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 .
Election/Restrictions
Applicant's election with traverse of species A1 (preparation is chemical continuous flow method), B2 (metal is Zn), C1 (deposition method is electroplating), D3 (solvent is toluene), E1 (catalyst is a transition metal salt), and F2 (cationic ion exchange material) in the reply filed on 6/12/2026 is acknowledged. The traversal is on the ground(s) that the Office has failed to establish a prima facie showing that there would be an undue burden on the examiner. This is not found persuasive because each species is mutually exclusive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 41-44 and 58 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species A2, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/12/2026.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 recites the limitation "a column". There is insufficient antecedent basis for this limitation in the claim. It is not clear if this refers to “reactor column” or refers to a different column.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 22-27 and 49-55 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by U.S. Patent Publication 20110272291 by Stapley et al. (Stapley).
It is noted that claims 22-27 and 49-57 are directed to a “system”, which does not clearly set forth the statutory category to which the invention belongs to. It has been determined that the claims are directed to an apparatus and the appropriate principles for interpreting claims for that particular category of invention have been applied.
Regarding limitations recited in the claims which are directed to a manner of operating disclosed continuous flow system, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). This applies to the following limitations: “for preparing 1,2-di(furan-2-yl)ethane-1,2-diol from furan-2-carbaldehyde” (claim 22), “comprising said furan-2-carbaldehyde” (claim 23); “a solvent” (claim 23); “a coolant” (claim 24); “coolant comprises ethylene or propylene glycol in water” (claim 51); “coolant comprises antifreeze” (claim 52); “solvent is selected from…amide” (claim 55).
In regard to claim 22, Stapley teaches a continuous flow system ([0047]; [0053]); capable of preparing 1,2-di(furan-2-yl)ethane-1,2-diol from furan-2-carbaldehyde.
In regard to claim 23, Stapley teaches said system comprising a first reactant stream, a second reactant stream, a catalyst, and a reactor column comprising a metal ([0008], cathode comprising Zn, packed bed, fluidized bed, flow-through, ion exchange resin).
In regard to claim 25, Stapley teaches a reactor column comprises a static mixer ([0073]). Stapley teaches metal is deposited on surfaces of said static mixer ([0008]).
In regard to claim 26, Stapley teaches the reactor column comprises a packed bed comprising the metal ([0008], fluidized bed, cathode comprising Zn).
In regard to claim 27, Stapley teaches a column comprising an ion exchange material ([0008], ion exchange resin).
In regard to claim 49, Stapley teaches a stainless steel tubing ([0037]; [0065]).
In regard to claim 50, Stapley teaches the packed bed comprises porous catalytic particles or beads ([0033]).
In regard to claims 53-54, Stapley teaches the metal is Zn ([0008], cathode comprising Zn).
Claim 57 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by U.S. Patent Publication 20110272291 by Stapley et al. (Stapley), as noted above, as evidenced by AMBERLITE IRC747 PRODUCT DATA SHEET by Lenntech.
In regard to claim 57, Stapley teahces cation or anion exchange ([0024]). Stapley teaches Amberlite IRC747 H+ form cation exchange resin ([0066]). Stapley teaches the ion exchange material is crosslinked ([0024]; [0066]). Lenntech provides evidence that Amberlite IRC 747 Resin is a crosslinked resin.
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.
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.
Claim 56 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 20110272291 by Stapley et al. (Stapley) as evidenced by AMBERLITE IRC747 PRODUCT DATA SHEET by Lenntech, as noted above, in view of U.S. Patent Publication No. 20160351443 by George.
In regard to claim 56, Stapley teaches the limitations noted above. Stapley does not teach the ion exchange material is polystyrene sulphonate. Stapley teahces cation or anion exchange ([0024]). Stapley teaches Amberlite IRC747 H+ form cation exchange resin ([0066]).
Lenntech provides evidence that Amberlite IRC747 is a polystyrene resin. However, Lenntech does not teach the resin is sulphonate.
Georege teaches coatings on polymer for desired properties ([0002]). George teaches George teaches a sulfonated catalyst ([0091]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a sulphonate resin functionality, as taught by George, as it is a known resin functionality used for catalysts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARA M PEO/Primary Examiner, Art Unit 1774
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