CTNF 18/506,340 CTNF 84007 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority This application claims the benefit of US Provisional Application No. 63477860 with an effective filing date of 30 December 2022 as reflected in the filing receipt mailed on 27 November 2023. Information Disclosure Statement The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claims 1- 20 are re jected under 35 U.S.C. 103 as being unpatentable over Ki ttrell et al. (US20230020051, published 19 January 2023, filed 16 July 2021, hereinafter Kittrell) in view of Brownscombe et al. (WO2001016072, published 08 March 2001, hereinafter Brownscombe). Ki ttrell is in the known prior art field of “the preparation of furandicarboxylic acid (FDCA), especially 2,5-FDCA, from a furan derivatized carboxylate salt produced from sugar bearing sources such as C5 and C6 sugar bearing sources, especially C5 sugar bearing sources”, see Paras. [0001];[0007]-[0012]; Figs. 1-3 and 5, where the FDCA is a precursor for deriving polyesters, see Para. [0002], the “FDCA alkali metal” salts are produced which are “protonated to FDCA and precipitated out of solution”, and an alkali metal salt is regenerated, recovered, and recycled, see Paras. [0058]-[0059]; Figs. 3 and 6-10. Regarding the limitations of instant application claims 1, 2, 4, and 8, Kittrell teaches in Example 1 a carboxylation reaction/carboxylate transfer reaction with “a cesium furoate conversion of 81.5% and a 2,5-furan dicarboxylate selectivity of 95% was achieved”, see Paras. [0069]-[0073]; Fig. 1, where a solution of a furoate, an alkali carbonate salt, and a stearate salt is prepared and placed in a Parr reactor, then “[a] hydrocarbon suspension fluid, such as in this case, Iso Par V produced by ExxonMobil, was then pumped directly to the Parr reactor, providing a 7:1 mass ratio of suspension fluid to solids (cesium furoate/cesium carbonate/cesium stearate). The reaction was then initiated at 260° C., at 8 bar pressure, and 60 mL/min CO 2 flow rate for a period of 5 hours. Upon completion, the reactor was evacuated of its contents.”, see Paras. [0069]-[0071]; Figs. 3 and 5. “FDCA alkali metal” salts are produced which are “protonated to FDCA and precipitated out of solution”, where 2,5-furan dicarboxylate acid, 2,4 FDCA, 2,3 FDCA, and 3,4 FDCA are recovered, see Paras. [0058]-[0059];[0072]-[0073]; Fig. 3. The stearate is selected from “cesium stearate, sodium stearate, potassium stearate and other stearic acid derived surfactants”, see Para. [0062] and “[t]he alkali metal carbonate can be any carbonate bearing mixtures or single elements of Li, Na, K, Rb, or Cs”, see Para. [0061], meeting: The process for conducting a carboxylate transfer reaction, the mixing step of an aromatic, i.e., furoate, and an alkali carbonate salt, and the heating step with CO2 to form carboxylated aromatic compounds, i.e., FDCA alkali metal salts, in instant application claim 1 ; The counter ion in instant application claim 2 ; 8 bar is 800 kPA within the pressure and temperature range in instant application claim 4 ; The aromatic is furoate in instant application claim 8 ; and, As depicted in Figs. 3 and 11, the separated alkali metal cesium chloride salt, i.e., decarboxylated alkali metal salt, in line 806 is recovered as alkali metal hydroxides then sent to “an ion exchange CO 2 absorption unit shown at block 900” to regenerate the alkali metal carbonate then the carbonate is recycled as line 303 back to the mixing step in block 400, see Fig. 3; Paras. [0058];[0062];[0064]-[0068], meeting forming a decarboxylated alkali salt in instant application claim 1 . Regarding the limitations of instant application claims 5 and 6, Kittrell teaches in Example 1 “[a] hydrocarbon suspension fluid, such as in this case, Iso Par V produced by ExxonMobil, was then pumped directly to the Parr reactor, providing a 7:1 mass ratio of suspension fluid to solids (cesium furoate/cesium carbonate/cesium stearate).”, see Para. [0071], where as depicted in Fig. 5 the reactants are in bead solid form contacted with CO2 bubbles in the suspension fluid 308 slurry, see Fig. 5; Paras. [0010]-[0013];[0055], meeting the hydrocarbon slurry in instant application claim 5 and in instant application