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 .
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 25 September 2026 and 20 July 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Status of the Claims
Claims 1-5, 7-14, 17, and 19-22 are currently pending.
Claims 21 and 22 are new.
Claims 1, 5, 10, and 17 are currently amended.
Claims 6, 15, 16, and 18 are currently cancelled.
Response to Amendments
Applicant’s amendments filed on 20 July 2026 are acknowledged.
Claims 1 and 10 have been amended to add the limitations of claims 6, 15, 16, and 18, where the limitations of claim 16 are expanded, and new claims 21 and 22 are added.
Claim Rejections - 35 USC § 112
Applicant’s amendment to claim 5 is sufficient to overcome the rejection of claim
5 under 35 U.S.C. 112(b) 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. Claim 5 has been amended to depend from claim 4; thus, correcting the antecedent basis issue. The rejection is withdrawn.
Claim Rejections - 35 USC § 102
Applicant’s amendments to claims 1 and 10 adding recovering heat from the separated hydrocarbon in a heat exchanger not taught by Kittrell and cancellation of claims 6, 15, and 16 are sufficient to overcome the rejection of claims 1-17, 19, and 20 under 35 U.S.C. 102(a)(2) as being anticipated by Kittrell et al. (US20230020051, published 19 January 2023, filed 16 July 2021, hereinafter Kittrell). The rejection is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendments to claims 1 and 10 adding recovering heat from the separated hydrocarbon in a heat exchanger not taught by Kittrell and cancellation of claims 6, 15, 16, and 18 are sufficient to overcome the rejection of claims 1-20 under 35 U.S.C. 103 as being unpatentable over Kittrell et al. (US20230020051, published 19 January 2023, filed 16 July 2021, hereinafter Kittrell) in view of Gray et al. (US20150038737, published 05 February 2015, hereinafter Gray). The rejection is withdrawn. Due to the amendments to claims 1 and 10, the cancellation of claims, and the addition of new claims, new, maintained, and modified ground(s) of rejection is/are provided below.
Claim Rejections – Double Patenting
Applicant’s amendments to claims 1 and 10 adding recovering heat from the separated hydrocarbon in a heat exchanger and cancellation of claims 6, 15, 16, and 18 are sufficient to overcome the rejections of:
Claims 1-9 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 9-14, 16, and 20 of copending Application No. 18506342 to Shi et al. (hereinafter Shi ‘342) (reference application);
Claims 10-17, 19, and 20 on the ground of nonstatutory double patenting as being unpatentable over claims 11, 13, 14, 16, 18, 19, and 20 of copending Application No. 18506342 to Shi et al. (hereinafter Shi ‘342) in view of Kittrell et al. (US20230020051, published 19 January 2023, filed 16 July 2021, hereinafter Kittrell); and,
Claim 18 on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 19 of copending Application No. 18506342 to Shi et al. (hereinafter Shi ‘342) in view of Kittrell et al. (US20230020051, published 19 January 2023, filed 16 July 2021, hereinafter Kittrell), as applied to claims 10-17, 19, and 20 in the nonstatutory double patenting rejection above, in further view of Gray et al. (US20150038737, published 05 February 2015, hereinafter Gray).
The above rejections are withdrawn. Due to the amendments to claims 1 and 10, the cancellation of claims, and the addition of new claims, new, maintained, and modified ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed on 20 July 2026 have been fully considered but they are either moot or not persuasive.
Applicant’s argue that Kittrell and Gray do not disclose the limitations as recited in amended claims 1 and 10. These arguments have been considered but are either moot or not persuasive for the reasons set forth in the new, maintained, and modified grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 20 July 2026 with respect to Gray have been considered but are moot because the new ground of rejection does not rely on Gray applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to Applicant’s arguments on page 8 of the remarks filed on 20 July 2026 that “Kittrell does not disclose or suggest installing a heat exchanger on the recycled hydrocarbon stream.” Patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123. In this case, Kittrell teaches, as stated on page 12 of the previous office action dated 22 April 2026, “heat is recovered from process separation recycled residue, see Para. [0042]”, where “[h]eavy components settle within column 101 and a residue is removed through outlet 114. This residue can be further treated for recycle, heat recovery or as a waste product”, see Para. [0042]. Therefore, Kittrell does suggest heat recovery from separated residue within the process. For the reasons indicated above, Applicant’s above argument is not persuasive.
