neither ionically bound nor covalently bound to De Brouwer’s ion exchange resin. The proposed modification would read on wherein at least 75 mol-% of the sulfur containing cocatalyst of the catalyst system is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because De Brouwer teaches that the dimethyl thiazolidine is a promoter [0120], that in one aspect, at least a portion of the promoter is ionically bound to the available acid sites of the ion exchange resin [0125], that in another aspect, at least a portion of the promoter is covalently bound to at least a portion of the ion exchange resin [0125], that in still another aspect, all or substantially all of the promoter is at least covalently bound to the ion exchange resin [0125], that in yet another aspect, the degree of attachment or binding between a promoter and an ion exchange resin can vary, such as, for example, covalent binding, ionic binding, and/or other interactions or attraction forces [0125], and that the promoter is not intended to be limited to any particular degree of attachment [0125], which means that optionally, at least a portion of De Brouwer’s dimethyl thiazolidine is neither ionically bound nor covalently bound to De Brouwer’s ion exchange resin. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 12, De Brouwer satisfies the limitation the process according to claim 7, wherein the alkyl sulfide is ethyl sulfide as claimed because claims 7 and 12 do not require the sulfur containing cocatalyst to be selected from alkyl sulfides if the sulfur containing cocatalyst is selected from thiazolidines, and De Brouwer’s teachings read on the sulfur containing cocatalyst is selected from thiazolidines as claimed.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over De Brouwer et al. (WO 2012/150560 A1, cited in IDS, made of record on 06/30/2023) as applied to claim 4, and further in view of Carvill et al. (US 2004/0116751 A1).
Regarding claim 5, De Brouwer renders obvious the process according to claim 4 as explained above.
De Brouwer does not teach that the separation in step (b) is performed using a crystallization technique. However, Carvill teaches that p/p bisphenol may be isolated from the bisphenol containing product stream by adduct crystallization, solvent crystallization, melt crystallization, or a combination of the foregoing isolation methods [0061], that a commercial scale continuous process for the reaction of a ketone with a phenol to form a bisphenol comprises reacting a feed comprising a phenol and a ketone through a modified ion exchange resin catalyst [0004], that the resin is modified by neutralization of the acid sites with a mercapto promoter [0004], that an effluent from a commercial scale continuous reaction of a ketone with a phenol to forma bisphenol comprises phenol, para-para and ortho-para bisphenol [0014], that the ketone is acetone [0033], and that the ketone reactant may contain measurable levels of typical impurities such as acetophenone [0031]. De Brouwer and Carvill are analogous art because both references are in the same field of endeavor of a process for preparing ortho,para- and/or para,para- bisphenol A comprising the step of condensing raw phenol and raw acetone in the presence of a catalyst system comprising an ion exchange resin catalyst and a sulfur containing cocatalyst. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a step of isolating De Brouwer’s bisphenol A produced by De Brouwer’s step of contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter from De Brouwer’s phenol that is unreacted, De Brouwer’s ketone that is acetone that is unreacted, and De Brouwer’s impurities that comprise cumene by adduct crystallization, solvent crystallization, melt crystallization, or a combination of the foregoing isolation methods, as suggested by Carvill. The proposed modification would read on wherein the separation in step (b) is performed using a crystallization technique as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for purifying De Brouwer’s bisphenol A that is produced in De Brouwer’s method for the production of bisphenol A and for providing an effective method of purifying De Brouwer’s bisphenol A because Carvill teaches that p/p bisphenol may be isolated from the bisphenol containing product stream by adduct crystallization, solvent crystallization, melt crystallization, or a combination of the foregoing isolation methods [0061], and that a commercial scale continuous process for the reaction of a ketone with a phenol to form a bisphenol comprises reacting a feed comprising a phenol and a ketone through a modified ion exchange resin catalyst [0004], and because De Brouwer teaches that the method for the production of bisphenol A comprises contacting a phenol and a ketone in the presence of an attached ion exchange resin catalyst comprising a dimethyl thiazolidine promoter [0017], that the ketone is acetone [0109, 0110, 0112], that the bisphenol A can comprise any combination of components, purities, and properties described therein, including various aspects wherein any individual component, purity, and/or property, such as, for example, organic purity can be either included or excluded from the composition [0152], that thus, combinations wherein comprising any one or more components, purities, and/or properties, but excluding other components, purities, and/or properties recited therein are contemplated [0152], that the condensation of phenol and acetone to form bisphenol A can yield multiple isomers of bisphenol A [0136], that the ketone reactant can be commercial grade or better [0112], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as cumene [0112], and that the dimethyl thiazolidine catalyst system can exhibit a higher p,p-bisphenol A to o,p-bisphenol A ratio than a conventional bulk promoter system [0138].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-17 of copending Application No. 18/270,651 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a process for preparing ortho,para-, ortho,ortho- and/or para,para- bisphenol A comprising the step of (a) condensing raw phenol and raw acetone in the presence of a catalyst system, wherein the catalyst system comprises an ion exchange resin catalyst and a sulfur containing cocatalyst, wherein at least part, of the sulfur containing cocatalyst is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a), wherein at least two of the following (A) to (F) are true:(A) the amount of 2-methyl benzofuran present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol; and/or (B) the amount of hydroxyacetone present in step (a) is higher than 1 ppm with respect to the total weight of the sum of the weights of the raw phenol and the raw acetone; and/or (C) the amount of alpha-methylstyrene present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol; and/or (D) the amount of acetophenone present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol; and/or(E) the amount of benzene present in step (a) is higher than 1 ppm with respect to the total weight of the raw acetone; and/or (F) the amount of cumene present in step (a) is higher than 1 ppm with respect to the total weight of the raw acetone (claim 1), which reads on a process for preparing ortho,para-, ortho,ortho-, and/or para,para-bisphenol A comprising the step of (a) condensing raw phenol and raw acetone in the presence of a catalyst system, wherein the catalyst system comprises an ion exchange resin catalyst and a sulfur containing cocatalyst, wherein the amount of cumene present in step (a) is higher than 1 ppm with respect to the total weight of the raw acetone as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767