claim 6 . Regarding the limitations of instant application claim 7, Kittrell teaches in Example 1 “[t]he reaction was then initiated at 260° C., at 8 bar pressure, and 60 mL/min CO 2 flow rate for a period of 5 hours.”, see Para. [0071], where as depicted in Fig. 5 the CO2 is in bubbles in a “counter-current” flow, see Fig. 5; Paras. [0052];[0055], meeting the CO2 is in a bubbling counter current flow in instant application claim 7 . Regarding the limitations of instant application claim 9, Kittrell teaches as depicted in Fig. 3, the separated alkali metal ions in line 806 are sent to “an ion exchange CO 2 absorption unit shown at block 900” to regenerate the alkali metal carbonate then the carbonate is recycled as line 303 back to the mixing step in block 400, see Figs. 3 and 11; Paras. [0058];[0064]-[0068], meeting regenerating the alkali salt in instant application claim 9 . Regarding the limitations of instant application claims 10, 11, 13, and 14, Kittrell teaches in Fig. 3 and Example a carboxylation reaction/carboxylate transfer reaction with “a cesium furoate conversion of 81.5% and a 2,5-furan dicarboxylate selectivity of 95% was achieved”, see Paras. [0039]-[0040];[0047]-[0049];[0069]-[0073]; Figs. 1 and 3. Fig. 3 depicts a continuous flow process where in Block 400 a solution of cesium furoate, cesium carbonate, and cesium stearate is mixed and passed to the Parr reactor of Block 500, see Para. [0070]; Fig. 3. Then in Block 500 “[a] hydrocarbon suspension fluid, such as in this case, Iso Par V produced by ExxonMobil, was then pumped directly to the Parr reactor, providing a 7:1 mass ratio of suspension fluid to solids (cesium furoate/cesium carbonate/cesium stearate). The reaction was then initiated at 260° C., at 8 bar pressure, and 60 mL/min CO 2 flow rate for a period of 5 hours. Upon completion, the reactor was evacuated of its contents.”, see Paras. [0061]-[0062];[0069]-[0071]; Figs. 3 and 5, where “FDCA alkali metal” salts are produced, see Paras. [0058]-[0059];[0072]-[0073]; Fig. 3, meeting: The mixing step of passing an aromatic, i.e., furoate, and an alkali carbonate salt to a vessel, passing CO2 into the vessel to contact the mixture, and the heating step with CO2 to form carboxylated aromatic compounds, i.e., FDCA alkali metal salts, in instant application claim 10 ; The counter ion in instant application claim 11 ; The aromatic is furoate in instant application claim 13; 8 bar is 800 kPA within the pressure and temperature range in instant application claim 14 ; and, As depicted in Figs. 3 and 11, the separated alkali metal cesium chloride salt, i.e., decarboxylated alkali metal salt, in line 806 is recovered as alkali metal hydroxides then sent to “an ion exchange CO 2 absorption unit shown at block 900” to regenerate the alkali metal carbonate then the carbonate is recycled as line 303 back to the mixing step in block 400, see Fig. 3; Paras. [0058];[0062];[0064]-[0068], meeting forming a decarboxylated alkali salt in instant application claim 10 . Regarding the limitations of instant application claims 15 and 16, Kittrell teaches in Example 1 “[a] hydrocarbon suspension fluid, such as in this case, Iso Par V produced by ExxonMobil, was then pumped directly to the Parr reactor, providing a 7:1 mass ratio of suspension fluid to solids (cesium furoate/cesium carbonate/cesium stearate).”, see Para. [0071], where as depicted in Fig. 5 the reactants are in bead solid form contacted with CO2 bubbles in the suspension fluid 308 slurry, see Fig. 5; Paras. [0010]-[0013];[0055], meeting the hydrocarbon slurry in instant application claim 15 and in instant application claim 16 . Regarding the limitations of instant application claim 17, Kittrell teaches in Example 1 “[t]he reaction was then initiated at 260° C., at 8 bar pressure, and 60 mL/min CO 2 flow rate for a period of 5 hours.”, see Para. [0071], where as depicted in Fig. 5 the CO2 is in bubbles in a “counter-current” flow, see Fig. 5; Paras. [0052];[0055], meeting the CO2 is in a bubbling counter current flow in instant application claim 17 . Regarding the limitations of instant application claim 18, Kittrell teaches in Example 1 “[t]he solids were recovered by vacuum filtration using a Buchner