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 .
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.
Status of Claims
Claims 1-5 and 12-14 are currently under examination. Claims 6-11 and 15-20 are withdrawn from consideration. Claim 1 is amended.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter with respect to claims 1-5 and 12-14 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 1-5 and 12-14 is withdrawn.
New grounds of rejections are set forth below.
New Grounds of Rejections
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al. (CN 108440487 A, published on 08/24/2018; Machine-generated English translation is attached).
Regarding claim 1, Zhou et al. teach a method for preparing cyclic carbonate comprising adding an epoxide compound such as epichlorohydrin (Example 1), a pyrrole quaternary ammonium salt compound having the formula below (claim 7 and [0025]) in a stainless reaction kettle (the instant claimed reactor), introducing CO2, keeping the pressure in the kettle is 0.1 MPa, slowly raising the temperature to 35 0C, reacting for 48 hours, cooling to room temperature, slowly removing the pressure, decompressing and distilling the obtained liquid to obtain cyclic carbonate (Examples 1, 5 and 7):
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As we see above, the N,N-dimethyl-pyrrolidinium bromide corresponds to the instant claimed the catalyst having the formula (1), wherein the instant formula (a) as being a pyrrolidinium ring, R as being methyl groups, and X as being bromide.
Regarding claims 2-5, as discussed above, the N,N-dimethyl-pyrrolidinium bromide taught by Zhou et al. corresponds to the instant claimed compound, wherein the instant formula (a) as being a pyrrolidinium ring, R as being methyl groups, and X as being bromide.
Regarding claim 12, the epoxide compound taught by Zhou et al. comprises ethylene oxide which corresponds to the instant formula (3), wherein R2=R3=H.
Regarding claim 13, Zhou et al. teach a molar ratio of reactant of epoxide to the pyrrole quaternary ammonium salt compound catalyst is 2000:1, which reads on the instant claimed the catalyst to the epoxide compound is 0.5 x10-3 :1 Abstract).
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. as applied to claim 1 above, and further evidenced by Yu et al. (CN 101429435 A (application number CN200810236993.7), Machine-generated English translation is attached ; entirely incorporated by reference through Zhou et al., paragraph [0035]).
Regarding claim 14, although the method taught by Zhou et al. do not specifically disclose the pressure under 1 MPa and a temperature 100-200 0C as per applicant claim 14, Yu et al. teach a method of making cyclic carbonate at a temperature 50-150 0C and under the pressure is 1-10 atmospheric pressure (about 0.1-1 MPa) (claim 2, Example 1).
The temperature and pressure overlap the instant claimed ranges. The references differ from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738
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