Double Patenting
In response to Applicant’s arguments on page 9 of the remarks filed on 20 July 2026 that “claims 1 and 10 would not have been obvious in view of claims 13 and 19 of copending application no. 18506342 of Shi'342 in view of Kittrell, further in view of Gray”. Please see the above response to arguments that have been considered either moot or not persuasive. For the reasons indicated above, Applicant’s above arguments regarding the provisional nonstatutory double patenting rejections are not persuasive.
In the Spirit of Compact Prosecution
While the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
New, Maintained, and Modified Rejections Based on Amendments to the Claims in the reply filed on 20 July 2026
For clarity between the new, modified, and maintained rejections, the specific new and modified rejections below are in italics.
Claim Rejections - 35 USC § 103
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.
Claims 1-5, 7-14, 17, and 19-22 are newly rejected under 35 U.S.C. 103 as being unpatentable over Kittrell et al. (US20230020051, published 19 January 2023, filed 16 July 2021, hereinafter Kittrell), as evidenced by Johnson Jr. et al. (“Safety Assessment of Isoparaffins as Used in Cosmetics”, published 2012, International Journal of Toxicology, Vol. 31, Supp. 3, Pgs. 269S-295S, hereinafter Johnson), in view of Forte (US5191152, patented 02 March 1993).
Kittrell 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 Para. [0001]; Figs. 1-3 and 5, where the FDCA is a precursor for deriving polyesters, see Para. [0002], “FDCA alkali metal” salts are produced which are “protonated to FDCA and precipitated out of solution”, see Paras. [0058]-[0059]; Figs. 3 and 6-9. 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], and heat is recovered from process separation recycled residue, see Para. [0042].
Regarding the limitations of instant application claims 1, 3, 8, and 9, Kittrell discloses in Example 1 “a cesium furoate conversion of 81.5% and a 2,5-furan dicarboxylate selectivity of 95% was achieved”, see Paras. [0069]-[0073], where a solution of cesium furoate, cesium carbonate, and cesium stearate 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 CO2 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, meeting:
The process for producing precursors, the slurry forming step with cesium furoate and cesium carbonate, and the heating step with CO2 to form the dicarboxylates in instant application claim 1;
8 bar is 800 kPA within the pressure and temperature range in instant application claim 3;
The alkali metal is cesium in instant application claim 8 and in instant application claim 9;
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 suspension fluid 308, see Fig. 5; Paras. [0012];[0055], meeting the hydrocarbon slurry with negligible reactant solubility in instant application claim 1; and,
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 producing a separated hydrocarbon, see Paras. [0058]-[0059];[0071]-[0072]; Fig. 3, meeting the separating the dicarboxylates from the hydrocarbon suspension producing a separated hydrocarbon in instant application claim 1.
In regard to the instant application claim 1 preamble statement of “for producing bio-monomers”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “for producing bio-monomers” is regarded as an intended use of the claimed process; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
Regarding the limitations of instant application claim 2, Kittrell discloses in Example 1 the slurry also contains 0.5 g cesium stearate which is a surfactant carboxylate anionic promoter, see Paras. [0062];[0070]-[0071], meeting the slurry comprising the carboxylic reaction promoter in instant application claim 2.
Regarding the limitations of instant application claims 4 and 5, Kittrell discloses in Example 1 “[t]he reaction was then initiated at 260° C., at 8 bar pressure, and 60 mL/min CO2 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 4 and in instant application claim 5.
Regarding the limitations of instant application claim 7, Kittrell discloses in Example 1 “[t]he solids were recovered by vacuum filtration using a Buchner funnel and Whatman qualitative filtering paper (Block 600 FIG. 3 ). The filtered solids were dissolved in distilled water and passed through a 250 mL separatory funnel to separate the suspension fluid from the aqueous solution (Block 700).”, see Para. [0072]. Then as depicted in Fig. 3, in Block 800 Acid is added to the produced “FDCA alkali metal” salts 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, meeting the recovering dicarboxylates and converting to furan dicarboxylic acid in instant application claim 7.
