DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Claims 1, 3-8 and 19-28 are pending and under current examination.
Amendment necessitated new claim rejection as set forth below.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 3-8 and 19-28 are rejected under 35 U.S.C. 103 as being unpatentable over Nomura (US 20170341070 A1).
Determining the scope and contents of the prior art
Nomura teaches a production method for an oxide organic compound with an example of a carboxylic acid from an aliphatic alcohol or a polyoxyalkylene alkyl ether (same compounds and description as in the instant claims 1, 3-8 and 19-28 with examples) (see 0061-0066, examples and claims for starting alcohol or ether and oxide product) comprising the steps of (1) making Pt/Bi composite catalyst comprising introducing raw material Pt supported on an active carbon as a carrier, a water soluble Bi ion source with example of bismuth oxide as a raw material (a water soluble Bi ion source is added at the start of the process while making the catalyst or in during the process); and (2) reacting aliphatic alcohol or a polyoxyalkylene alkyl ether to a dehydrogenative oxidation reaction in the presence of the composite catalyst Pt/Bi so formed in the reaction system, a water soluble Bi ion source with example of bismuth oxide (is added at the start of the process while making the catalyst or in during the process) and water at pH less than 7, such as 2 or 3 thereby forming carboxylic acid followed by filtration of the composite catalyst from the reaction (i.e., regeneration of the composite catalyst) (see 0161 and examples for regeneration) (Entire application, especially 0015-0019, 0028, 0029, 0039-0041, 0053-0066, 0073 and 0135-0205). The cited prior art further discloses that Bi ion source used in experiment 1, is 0.38g and polyoxyethylene alkyl ether (organic compound) used for making oxide is 265g (100 parts) thus Bi is 0.14 parts (0.38x100/265) relative to 100 parts by mass of the organic compound (reads on 0.01 parts by mass or more and 0.3 parts by mass or less relative to 100 parts by mass of the organic compound of the instant claims 19 and 20) (see examples for amount of Bi relative to the organic compound). The cited prior art further discloses Bi/Pt 0.1 or more or 1.2 or less (reads on the instant claims 21 and 22) (see paragraph 0058).
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(Entire application, especially 0015-0019, 0028, 0029, 0039-0041, 0053-0066, 0073 and 0135-0205).
Ascertaining the differences between the prior art and the claims at issue
Nomura teaches a production method for an oxide organic compound with an example of a carboxylic acid from an aliphatic alcohol or a polyoxyalkylene alkyl ether (same compounds and description as in the instant claims 1, 3-8 and 19-28 with examples) (see 0061-0066, examples and claims for starting alcohol or ether and oxide product) comprising the steps of (1) making Pt/Bi composite catalyst comprising introducing raw material Pt supported on an active carbon as a carrier, a water soluble Bi ion source with example of bismuth oxide as a raw material (a water soluble Bi ion source is added at the start of the process while making the catalyst or in during the process); and (2) reacting aliphatic alcohol or a polyoxyalkylene alkyl ether to a dehydrogenative oxidation reaction in the presence of the composite catalyst Pt/Bi so formed. Thus, the cited prior art differs with respect to carrying oxidation reaction concurrently to formation of composite catalyst.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference, the cited prior art teaches same method of making catalyst from same raw material, same catalyst as well as same oxidation reaction carried out by the catalyst as in the instant claims. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art that the catalyst may be prepared before the oxidation reaction or concurrently with the oxidation reaction, with a reasonable expectation of success that catalyst prepared before reaction or in-situ may result same oxidation reaction.
Further, one step process is obvious over two step process, because in the one pot process the multi-steps manipulated in one step, which mean the reactant and intermediates further proceed to the next step for the completion to achieve the final product. It is well established that batch and continuous processes are not patentably distinct. See, e.g., In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963).
Thus, the cited prior art meets limitation of the instant claims.
Based on the above established facts, it appears that the modification of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Nomura teaches a production method for an oxide organic compound with an example of a carboxylic acid from an aliphatic alcohol or a polyoxyalkylene alkyl ether comprising the steps of (1) making Pt/Bi composite catalyst comprising introducing raw material Pt supported on an active carbon as a carrier, a water soluble Bi ion source with example of bismuth oxide as a raw material (a water soluble Bi ion source is added at the start of the process while making the catalyst or in during the process); and (2) reacting aliphatic alcohol or a polyoxyalkylene alkyl ether to a dehydrogenative oxidation reaction in the presence of the composite catalyst Pt/Bi so formed.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is reasonable expectation of success that catalyst prepared before reaction or in-situ may result same oxidation reaction and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-8 and 19-28 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10058857 B2, since the claims, if allowed, would improperly extend the “right to exclude" already granted in the patent.
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application and claims 1-16 of U.S. Patent No. 10058857 B2 are drawn to same method of making catalyst from same raw material, same catalyst as well as same oxidation reaction carried out by the catalyst with a difference that catalyst prepared before the oxidation reaction or concurrently with the oxidation reaction.
With regards to the above difference, it would have been prima facie obvious to a person of ordinary skill in the art that the catalyst may be prepared before the oxidation reaction or concurrently with the oxidation reaction, with a reasonable expectation of success that catalyst prepared before reaction or in-situ may result same oxidation reaction.
Further, one step process is obvious over two step process, because in the one pot process the multi-steps manipulated in one step, which mean the reactant and intermediates further proceed to the next step for the completion to achieve the final product. It is well established that batch and continuous processes are not patentably distinct. See, e.g., In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963).
Thus, the difference, however, does not constitute a patentable distinction. For the foregoing reasons, the instantly claimed process is made obvious.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See also MPEP § 804.
Response to Arguments
Applicant’s remarks and amendment, filed on 06/02/2026, have been fully considered but not found persuasive.
Applicant’s argument is moot in view of new rejection as set forth above.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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