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 Claims
Claims 1 -3, 6, 8, 10 – 16, 18, 19, 22, 24 – 26, 29 and 30 are pending.
Claims 12, 13, 14 and 18 are objected
Claims 1 -3, 6, 8, 10, 11, 15, 16, 19, 22, 24 – 26, 29 and 30 are rejected
Claim Rejections - 35 USC § 112
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.
Claim 2 is rejected under 35 U.S.C. 112(d), 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 2 recites: “the acetic molecular sieve catalyst comprises an acidic molecular sieve.” The language is redundant, and is not further limiting the acidic molecular sieve catalyst. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 8, 16, 19 and 22 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 16, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 19, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 22 is indefinite because a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claim 22 recites the broad recitation: “reaction temperature is 60°C to 260°C;a reaction pressure is 0.1 MPa to 10 MPa; and in the raw materials, a ratio of a total mole number of the methyl methoxyacetate and the methoxyacetic acid to a mole number of the water is 1:2 to 1:20”, and the claim also recites: “preferably, the reaction temperature is 130°C to 200C;the reaction pressure is 0.1 MPa to 0.3 MPa; and in the raw materials, the ratio of the total mole number of the methyl methoxyacetate and the methoxyacetic acid to the mole number of the water is 1:3 to 1:8 and a molar ratio of the methyl methoxyacetate to the methoxyacetic acid is 4:1 to 9:1: which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shi Lei et al. (CN 107602388) (Lei). (see English translation).
The rejected claims cover, inter alia, a method for preparing glycolic acid and methyl glycolate through a hydrolysis of methyl methoxyacetate and methoxyacetic acid, comprising: allowing raw materials comprising the methyl methoxyacetate, the methoxyacetic acid, and water to a contact and a reaction with a catalyst to produce the glycolic acid and the methyl glycolate, wherein the catalyst is one selected from the group consisting of a solid acid catalyst, a liquid acid catalyst, a solid base catalyst, and a liquid base catalyst.
Dependent claim 15 limits the catalyst to a liquid acid catalyst. Dependent claims 16 further limit the liquid acid catalyst to one selected from the group consisting of sulfuric acid, hydrochloric acid, nitric acid, and phosphoric acid.
However, Lei discloses a method for preparing methyl glycolate and haloalkane as a byproduct. Methyl glycolate is prepared by reacting methyl methoxyacetate with halogens and their hydrides, and by reacting methyl methoxyacetate with hydrohalic acid or halogens. (pp, 7, [0035]). The halide is one or more selected from Br2, Cl2, HBr, HBrO, HF, HCl, HClO, and HI. (pp. 7, [0036]). Preferably, the hydride are HBr, HF and HCl. (pp. 8, [0041]). The reaction the hydrohalic acid serves as both a reactant and catalyst. (pp. 8, [0045]). Examples 1 – 3 and 5 disclose the reaction with the halogen hydrides. Applicant is reminded that hydroiodic halogens are a solution of the HI in water; as such, HCl, HBr and HF are solutions in water.
Additionally, with regard to the methoxyacetic acid (methoxy ethanoic acid) the Examiner continues to refer to the teaching of Lei. The method of Lei uses strong liquid acids. It is generally known by one of ordinary skill in the art before the effective filing date of the instantly claimed invention, that the acids of Lei, with heat, will cause acidic cleavage. Specifically ether cleavage reaction takes place with the strong acid, converting the methyl ether functional group into a hydroxyl group, thus producing glycolic acid.
The difference between Lei et al. and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Lei et al. teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill before the effective filing date of the instantly claimed invention (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
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, 2, 3, 6, 8, 10, 11, 22, 24, 25, 26, 29 and 30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 13 of copending Application No. 18/275,447 (‘447) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims of the instantly claimed invention covers, inter alia, a method for preparing glycolic acid and methyl glycolate through a hydrolysis of methyl methoxyacetate and methoxyacetic acid, comprising: allowing raw materials comprising the methyl methoxyacetate, the methoxyacetic acid, and water to a contact and a reaction with a catalyst to produce the glycolic acid and the methyl glycolate, wherein the catalyst is any one selected from the group consisting of a solid acid catalyst, a liquid acid catalyst, a solid base catalyst, and a liquid base catalyst. Claim 2, 3, 6, 8, 1 and 11 of the instantly clamed invention further defines the acidic molecular sieve catalyst. Claims 22, 23, 25, 26, 29 and 30 further define the reaction conditions.
Claims 1 of ‘447 cover, inter alai, method for preparing glycolic acid through hydrolysis of alkoxyacetate, comprising: subjecting raw materials comprising the alkoxyacetate and water to a reaction in the presence of an acidic molecular sieve catalyst to produce the glycolic acid, wherein the alkoxyacetate is at least one selected from the group consisting of compounds with a structural formula shown in formula I:
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wherein R1 and R2 each are independently one selected from the group consisting of C1-C5 alkyl groups. Claims 3 – 8 of ‘447 further define the acidic molecular sieve catalyst. Claims 9 – 13 of ‘447 further define the reaction conditions.
The difference between the instantly claimed invention and ‘447 is as follows: process produces glycolic acid through hydrolysis of alkoxyacetate and the catalyst is only and acetic molecular sieve catalyst. While the process of the instantly claimed invention produces glycolic acid and methyl glycolate; the starting reactant is limited to methyl ethoxy acetate and methoxyacetic acid; and the catalyst can be something other than an acidic molecular sieve.
However, methyl methoxyacetate of the instantly claimed invention is encompassed by the alkoxyacetate of ‘447, which according to ‘447 produces glycolic acid in a hydrolysis reaction. Further, with regard to the other catalyst of the instantly claimed invention, there is nothing in the claim to indicate that those catalyst (liquid acid, solid base or liquid base) are combined with the acidic molecular sieve catalyst. As such, is can be presumed by one having ordinary skill in the art before the effective filing date of the instantly claimed reaction that only one type of catalyst is used during a reaction. Specifically, there is a hydrolysis reaction of the instantly claimed invention where the only catalyst in use is the acidic molecular sieve catalyst. Therefore, the claims of copending application ‘447 are encompassed by the claims of the instantly claimed invention. Further, the claims of the instantly claimed invention and those of ‘447 are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 12, 13, 14 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
None of the prior art of record teaches or suggest a method for preparing glycolic acid and methyl glycolate through a hydrolysis of methyl methoxyacetate and methoxyacetic acid, comprising: allowing raw materials comprising the methyl methoxyacetate, the methoxyacetic acid, and water to a contact and a reaction with a catalyst to produce the glycolic acid and the methyl glycolate, wherein the catalyst is one selected from the group consisting of a solid acid catalyst, a solid base catalyst, and a liquid base catalyst.
The Examiner has considered the cited references and conducted a thorough search of the appropriate data bases for the claimed subject matter and did not discover any reference which anticipates the claimed subject matter or would form a basis for concluding the subject matter would have been obvious.
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN109603907 ((Lv, et al.) See English translation) discloses the hydrolysis of methyl glycolate to prepare glycolic acid in the presence of a cation resin catalyst. The cation resin catalyst taking styrene as monomer, divinylbenzene as the cross-linking agent, pore-forming agent, initiator and dispersant suspension copolymerization system, copolymerization reaction to prepare the copolymer white bass, hole cleaning, sulfonation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. 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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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692