Regarding the limitations of instant application claims 10, 12, 13, and 19, Kittrell discloses in Fig. 3 and Example 1 “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]. Fig. 3 depicts the Example 1 cesium furoate is obtained from “catalytic reactive distillation step which converts C5 sugars contained in a hemicellulose feedstock source into 2-furan aldehyde (furfural)” in block 100, where the feedstock source is “agri-residues, dedicated energy crops, or municipal solid wastes”, see Paras. [0039];[0069]; Fig. 3, then “block 200 represents an oxidation reactor that oxidizes furfural such as furfural from furfural stream 106, to furoic acid in the presence of an alkali metal hydroxide 108 or recycle alkali metal hydroxide from stream 110”, thereby obtaining cesium furoate in Block 200, see Paras. [0047]-[0048];[0069] Fig. 3. 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, meeting:
The biomass derived furoates and the alkali metal furoates slurry are passed to a reactor in instant application claim 10;
The alkali metal is cesium in instant application claim 12 and in instant application claim 19;
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 CO2 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, where “FDCA alkali metal” salts are produced, see Paras. [0058]-[0059];[0072]-[0073]; Fig. 3, meeting:
Passing CO2 through the slurry in the vessel and heating the slurry to form dicarboxylates in instant application claim 10;
8 bar is 800 kPA within the pressure and temperature range in instant application claim 13;
Then in Example 1 “[t]he solids were recovered by vacuum filtration using a Buchner funnel and Whatman qualitative filtering paper (Block 600 FIG. 3). The filtered solids were dissolved in distilled water and passed through a 250 mL separatory funnel to separate the suspension fluid from the aqueous solution (Block 700).”, see Para. [0072]. Then as depicted in Fig. 3, in Block 800 Acid is added to the produced “FDCA alkali metal” salts 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, meeting the recovering dicarboxylates and converting to furan dicarboxylic acid in instant application claim 10;
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 suspension fluid 308, see Fig. 5; Paras. [0012];[0055], meeting the hydrocarbon slurry with negligible reactant solubility in instant application claim 10; and,
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 producing a separated hydrocarbon, see Paras. [0058]-[0059];[0071]-[0072]; Fig. 3, meeting the separating the dicarboxylates from the hydrocarbon suspension producing a separated hydrocarbon in instant application claim 10.
Regarding the limitations of instant application claim 11, Kittrell discloses in Example 1 the slurry also contains 0.5 g cesium stearate which is a surfactant carboxylate anionic promoter, see Paras. [0062];[0070]-[0071], meeting the slurry comprising the carboxylic reaction promoter in instant application claim 11.
Regarding the limitations of instant application claim 14, Kittrell discloses in Example 1 “[t]he reaction was then initiated at 260° C., at 8 bar pressure, and 60 mL/min CO2 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 14.
Regarding the limitations of instant application claim 17, Kittrell discloses 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, meeting recycling the separated hydrocarbon to form the slurry in instant application claim 17.
Regarding the limitations of instant application claim 20, since instant application claim 10 recites “furan dicarboxylate methyl ester or furan dicarboxylic acid”, the furan dicarboxylate methyl ester is an optional limitation in claim 10 and in claim 20, Kittrell discloses as depicted in Fig. 3, in Block 800 Acid is added to the produced “FDCA alkali metal” salts which “is protonated to FDCA and precipitated out of solution”, where 2,5-furan dicarboxylate acid is recovered, see Paras. [0058]-[0059];[0072]-[0073]; Fig. 3, meeting the recovering 2,5-furan dicarboxylate acid in instant application claim 20.
Regarding the limitations of instant application claims 21 and 22, 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 “particularly suitable suspension fluids include but are not limited to paraffinic solutions, fatty acid solutions, and combinations thereof”, see Para. [0050], and as evidenced by Johnson, IsoPar V is a C12-20 isoparaffin mixture “of branched chain aliphatic hydrocarbons with 12 to 20 carbons in the alkyl chain”, see Johnson, Pg. 270S, Table I, meeting within the paraffinic hydrocarbon carbon range in instant application claim 21 and in instant application claim 22.
Kittrell does not specifically teach:
The instant application claims 1 and 10 limitations of recovering heat from the separated hydrocarbon in a heat exchanger.
Forte is in the known prior art field of a “continuous solvent extraction process for the separation of aromatic hydrocarbons from a feedstock comprising aromatic and non-aromatic hydrocarbons provides more efficient heat utilization by using a lean solvent stream to heat the rich solvent stream”, see Abstract, and is applied to teach the same.