funnel and Whatman qualitative filtering paper (Block 600 FIG. 3)” to obtain filtered solids of FDCA alkali metal salts, i.e. separated from the hydrocarbon suspension, see Paras. [0058]-[0059];[0071]-[0072]; Fig. 3, meeting the separating the carboxylated aromatic compound from the hydrocarbon suspension slurry in instant application claim 18 . Regarding the limitations of instant application claim 19, Kittrell teaches as depicted in Fig. 3, the separated hydrocarbon suspension from Block 600 of Example 1 is recycled back to Block 400 as line 310 for mixing with the cesium furoate, cesium carbonate, and cesium stearate to form the slurry, see Fig. 3; Paras. [0049];[0057];[0072], meeting recycling the separated hydrocarbon to form the slurry in instant application claim 19 . Regarding the limitations of instant application claim 20, Kittrell teaches as depicted in Fig. 3, the separated alkali metal ions in line 806 are sent to “an ion exchange CO 2 absorption unit shown at block 900” to regenerate the alkali metal carbonate then the carbonate is recycled as line 303 back to the mixing step in block 400, see Figs. 3 and 11; Paras. [0058];[0064]-[0068], meeting regenerating the alkali salt in instant application claim 20 . Kittrell does not teach: The instant application claim 1 limitation of a dicarboxylate alkali salt; The instant application claim 10 limitation of a dicarboxylate alkali salt; The instant application claims 8 and 13 limitations of the dicarboxylate alkali salt is malonate; The instant application claims 9 and 20 limitations of the dicarboxylate alkali salt and decarboxylated alkali salt; and, The limitations of instant application claims 3 and 12. Brownscombe is in the known prior art field of processes for “synthesizing aromatic acids and diacids which comprises reacting aromatic hydrocarbons with a carboxyl source selected from basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Abstract. Regarding the limitations of instant application claims 1, 8-10, 13, and 20, Brownscombe teaches a carboxylate transfer reaction where aromatic hydrocarbons are reacted with “basic carboxylating salts”, such as sodium, cesium, rubidium, or potassium malonate or oxalate, i.e., dicarboxylate alkali salts, and sodium, cesium, rubidium, or potassium carbonate, to transfer the carboxylate from the salt to the aromatic compound creating a decarboxylated salt and the decarboxylated salt is recovered and regenerated back to a carboxylating salt, where “the basic potassium salts remaining can be converted back to oxalate or formate by well known reactions. (e.g., KOH + CO at 120°C —> potassium formate; potassium formate at > 200°C —> K2 Oxalate; etc.)”, see Pg. 3, Lns. 6-28; Pg. 5, Ln. 1-Pg. 6, Ln. 25, meeting: A carboxylate transfer reaction, a dicarboxylate alkali salt of sodium, cesium, rubidium, or potassium malonate, and forming a decarboxylated alkali salt, i.e. potassium formate, in instant application claim 1, in instant application claim 8, in instant application claim 9, in instant application claim 10, in instant application claim 13, and in instant application claim 20 . Regarding the limitations of instant application claims 3 and 12, Brownscombe teaches “basic carboxylating salts”, such as sodium, cesium, rubidium, or potassium malonate aka a 1,3-dicarboxylic acid salt, see Pg. 5, Ln. 1-Pg. 6, Ln. 25, meeting the specific dicarboxylic alkali salt in instant application claim 3 and in instant application claim 12 . In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the alkali salt of Kittrell to choose the “basic carboxylating salts” as taught by Brownscombe with a reasonable predictability of success for the purpose of efficiently “synthesizing aromatic acids and diacids” “at a reduced cost in significantly improved purity without the necessity of oxidation reactions or purification of alkyl hydrocarbon isomers, both of which are expensive and difficult” by reacting “basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Brownscombe, Abstract; Pg. 1, Lns. 9-23; Pg. 5, Ln. 1-Pg. 6, Ln. 25. The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the alkali salt source of Kittrell by applying the known technique of carboxylate transfer reactions with the “basic carboxylating salts” as taught by Brownscombe with a reasonable predictability of success for the purpose of efficiently “synthesizing aromatic acids and diacids” “at a reduced cost in significantly improved purity without the necessity of oxidation reactions or purification of alkyl hydrocarbon isomers, both of which are expensive and difficult” by reacting “basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Brownscombe, Abstract; Pg. 1, Lns. 9-23; Pg. 5, Ln. 1-Pg. 6, Ln. 25; and MPEP 2143 I. B-D. The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Kittrell and Brownscombe both teach synthesizing aromatic acids by reacting aromatic hydrocarbons with a carboxyl source selected from basic carbonate containing salts and carbon dioxide at elevated temperature, a person of ordinary skill in the art has good reason to modify Kittrell by relying upon Brownscombe before the effective filing date of the claimed invention for knowledge generally available within the synthesis of aromatic acids art, see MPEP 2143 B & G and 2141, for the benefit of efficiently “synthesizing aromatic acids and diacids” “at a reduced cost in significantly improved purity without the necessity of oxidation reactions or purification of alkyl hydrocarbon isomers, both of which are expensive and difficult” by reacting “basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Brownscombe, Abstract; Pg. 1, Lns. 9-23; Pg. 5, Ln. 1-Pg. 6, Ln. 25; and, MPEP 2141 and 2143 I. B-D. As stated in Sakraida v. Ag Pro, Inc. , 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141. Selection of a known material, such as monocarboxylic acid alkali salts or dicarboxylic acid alkali salts, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as monocarboxylic acid alkali salts substituted for dicarboxylic acid alkali salts, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05 . Double Patenting 08-33 AIA 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer. 08-37 AIA Claim s 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 3-6, 8, 10, and 12-17 of copending Application No 18506347 to Shi et al. (hereinafter Shi ‘347) in view of Brownscombe et al. (WO2001016072, published 08 March 2001, hereinafter Brownscombe) . This is a provisional nonstatutory double patenting rejection. Regarding instant application claim 1, the claims of Shi ‘347 recite a process for conducting a reaction, see Claim 1, the process comprising: mixing an aromatic ring with an alkali salt to form a mixture, see Claims 1 and 8; and, heating the mixture in the presence of carbon dioxide to form a carboxylated aromatic compound, see Claim 1. Regarding instant application claim 2, the claims of Shi ‘347 recite wherein the aromatic ring further comprises a counter ion, and wherein the dicarboxylate alkali base, the counter ion, or both are selected from a group consisting of: lithium, sodium, potassium, rubidium, cesium, and mixtures thereof, see Claim 8. Regarding instant application claim 4, the claims of Shi ‘347 recite wherein the mixture is heated to a temperature between 120 °C to 400 °C at a pressure up to 6,895 kPa (1,000 psi), see Claim 3. Regarding instant application claim 5, the claims of Shi ‘347 recite wherein the mixture comprises a slurry, see Claim 1. Regarding instant application claim 6, the claims of Shi ‘347 recite wherein the slurry is formed in a hydrocarbon, see Claim 6. Regarding instant application claim 7, the claims of Shi ‘347 recite wherein the carbon dioxide is provided as bubbles which flow counter current, see Claims 4 and 5. Regarding instant application claim 8, the claims of Shi ‘347 recite wherein the aromatic ring comprises a furoate, see Claim 1. Regarding instant application claim 10, the claims of Shi ‘347 recite a process for producing a carboxylated aromatic compound, see Claim 10, the process comprising: passing an aromatic hydrocarbon and an alkali salt to a vessel in a reaction zone to form a mixture, see Claim 10; and, passing carbon dioxide into the vessel to contact the mixture, see Claim 10; and, heating the mixture to form a carboxylated aromatic compound, see Claim 10. Regarding instant application claim 11, the claims of Shi ‘347 recite wherein the aromatic hydrocarbon further