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 .
OFFICE ACTION
This Office action is responsive to Applicant's preliminary amendment, filed Jan. 31, 2024.
Claims 1-10 are pending.
Priority
This application filed 01/31/2024 is a National Stage entry of PCT/KR2023/006789 , International Filing Date: 05/18/2023 claims foreign priority to 10-2022-0115926, filed 09/14/2022.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) filed on have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
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, 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.
Claims 1- 2, 7 -10 are rejected under 35 U.S.C. 103 as being unpatentable over CN101255109, 2011, by Huang et al. (the ‘109 publication”; cited by Applicants in IDS; machine English translation provided herewith).
The ‘109 publication discloses a process of preparing an acrylic acid comprising supplying a reaction production stream prepared by a dehydration reaction of a lactic acid under inert gas, to an extraction column, and in the extraction column, using an extractant refluxing, separating a discharge stream comprising acrylic acid and supplying the separated stream to an extraction recovery column, which is a rectification column – a distillation column for repeated vaporization-condensation cycles which corresponds equivalent to distillations steps in separate columns- and separating acrylic acid in purity, of 94%. The ‘109 publication further teaches that the reaction product is a condensate and condensed through a cooling towers (abstract; page 4-7 of provided translation and examples; Fig.1).
Regarding instant claims 2, 7, the ‘109 publication teaches that the product resulted in the dehydration catalytic reaction is cooled by the heat exchanger 1 and the temperature reaches 120° C (page 8).
Regarding instant claims 8-10, the example 1 on page 8-9 shows separation of unreacted lactic acid and separation of the extraction solvent:
Example 1
(1) The lactic acid aqueous solution with a mass fraction of 50% is vaporized to reach 180° C. through the gas-liquid heat exchanger I1.
(2) Heat nitrogen to 180°C through heat exchanger II2, and mix with lactic acid-water mixed steam. The mixed gas is heated to the required temperature of 350°C through the heat exchanger III3.
(3) The heated mixed gas enters the gas-solid catalytic reactor 6 for catalytic reaction and dehydration to obtain reaction product gas. Gas-solid catalytic reactor 6 adopts an isothermal tubular fixed-bed reactor with a tube diameter of 30mm and a length of 3000mm. The heating medium is molten salt. The catalyst uses 1.5kgK/Y molecular sieve, and the bulk density of the molecular sieve is 1.0g/ml , the catalytic reaction temperature is 350°C, the mass space velocity of the raw material is 3.0h -1 , and the reaction pressure is 1.5MPa. The production method of K/Y molecular sieve: mix 0.4532kg KNO 3 in 20L water, then mix with 10kg NaY molecular sieve, heat and stir at 80°C for 4h, dry in an oven at 100°C for 24h, put the dried powder into a muffle furnace and roast at 550°C for 4h , crushed into tablets, and sieved with 30-50 mesh.
(4) The reaction product gas mainly contains acrylic acid, water, lactic acid, propionic acid and acetaldehyde. The gas from the dehydration catalytic reaction is cooled by the heat exchanger 1 and the temperature reaches 120° C., and enters the gas-liquid separator 5 . The vast majority of acrylic acid, water and unreacted lactic acid gather in the bottom of the gas-liquid separator 5 in the form of solution, while gaseous substances enter the acetaldehyde absorption tower 8 . A cooler is provided at the bottom of the gas-liquid separator 5 to reduce the acrylic acid solution to 80° C., with a volume fraction of 40%.
(5) The acrylic acid solution at the bottom of the gas-liquid separator 5 enters the stripping tower 7 from the top of the stripping tower, and acetaldehyde is removed by stripping. The carrier gas used for air stripping is nitrogen, the absolute pressure at the top of the tower is controlled at about 300mmHg, the temperature at the top of the tower is 60°C, and the mass concentration of acetaldehyde after removal of acetaldehyde is less than 150mg/kg.
(6) The acrylic acid solution coming out from the stripping tower 7 enters the azeotropic tower 10, and the entraining agent adopts toluene, and the acrylic acid whose mass concentration is 90% is obtained after the azeotropy.
(7) The azeotropic acrylic acid enters the rectification tower 14 to obtain a crude acrylic acid product with a purity of 94%.
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Fig 1 of the ‘109 publication.
The difference between the method for producing acrylic acid disclosed by the prior art of the ‘109 publication and the instantly claimed method in that the prior art does not teach two- stage cooling by a first and a second colling tower; the stream resulted from the colling or extraction column as upper stream or lower stream; operating pressure of the cooling columns.
Regarding the limitation of cooling by a first and a second colling tower, the prior art teaches in Fig 1 multiple heat exchangers ( I-II) for processing the product steam and separate the product. Therefore, the prior art relied upon, and knowledge generally available in the art before the effective filing date provide some suggestion that would have motivated the skilled artisan to utilize multiple heat exchangers for cooling of the product stream. As such, there would be a reasonable expectation of success that a cooling column may be substituted with a multiple cooling columns based on the teachings of the cited prior art.
With regards to the difference of “lower fraction containing acrylic acid and lactic acid by supplying the lower fraction of the first cooling tower and the extract”-while the cited prior art is silent about stream separation comprising acrylic acid as upper stream or bottom stream from extraction column, it would have been prima facie obvious to a person of ordinary skill in the art that it is a design choice to have streams coming from the columns as upper, bottom, and have no effect on overall invention, absent a showing of criticality.
With respect to temperature and pressure in cooling columns, the ‘109 publication teaches cooling the stream at the same temperature of 120° C, and presumably at atmospheric pressure (1kg.cm2). The determination of the appropriate temperature and pressure as an art recognized result-effective variables, is subject to routine optimization in the course of modification of the process of the ‘109 publication.
Furthermore, pertaining to the pressure 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 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.
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.
1.Claims 1-10 in the instant application are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims 1-10 of co-pending US application 18/293,604. Although the conflicting claims are not identical, they are not patentably distinct from each other. That is, the instant claims and the claims of the ‘’604 application are not independent and distinct inventions because they are drawn to the same subject matter and the claims have been drafted with substantial overlap.
The claims of instant application and co-pending application are drawn to a process of making acrylic acid, wherein co-pending application is broader in scope than the instant claims. The difference of scope, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of co-pending application.
This is provisional obviousness-type double patenting rejection because the conflicting claims have not been patented.
2.Claims 1-10 in the instant application are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims 1-11 of co-pending US application 18/293,259. Although the conflicting claims are not identical, they are not patentably distinct from each other. That is, the instant claims and the claims of the ‘’259 application are not independent and distinct inventions because they are drawn to the same subject matter and the claims have been drafted with substantial overlap.
The claims of instant application and co-pending application are drawn to a process of making acrylic acid, wherein co-pending application is broader in scope than the instant claims.
This is provisional obviousness-type double patenting rejection because the conflicting claims have not been patented.
3. Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12583812.
Although the claims at issue are not identical, they are not patentably distinct from each other because both instant claims and the claims of the ‘812 patent are drawn to a process of making acrylic acid, and the claims have been drafted with substantial overlap.
Conclusion
Claims 1-10 are rejected.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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