Regarding the limitations of instant application claims 1 and 10, Forte teaches “a continuous solvent extraction process for the separation of aromatic hydrocarbons from a feedstock comprising aromatic and non-aromatic hydrocarbons. The feedstock is contacted with a first lean solvent stream and a recycle stream in an extraction zone at extraction conditions. The feedstock is separated into a raffinate stream comprising non-aromatic hydrocarbons and a first rich solvent stream comprising solvent, aromatic hydrocarbons and non-aromatic hydrocarbons.”, see Col. 3, Ln. 59-Col. 4, Ln. 41, where the extraction mixture comprises paraffins, see Col. 5, Lns. 10-30; Table I, and “the first rich solvent stream is heated by heat exchange with the first lean solvent stream”, see Col. 4, Lns. 33-36. In distillation column 32, a “rich solvent phase, i.e., extract, containing aromatic hydrocarbons, non-aromatic hydrocarbons, solvent and water, is removed from extractor 12 via line 26 and passed through heat exchanger 28 to an upper section 34 of a distillation column 32 via line 30” and column 32 separates a “bottoms stream comprising lean solvent is withdrawn by a line 60”, see Col. 12, Ln. 30-Col. 13, Ln. 65, where the “term “lean solvent” is used herein to denote a mixed extraction solvent having a reduced aromatic hydrocarbon content relative to the rich solvent”, Col. 10, Ln. 65-Col. 11, Ln. 2. The bottoms extracted lean solvent stream 60 is separated into stream 14’ that enters heat exchanger 84 where the extracted lean solvent is used to heat rich solvent stream 58’ “from a temperature of about 200° to 210° F. to a temperature of about 220° to 240° F. by contact with the lean solvent in exchanger 84 which heating in turn cools the lean solvent from a temperature of about 300° to 320° F. to a temperature of about 200° to 220° F”, see Figs. 2-3; Col. 13, Ln. 65-Col. 14, Ln. 48, meeting:
Recovering heat from the separated hydrocarbon in a heat exchanger in instant application claim 1 and in instant application claim 10.
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 rearranged the solid-liquid separation residue heat recycle process of Kittrell to recover heat from the recycled residue separated in the solvent extraction and heat exchange as taught by Forte with a reasonable predictability of success for the purpose of reducing the overall “energy requirements of the process” “by minimizing the amount of heat withdrawn from the process to the environment” by “lowering the temperature of the lean solvent” through heat exchange with other process streams to improve “the selectivity of the solvent” “and the amount of non-aromatics extracted”, see Forte, Col. 3, Lns. 6-58; and, MPEP 2144.04 VI.C.
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 solid-liquid separation residue heat recycle process of Kittrell by applying the known technique of heat recovery from the extracted solvent and heat exchange as taught by Forte with a reasonable predictability of success for the purpose of reducing the overall “energy requirements of the process” “by minimizing the amount of heat withdrawn from the process to the environment” by “lowering the temperature of the lean solvent” through heat exchange with other process streams to improve “the selectivity of the solvent” “and the amount of non-aromatics extracted”, see Forte, Col. 3, Lns. 6-58; 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 Forte both teach solvent extraction in the purification of crude aromatic process streams, a person of ordinary skill in the art has good reason to modify Kittrell by relying upon Forte before the effective filing date of the claimed invention for knowledge generally available within the purification of crude aromatic process streams art regarding heat recovery, see MPEP 2143 B & G and 2141, for the benefit of reducing the overall “energy requirements of the process” “by minimizing the amount of heat withdrawn from the process to the environment” by “lowering the temperature of the lean solvent” through heat exchange with other process streams to improve “the selectivity of the solvent” “and the amount of non-aromatics extracted”, see Forte, Col. 3, Lns. 6-58; 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.
In addition, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, if the recycled solid-liquid separation residue of Kittrell is recycled at a differing temperature than the contents of the materials in the mixer, the recycled solid-liquid separation residue of Kittrell will inherently result in a heat exchange between the recycled residue and the contents of the materials in the mixer.
Double Patenting
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.