comprises a counter ion, and wherein the dicarboxylate alkali base, the counter ion, or both are selected from a group consisting of: lithium, sodium, potassium, rubidium, cesium, and mixtures thereof, see Claim 12. Regarding instant application claim 13, the claims of Shi ‘347 recite wherein the aromatic ring comprises a furoate, see Claim 10. Regarding instant application claim 14, the claims of Shi ‘347 recite wherein the mixture is heated to a temperature between 120 °C to 400 °C at a pressure up to 6,895 kPa (1,000 psi), see Claim 13. Regarding instant application claim 15, the claims of Shi ‘347 recite wherein the mixture comprises a slurry, see Claim 10. Regarding instant application claim 16, the claims of Shi ‘347 recite wherein the slurry is formed in a hydrocarbon, see Claim 15. Regarding instant application claim 17, the claims of Shi ‘347 recite wherein the carbon dioxide is provided as bubbles which flow counter current, see Claim 14. Regarding instant application claim 18, the claims of Shi ‘347 recite further comprising: separating the carboxylated aromatic compound from the hydrocarbon forming the slurry, see Claims 1 and 16. Regarding instant application claim 19, the claims of Shi ‘347 recite further comprising: recycling the hydrocarbon forming the slurry, see Claim 17. The claims of Shi ‘347 do not recite: The instant application claim 1 limitations of a carboxylate transfer reaction, a dicarboxylate alkali salt, and forming a decarboxylated alkali salt; The instant application claims 8 and 13 limitations of the dicarboxylate alkali salt is malonate; The instant application claim 10 limitations of a dicarboxylate alkali salt and forming a decarboxylated alkali salt The limitations of instant application claims 3, 9, 12, and 20. Brownscombe is in the known prior art field of processes for “synthesizing aromatic acids and diacids which comprises reacting aromatic hydrocarbons with a carboxyl source selected from basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Abstract. Regarding the limitations of instant application claims 1, 8-10, 13, and 20, Brownscombe teaches a carboxylate transfer reaction where aromatic hydrocarbons are reacted with “basic carboxylating salts”, such as sodium, cesium, rubidium, or potassium malonate or oxalate, i.e., dicarboxylate alkali salts, and sodium, cesium, rubidium, or potassium carbonate, to transfer the carboxylate from the salt to the aromatic compound creating a decarboxylated salt and the decarboxylated salt is recovered and regenerated back to a carboxylating salt, where “the basic potassium salts remaining can be converted back to oxalate or formate by well known reactions. (e.g., KOH + CO at 120°C —> potassium formate; potassium formate at > 200°C —> K2 Oxalate; etc.)”, see Pg. 3, Lns. 6-28; Pg. 5, Ln. 1-Pg. 6, Ln. 25, meeting: A carboxylate transfer reaction, a dicarboxylate alkali salt of sodium, cesium, rubidium, or potassium malonate, and forming a decarboxylated alkali salt, i.e. potassium formate, in instant application claim 1, in instant application claim 8, in instant application claim 10, and in instant application claim 13 ; and, The regenerating the dicarboxylate alkali salt in instant application claim 9 and in instant application claim 20 . Regarding the limitations of instant application claims 3 and 12, Brownscombe teaches “basic carboxylating salts”, such as sodium, cesium, rubidium, or potassium malonate aka a 1,3-dicarboxylic acid salt, see Pg. 5, Ln. 1-Pg. 6, Ln. 25, meeting the specific dicarboxylic alkali salt in instant application claim 3 and in instant application claim 12 . In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the alkali salt in the claims of Shi ‘347 to choose the “basic carboxylating salts” and regeneration as taught by Brownscombe with a reasonable predictability of success for the purpose of efficiently “synthesizing aromatic acids and diacids” “at a reduced cost in significantly improved purity without the necessity of oxidation reactions or purification of alkyl hydrocarbon isomers, both of which are expensive and difficult” by reacting “basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Brownscombe, Abstract; Pg. 1, Lns. 9-23; Pg. 5, Ln. 1-Pg. 6, Ln. 