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 .
Priority
This application claims the benefit of US Provisional Application No. 63/477,857 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 § 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.
Claim 5 is rejected 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 depends from claim 3. Claim 5 recites the limitation “the bubbles” in line 1. There is insufficient antecedent basis for this limitation in the claim. To provide for sufficient antecedent basis, claim 5 is interpreted to depend from claim 4.
Claim Rejections - 35 USC § 102
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)(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.
Claim 1-17, 19, and 20 are rejected 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).
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 Paras. [0001]; [0007]-[0012]; Figs. 1-3 and 5, where the FDCA is a precursor for deriving polyesters, see Para. [0002], and the “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.
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; and,
The alkali metal is cesium in instant application claim 8 and in instant application claim 9.
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 6, Kittrell discloses 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 6.
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.
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 15, Kittrell discloses 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; Para. [0055], meeting the hydrocarbon slurry with negligible reactant solubility in instant application claim 15.
Regarding the limitations of instant application claim 16, 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)” 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 dicarboxylates from the hydrocarbon suspension in instant application claim 16.
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.
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 1-20 are 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) in view of Gray et al. (US20150038737, published 05 February 2015, hereinafter Gray).
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; and,
The alkali metal is cesium in instant application claim 8 and in instant application claim 9.
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 6, Kittrell discloses 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 6.
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.
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 15, Kittrell discloses 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; Para. [0055], meeting the hydrocarbon slurry with negligible reactant solubility in instant application claim 15.
Regarding the limitations of instant application claim 16, 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)” 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 dicarboxylates from the hydrocarbon suspension in instant application claim 16.
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.
Kittrell does not specifically teach the limitations of instant application claim 18.
Gray is in the known prior art field of processes/systems “for the purification of aromatic dicarboxylic acid (ACA)”, see Abstract, “in which the water and/or heat recovery are maximized”, see Para. [0020].
Regarding the limitations of instant application claim 18, Gray teaches the crude terephthalic acid powder is slurried in water, where the “water comprises make-up demineralised water added in line 52, flash streams added in line 58 from the crystallisation zone 55, the filtration unit 56 and the drier 57, wash liquor added in line 59 from the filtration unit 56 and a flash stream added in line 60 from the mother liquor filter 61. The heat contained in the streams added to the feed preparation zone 51 in lines 58, 59 and 60, is used to heat the make-up water added in line 52.”, see Para. [0078]; Fig. 2, and the feed preparation zone “vessel will preferably include a heat recovery coil located at the point of the inlet for make-up water”, see Paras. [0061]-[0070];[0084]; Fig. 3, meeting the heat recovery from the separated suspension fluid in instant application claim 18.
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 recycle process of Kittrell to recover heat from the recycled residue separated in the solid-liquid separation as taught by Gray with a reasonable predictability of success for the purpose of separating a slurry of crude aromatic dicarboxylic acid from a mother liquor “in an energy efficient manner” by maximizing heat recovery “using a simplified separation system” in a plant layout with a reduced footprint, see Gray, Paras. [0017];[0020];[0078];[0084]; 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 recycle process of Kittrell by applying the known technique of heat recovery from the recycled residue separated in the solid-liquid separation as taught by Gray with a reasonable predictability of success for the purpose of separating a slurry of crude aromatic dicarboxylic acid from a mother liquor “in an energy efficient manner” by maximizing heat recovery “using a simplified separation system” in a plant layout with a reduced footprint, see Gray, Paras. [0017];[0020];[0078];[0084]; 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 Gray both teach solid-liquid separation residue recycle in the purification of crude aromatic dicarboxylic acid industry, a person of ordinary skill in the art has good reason to modify Kittrell by relying upon Gray before the effective filing date of the claimed invention for knowledge generally available within the purification of crude aromatic dicarboxylic acid art regarding heat recovery, see MPEP 2143 B & G and 2141, for the benefit of separating a slurry of crude aromatic dicarboxylic acid from a mother liquor “in an energy efficient manner” by maximizing heat recovery “using a simplified separation system” in a plant layout with a reduced footprint, see Gray, Paras. [0017];[0020];[0078];[0084]; 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).
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Claims 1-9 are provisionally rejected 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). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 6, the claims of Shi ‘342 recite 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 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.
Claims 10-17, 19, and 20 are provisionally rejected 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).
This is a provisional nonstatutory double patenting rejection.
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.
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.
Regarding instant application claim 15, the claims of Shi ‘342 recite wherein the slurry is formed in a hydrocarbon having negligible solubility to the furoates and the alkali base, see Claims 19 and 20.
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 claim 14 limitations of the carbon dioxide is passed into the vessel; and,
The limitations of instant application claims 16, 17, and 20.
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 claim 16, 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)” 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 dicarboxylates from the hydrocarbon suspension in instant application claim 16.
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.
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.
Claim 18 is provisionally rejected 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).
This is a provisional nonstatutory double patenting rejection.
The claims of Shi ‘342 do not teach the limitations of instant application claim 18.
Regarding the limitations of instant application claim 18, Gray teaches the crude terephthalic acid powder is slurried in water, where the “water comprises make-up demineralised water added in line 52, flash streams added in line 58 from the crystallisation zone 55, the filtration unit 56 and the drier 57, wash liquor added in line 59 from the filtration unit 56 and a flash stream added in line 60 from the mother liquor filter 61. The heat contained in the streams added to the feed preparation zone 51 in lines 58, 59 and 60, is used to heat the make-up water added in line 52.”, see Para. [0078]; Fig. 2, and the feed preparation zone “vessel will preferably include a heat recovery coil located at the point of the inlet for make-up water”, see Paras. [0061]-[0070];[0084]; Fig. 3, meeting the heat recovery from the separated suspension fluid in instant application claim 18.
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 the solid-liquid separation as taught by Gray with a reasonable predictability of success for the purpose of separating a slurry of crude aromatic dicarboxylic acid from a mother liquor “in an energy efficient manner” by maximizing heat recovery “using a simplified separation system” in a plant layout with a reduced footprint, see Gray, Paras. [0017];[0020];[0078];[0084].
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 a recycled residue separated in the solid-liquid separation as taught by Gray with a reasonable predictability of success for the purpose of separating a slurry of crude aromatic dicarboxylic acid from a mother liquor “in an energy efficient manner” by maximizing heat recovery “using a simplified separation system” in a plant layout with a reduced footprint, see Gray, Paras. [0017];[0020];[0078];[0084]; 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 Gray both teach solid-liquid separation in the purification of crude aromatic dicarboxylic acid industry, a person of ordinary skill in the art has good reason to modify the claims of Shi ‘342 by relying upon Gray before the effective filing date of the claimed invention for knowledge generally available within the purification of crude aromatic dicarboxylic acid art regarding heat recovery, see MPEP 2143 B & G and 2141, for the benefit of separating a slurry of crude aromatic dicarboxylic acid from a mother liquor “in an energy efficient manner” by maximizing heat recovery “using a simplified separation system” in a plant layout with a reduced footprint, see Gray, Paras. [0017];[0020];[0078];[0084]; 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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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