Claims 1-5, 7-14, 17, and 19-22 are newly provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 9-14, 16, 18, 19, and 20 of copending Application No. 18506342 to Shi et al. (hereinafter Shi ‘342) in view of Kittrell et al. (US20230020051, published 19 January 2023, filed 16 July 2021, hereinafter Kittrell), as evidenced by Johnson et al. (“Safety Assessment of Isoparaffins as Used in Cosmetics”, published 2012, International Journal of Toxicology, Vol. 31, Supp. 3, Pgs. 269S-295S, hereinafter Johnson), in view of Forte (US5191152, patented 02 March 1993).
This is a provisional nonstatutory double patenting rejection.
Regarding instant application claim 1, the claims of Shi ‘342 recite a process for producing precursors for producing bio-monomers, see Claim 1, the process comprising: forming a slurry comprising furoates and an alkali base, see Claims 1 and 10; and, heating the slurry in the presence of carbon dioxide to form dicarboxylates, see Claim 1, wherein the slurry is formed in a hydrocarbon having negligible solubility to the furoates and the alkali base, see Claims 1, 5, 10, 13, and 20.
Regarding instant application claim 2, the claims of Shi ‘342 recite wherein the slurry further comprises a carboxylate reaction promoter, see Claims 1, 3, 10, 13, and 14.
Regarding instant application claim 3, the claims of Shi ‘342 recite wherein the slurry is heated to a temperature between 150 °C to 360 °C at a pressure up to 6,895 kPa (1,000 psi), see Claims 1, 9, and 10.
Regarding instant application claims 4 and 5, the claims of Shi ‘342 recite wherein the carbon dioxide is provided in bubbles and wherein the bubbles flow counter current to the slurry, see Claims 1, 10, and 11.
Regarding instant application claim 7, the claims of Shi ‘342 recite further comprising: recovering the dicarboxylates; and, converting the dicarboxylates to furan dicarboxylate methyl ester or furan dicarboxylic acid, or both, see Claim 12.
Regarding instant application claims 8 and 9, the claims of Shi ‘342 recite wherein the alkali base, a furoate counter ion, or both are selected from a group consisting of: lithium, sodium, potassium, rubidium, cesium, and mixtures thereof, see Claims 13 and 16.
Regarding instant application claim 10, the claims of Shi ‘342 recite a process for producing furan dicarboxylate methyl ester or furan dicarboxylic acid from a biomass derived compound, see Claim 13, the process comprising: a slurry comprising furoates and an alkali base, see Claims 13 and 19; carbon dioxide to contact the slurry; heating the slurry to form dicarboxylates, see Claim 13; recovering the dicarboxylates, see Claim 13; and, converting the dicarboxylates to furan dicarboxylate methyl ester or furan dicarboxylic acid, or both, see Claim 13, wherein the slurry is formed in a hydrocarbon having negligible solubility to the furoates and the alkali base, see Claims 1, 5, 10, 13, and 20.
Regarding instant application claim 11, the claims of Shi ‘342 recite wherein the slurry further comprises a carboxylate reaction promoter, see Claims 13, 14, and 19.
Regarding instant application claims 12 and 19, the claims of Shi ‘342 recite wherein the alkali base, or a furoate counterion, or both are selected from a group consisting of: lithium, sodium, potassium, rubidium, cesium, and mixtures thereof, see Claim 16.
Regarding instant application claim 13, the claims of Shi ‘342 recite wherein the slurry is heated to a temperature between 150 °C to 360 °C, at a pressure up to 6,895 kPa (1,000 psi), see Claims 18 and 19.
Regarding instant application claim 14, the claims of Shi ‘342 recite wherein the carbon dioxide is passed into the vessel in bubbles which flow counter current to the slurry, see Claims 11, 13, and 19.
The claims of Shi ‘342 do not recite:
The instant application claim 10 limitations of the process comprising: passing a slurry into a vessel in a reaction zone; passing carbon dioxide into the vessel to contact the slurry;
The instant application claims 1 and 10 limitations of recovering the dicarboxylates by separating the hydrocarbon from the dicarboxylates to produce a separated hydrocarbon and recovering heat from the separated hydrocarbon in a heat exchanger;
The instant application claim 14 limitations of the carbon dioxide is passed into the vessel; and,
The limitations of instant application claims 17 and 20-22.