25. The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the alkali salt source in the claims of Shi ‘347 by applying the known technique of carboxylate transfer reactions with the “basic carboxylating salts” as taught by Brownscombe with a reasonable predictability of success for the purpose of efficiently “synthesizing aromatic acids and diacids” “at a reduced cost in significantly improved purity without the necessity of oxidation reactions or purification of alkyl hydrocarbon isomers, both of which are expensive and difficult” by reacting “basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Brownscombe, Abstract; Pg. 1, Lns. 9-23; Pg. 5, Ln. 1-Pg. 6, Ln. 25; and MPEP 2143 I. B-D. The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and the claims of Shi ‘347 and Brownscombe both teach synthesizing aromatic acids by reacting aromatic hydrocarbons with a carboxyl source selected from basic carbonate containing salts and carbon dioxide at elevated temperature, a person of ordinary skill in the art has good reason to modify the claims of Shi ‘347 by relying upon Brownscombe before the effective filing date of the claimed invention for knowledge generally available within the synthesis of aromatic acids art, see MPEP 2143 B & G and 2141, for the benefit of efficiently “synthesizing aromatic acids and diacids” “at a reduced cost in significantly improved purity without the necessity of oxidation reactions or purification of alkyl hydrocarbon isomers, both of which are expensive and difficult” by reacting “basic carbonate containing salts and carbon dioxide at elevated temperature under conditions in which said carboxyl source exhibits sufficient mobility to effect a net reaction to form aromatic acid salts, and aromatic polyacid salts, incorporating the aromatic hydrocarbon used in the reaction into their structure”, see Brownscombe, Abstract; Pg. 1, Lns. 9-23; Pg. 5, Ln. 1-Pg. 6, Ln. 25; and, MPEP 2141 and 2143 I. B-D. As stated in Sakraida v. Ag Pro, Inc. , 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141. Selection of a known material, such as monocarboxylic acid alkali salts or dicarboxylic acid alkali salts, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as monocarboxylic acid alkali salts substituted for dicarboxylic acid alkali salts, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Y. Lynnette Kelly-O'Neill whose telephone number is (571)270-3456. The examiner can normally be reached Tuesday-Friday, 8:30 a.m. - 6:30 p.m., EST, with Flex Time. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Yen-Ye Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /YO/Examiner, Art Unit 1692 /FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699 Application/Control Number: 18/506,340 Page 2 Art Unit: 1692 Application/Control Number: 18/506,340 Page 3 Art Unit: 1692 Application/Control Number: 18/506,340 Page 4 Art Unit: 1692 Application/Control Number: 18/506,340 Page 5 Art Unit: 1692 Application/Control Number: 18/506,340 Page 6 Art Unit: 1692 Application/Control Number: 18/506,340 Page 7 Art Unit: 1692 Application/Control Number: 18/506,340 Page 8 Art Unit: 1692 Application/Control Number: 18/506,340 Page 9 Art Unit: 1692 Application/Control Number: 18/506,340 Page 10 Art Unit: 1692 Application/Control Number: 18/506,340 Page 11 Art Unit: 1692 Application/Control Number: 18/506,340 Page 12 Art Unit: 1692 Application/Control Number: 18/506,340 Page 13 Art Unit: 1692 Application/Control Number: 18/506,340 Page 14 Art Unit: 1692 Application/Control Number: 18/506,340 Page 15 Art Unit: 1692 Application/Control Number: 18/506,340 Page 16 Art Unit: 1692 Application/Control Number: 18/506,340 Page 17 Art Unit: 1692 Application/Control Number: 18/506,340 Page 18 Art Unit: 1692 Application/Control Number: 18/506,340 Page 19 Art Unit: 1692 Application/Control Number: 18/506,340 Page 20 Art Unit: 1692 Application/Control Number: 18/506,340 Page 21 Art Unit: 1692 Application/Control Number: 18/506,340 Page 22 Art Unit: 1692 Application/Control Number: 18/506,340 Page 23 Art Unit: 1692 Application/Control Number: 18/506,340 Page 24 Art Unit: 1692 Application/Control Number: 18/506,340 Page 25 Art Unit: 1692
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