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 .
Detailed Action
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/17/26 has been entered.
Claims 18, 22 and 24-25 are pending in this application and are being examined in this Office Action. Due to applicant’s amendments to the claims filed 2/18/26, the 112 rejection has been withdrawn.
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 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.
Claims 18, 22 and 24-25 remain rejected under 35 U.S.C. 103 as being unpatentable over Belieres et al. (J. Phys. Chem B, 2007, 111, 4926).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Belieres et al. teaches Protic Ionic Liquids (PILs) or Ionic Liquids (ILs), such as triethyl ammonium dihydrogen phosphate. Triethyl ammonium dihydrogen phosphate is formed from the proton transfer of the Bronsted acid, phosphoric acid, to the Bronsted base, triethylamine, see structure below:
PNG
media_image1.png
94
156
media_image1.png
Greyscale
PNG
media_image2.png
108
110
media_image2.png
Greyscale
Belieres et al. teaches purification and drying of the PILs salt product for 2 days in a vacuum at 80 degrees C containing the absorbent phosphorus pentoxide to remove any excess water. Their reactions were mostly carried out without solvent, either neat or in an aqueous solution. Belieres et al. shows that complete removal of water and the absence of other -OH species (e.g. solvents) by IR spectra. Belieres et al. also teaches “when necessary, adequate purification procedures were applied”. (page 4927, second paragraph, first paragraph to page 4928, first column, first paragraph; page 4928, Table 1, 7th compound with the H3PO4 in the 6th column: TEA with H3PO4).
Belieres et al. generally teaches the physical properties ionic liquids, which include the shape factors, cation type, packing efficiency and crystalline state. (page 4931, first paragraph of first column to 3rd to last paragraph of the second column).
With regard to applicant’s limitation in claim 18 for the “triethylammonium dihydrogen phosphate contains a C1-C5 alkanol less than about 1500 ppm”, since Belieres et al. does not teach the presence of C1-C5 alkanol in the formation or purification of triethylammonium dihydrogen phosphate, it would be reasonable to expect Belieres et al. to read on this limitation, since 0 ppm of C1-C5 alkanol (or the absence of C1-C5 alkanol) reads on applicant’s limitation. Even if it does not, it would be obvious to limit or lower the amount of C1-C5 alkanol in the reaction since Belieres et al. teaches the reactions were mostly carried out without solvent, either neat or in an aqueous solution.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Belieres et al. is deficient in the sense that it does not explicitly teach applicant’s particular purity with regard to the amount of water, alkanol and aprotic organic solvent.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to optimize the purity of Belieres et al.’s triethyl ammonium dihydrogen phosphate PIL salt to meet applicant’s purity requirements, since pure forms of known compounds are obvious. Belieres et al. teaches the purification and drying of the PIL salt to remove any trace water and possible solvent, and that when necessary, “adequate purification procedures were applied”. Thus it would be reasonable to expect that since Belieres et al. teaches no solvents were used in the production and purification of triethyl ammonium dihydrogen phosphate and the elimination of any water in the PIL salt product, Belieres et al.’s PIL salt would read on applicant’s claims. Even if it does not, it would be obvious to purify the PIL product from any solvent, alkanol or water, since Belieres et al. teaches the removal or absence of these in the PIL salt product.
With regard to applicant’s limitation for a particulate form, it would be reasonable to expect Belieres et al. to isolate the particulate form of the IL salt since Belieres et al. dries the salt extensively. Applicant’s state their form is a free-flowing particulate since there are “minimal amounts of water, aprotic solvents, and C.sub.1-C.sub.5 alkanols present” (Spec, paragraph 23), which Belieres et al. also teaches. Even it is not, it is obvious to form a particulate form of Belieres et al.’s triethyl ammonium dihydrogen phosphate salt, for ease of handling and optimum purity, especially since Belieres et al.’s compound is the same as applicant’s claimed triethyl ammonium dihydrogen phosphate.
When claiming a purer form of a known compound, it must be demonstrated that the purified material possess properties and utilities not possessed by the unpurified material. Ex parte Reed, 135 U.S.P.Q. 34, 36 (P.O.B.A. 1961), on reconsideration, Ex parte Reed, 135 U.S.P.Q. 105 (P.O.B.A. 1961).
It has been well established that the mere purity of compound, in itself, does not render a substance unobvious Ex Parte Gray (BPAI 1989) 10 PQ2D 1922.
As stated in Aventis Pharma Deutschland Gmbh and King Pharmaceuticals, Inc., v. Lupin, Ltd., 84 USPQ2d 1197:
“The ‘reason or motivation’ need not be an explicit teaching that the claimed compound will have a particular utility; it is sufficient to show that the claimed and prior art compounds possess a ‘sufficiently close relationship . . . to create an expectation,' in light of the totality of the prior art, that the new compound will have ‘similar properties’ to the old.”
“However, if it is known that some desirable property of a mixture derives in whole or in part from a particular one of its components, or if the prior art would provide a person of ordinary skill in the art with reason to believe that this is so, the purified compound is prima facie obvious over the mixture even without an explicit teaching that the ingredient should be concentrated or purified….”
“Ordinarily, one expects a concentrated or purified ingredient to retain the same properties it exhibited in a mixture, and for those properties to be amplified when the ingredient is concentrated or purified; isolation of interesting compounds is a mainstay of the chemist’s art. If it is known how to perform such an isolation, doing so ‘is likely the product not of innovation but of ordinary skill and common sense.’”
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant's argument that ”since the process conditions include no C1-C5 alkanol solvent, there is no C1-C5 alkanol residue”.
The examiner states that since Belieres et al. does not include alkanol solvent, or any solvents, in their production or purification of triethylammonium dihydrogen phosphate, this would read on applicant’s amended claim language in claim 18 for the “triethylammonium dihydrogen phosphate contains a C1-C5 alkanol less than about 1500 ppm”, since 0 ppm of C1-C5 alkanol (or the absence of C1-C5 alkanol) reads on this limitation. Even if it does not, it would be obvious to limit or lower the amount of C1-C5 alkanol in the reaction since Belieres et al. teaches the reactions were mostly carried out without solvent, either neat or in an aqueous solution.
Conclusion
Claims 18, 22 and 24-25 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
Prosecution Insights