Regarding the limitations of instant application claim 10, Kittrell discloses in Fig. 3 and Example 1 “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]. Fig. 3 depicts the Example 1 cesium furoate is obtained from “catalytic reactive distillation step which converts C5 sugars contained in a hemicellulose feedstock source into 2-furan aldehyde (furfural)” in block 100, where the feedstock source is “agri-residues, dedicated energy crops, or municipal solid wastes”, see Paras. [0039];[0069]; Fig. 3, then “block 200 represents an oxidation reactor that oxidizes furfural such as furfural from furfural stream 106, to furoic acid in the presence of an alkali metal hydroxide 108 or recycle alkali metal hydroxide from stream 110”, thereby obtaining cesium furoate in Block 200, see Paras. [0047]-[0048];[0069] Fig. 3. 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, meeting:
The biomass derived furoates and the alkali metal furoates slurry are passed to a reactor in instant application claim 10;
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 CO2 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, where “FDCA alkali metal” salts are produced, see Paras. [0058]-[0059];[0072]-[0073]; Fig. 3, meeting:
Passing CO2 through the slurry in the vessel and heating the slurry to form dicarboxylates in instant application claim 10;
Then in Example 1 “[t]he solids were recovered by vacuum filtration using a Buchner funnel and Whatman qualitative filtering paper (Block 600 FIG. 3). The filtered solids were dissolved in distilled water and passed through a 250 mL separatory funnel to separate the suspension fluid from the aqueous solution (Block 700).”, see Para. [0072]. Then as depicted in Fig. 3, in Block 800 Acid is added to the produced “FDCA alkali metal” salts 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, meeting the recovering dicarboxylates and converting to furan dicarboxylic acid in instant application claim 10.
Regarding the limitations of instant application claims 1 and 10, 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 producing a separated hydrocarbon, see Paras. [0058]-[0059];[0071]-[0072]; Fig. 3, meeting the separating the dicarboxylates from the hydrocarbon suspension producing a separated hydrocarbon in instant application claim 1 and in instant application claim 10.
Regarding the limitations of instant application claim 17, Kittrell discloses 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, meeting recycling the separated hydrocarbon to form the slurry in instant application claim 17.
Regarding the limitations of instant application claim 20, since instant application claim 10 recites “furan dicarboxylate methyl ester or furan dicarboxylic acid”, the furan dicarboxylate methyl ester is an optional limitation in claim 10 and in claim 20, Kittrell discloses as depicted in Fig. 3, in Block 800 Acid is added to the produced “FDCA alkali metal” salts which “is protonated to FDCA and precipitated out of solution”, where 2,5-furan dicarboxylate acid is recovered, see Paras. [0058]-[0059];[0072]-[0073]; Fig. 3, meeting the recovering 2,5-furan dicarboxylate acid in instant application claim 20.
Regarding the limitations of instant application claims 21 and 22, 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 “particularly suitable suspension fluids include but are not limited to paraffinic solutions, fatty acid solutions, and combinations thereof”, see Para. [0050], and as evidenced by Johnson, IsoPar V is a C12-20 isoparaffin mixture “of branched chain aliphatic hydrocarbons with 12 to 20 carbons in the alkyl chain”, see Johnson, Pg. 270S, Table I, meeting within the paraffinic hydrocarbon carbon range in instant application claim 21 and in instant application claim 22.
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 claims of Shi ‘342 to use the vessel and the process to produce 2,5 FDCA as taught by Kittrell with a reasonable predictability of success for the purpose of the “continuous production of FDCA from furan derived carboxylic acids” by “a synthesis route using C5 sugars for the production of FDCA, establishing a process that utilizes CO2, a harmful greenhouse gas, and the furan carboxylic acids”, see Kittrell, Paras. [0007]-[0012].
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 claims of Shi ‘342 by applying the known technique of the vessel and the process to produce 2,5 FDCA as taught by Kittrell with a reasonable predictability of success for the purpose of the “continuous production of FDCA from furan derived carboxylic acids” by “a synthesis route using C5 sugars for the production of FDCA, establishing a process that utilizes CO2, a harmful greenhouse gas, and the furan carboxylic acids”, see Kittrell, Paras. [0007]-[0012]; 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 ‘342 and Kittrell both teach the production of FDCA, a person of ordinary skill in the art has good reason to modify the claims of Shi ‘342 by relying upon Kittrell before the effective filing date of the claimed invention for knowledge generally available within the production of aromatic dicarboxylic acid art, see MPEP 2143 B & G and 2141, for the benefit of the “continuous production of FDCA from furan derived carboxylic acids” by “a synthesis route using C5 sugars for the production of FDCA, establishing a process that utilizes CO2, a harmful greenhouse gas, and the furan carboxylic acids”, see Kittrell, Paras. [0007]-[0012]; 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.
