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
This office action is in response to applicant’s communication filed on 8/6/25.
Claims 18-25 are pending in this application and are being examined in this Office Action.
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.
Claims 18-25 remain rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, 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.
The claims are indefinite because of the claim language “free-flowing”. Applicant’s state that their definition of “free-flowing” means powders, granules, and particulates which are capable of being easily physically transferred from one container to another due to their inherent ability to be poured. Applicants also state that a “person of skill in the art would understand the terms powders, granules and particulates and thus be able to clearly differentiate those from difficult to handle chunks and gels”.
However this definition is still unclear in regard to the metes and bounds of “free-flowing” for the particulate form of tri(C1-C4 alkyl) ammonium dihydrogen phosphate, such that one would know what is included and what is excluded in a “free-flowing” particulate that is capable of being easily physically transferred. What might be easy for some is not easy for all. Thus it is unclear what the metes and bounds are for “free-flowing” and what would constitute being “easily physically transferred”.
Appropriate correction is required.
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 18-25 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 formation of triethyl ammonium dihydrogen phosphate which is formed from the proton transfer of the Bronsted acid, phosphoric acid, to the Bronsted base, triethylamine, see structure below:
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156
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Belieres et al. teaches purification and drying of the 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).
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 teach applicant’s “free-flowing” and amorphous form and applicant’s particular purity.
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 to meet applicant’s purity requirements as claimed in claims 21-25, since pure forms of known compounds are obvious. Belieres et al. teaches the purification and drying of the salt to remove any trace water and possible solvent, and that when necessary, “adequate purification procedures were applied”.
Furthermore, with regard to applicant’s amorphous form requirement, it would be reasonable to expect Belieres et al. to form an amorphous salt and not a crystalline one since Belieres et al. does not crystalize the salt product. Even if it is not, it is obvious to form a non-crystalline, amorphous form of Belieres et al.’s triethyl ammonium dihydrogen phosphate salt, since amorphous forms of compounds are easily obtained.
With regard to applicant’s free-flowing requirement, it would be reasonable to expect Belieres et al. form for the salt would be free-flowing since Belieres et al. dries the salt extensively. Applicant’s state their form is free-flowing 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 free-flowing form of Belieres et al.’s triethyl ammonium dihydrogen phosphate salt, for ease of handling and optimum purity.
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 ” The method described in the present application utilizes crystallization techniques to isolate the triethylammonium dihydrogen phosphate as a free-flowing particulate, easily transferrable powder that offers significant handleability advantages over the Belieres product. Therefore, it is not reasonable to expect the Belieres product to be particulate, and thus not capable of being free-flowing. It is not reasonable to form a free flowing form of triethyl ammonium dihydrogen phosphate salt based upon the disclosure of Belieres.”
The examiner does not agree with the applicant. There is no teaching in Belieres et al. to imply that Belieres et al. did not isolate the product as a particulate. Belieres et al. does not teach the product was isolated as “chunks and gels”. In fact, Belieres et al. teaches when necessary, “adequate purification procedures were applied”, which would reasonably include the particular form of the product. In applicant’s specification, they connect their free-flowing particulate form with the low amount of water and solvents in the product, since applicant’s state their form is free-flowing because there are “minimal amounts of water, aprotic solvents, and C.sub.1-C.sub.5 alkanols present” (Spec, paragraph 23). Belieres et al. also teaches a minimal amount of water and solvent in their product, which would reasonably imply a free-flowing particulate form.
Conclusion
Claims 18-25 are rejected.
THIS ACTION IS MADE FINAL. 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 extension fee 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 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.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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