The claims of Shi ‘342 and Kittrell do not recite:
The instant application claims 1 and 10 limitations of recovering heat from the separated hydrocarbon in a heat exchanger;
Regarding the limitations of instant application claims 1 and 10, Forte teaches “a continuous solvent extraction process for the separation of aromatic hydrocarbons from a feedstock comprising aromatic and non-aromatic hydrocarbons. The feedstock is contacted with a first lean solvent stream and a recycle stream in an extraction zone at extraction conditions. The feedstock is separated into a raffinate stream comprising non-aromatic hydrocarbons and a first rich solvent stream comprising solvent, aromatic hydrocarbons and non-aromatic hydrocarbons.”, where the extraction mixture comprises paraffins, see Col. 5, Lns. 10-30; Table I, and “the first rich solvent stream is heated by heat exchange with the first lean solvent stream”, see Col. 3, Ln. 59-Col. 4, Ln. 41. In distillation column 32, a “rich solvent phase, i.e., extract, containing aromatic hydrocarbons, non-aromatic hydrocarbons, solvent and water, is removed from extractor 12 via line 26 and passed through heat exchanger 28 to an upper section 34 of a distillation column 32 via line 30” and separates a “bottoms stream comprising lean solvent is withdrawn by a line 60”, see Col. 12, Ln. 30-Col. 13, Ln. 65, where the “term “lean solvent” is used herein to denote a mixed extraction solvent having a reduced aromatic hydrocarbon content relative to the rich solvent”, Col. 10, Ln. 65-Col. 11, Ln. 2. The bottoms extracted lean solvent stream 60 is separated into stream 14’ that enters heat exchanger 84 where the extracted lean solvent is used to heat rich solvent stream 58’ “from a temperature of about 200° to 210° F. to a temperature of about 220° to 240° F. by contact with the lean solvent in exchanger 84 which heating in turn cools the lean solvent from a temperature of about 300° to 320° F. to a temperature of about 200° to 220° F”, see Figs. 2-3; Col. 13, Ln. 65-Col. 14, Ln. 48, meeting:
Recovering heat from the separated hydrocarbon in a heat exchanger in instant application claim 1 and in instant application claim 10.
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 claims of Shi ‘342 to recover heat from recycled residue separated in a solvent extraction and heat exchange as taught by Forte with a reasonable predictability of success for the purpose of reducing the overall “energy requirements of the process” “by minimizing the amount of heat withdrawn from the process to the environment” by “lowering the temperature of the lean solvent” through heat exchange to improve “the selectivity of the solvent” “and the amount of non-aromatics extracted”, see Forte, Col. 3, Lns. 6-58; and, MPEP 2144.04 VI.C.
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 claims of Shi ‘342 by applying the known technique of heat recovery from the extracted solvent and heat exchange as taught by Forte with a reasonable predictability of success for the purpose of reducing the overall “energy requirements of the process” “by minimizing the amount of heat withdrawn from the process to the environment” by “lowering the temperature of the lean solvent” through heat exchange to improve “the selectivity of the solvent” “and the amount of non-aromatics extracted”, see Forte, Col. 3, Lns. 6-58; 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 ‘342 and Forte both teach the purification of crude aromatic process streams, a person of ordinary skill in the art has good reason to modify the claims of Shi ‘342 by relying upon Forte before the effective filing date of the claimed invention for knowledge generally available within the purification of crude aromatic process streams art regarding heat recovery, see MPEP 2143 B & G and 2141, for the benefit of reducing the overall “energy requirements of the process” “by minimizing the amount of heat withdrawn from the process to the environment” by “lowering the temperature of the lean solvent” through heat exchange to improve “the selectivity of the solvent” “and the amount of non-aromatics extracted”, see Forte, Col. 3, Lns. 6-58; 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.
Conclusion
No claims are allowed.
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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
