Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This is a response to Applicant’s communication filed on November 16, 2023. Application No. 18/510,856, filed November 16, 2023, is a U.S. Nonprovisional application, which claims the benefit of U.S. Provisional application No. 63/425,875, filed November 16, 2022. Claims 1-21 are pending.
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.
Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Pinkos et al., U.S. Patent No. 8,466,299 B2, in view of Huber et al., U.S. Patent No. 10,077,224. Pinkos discloses a method to make delta-valerolactone (DVL or VLO), the method comprising dehydrogenating 1,5-pentanediol (PD) by contacting PD with a supported metal catalyst for a time, at a temperature, and at a pressure wherein at least a portion of the PD is converted to DVL (VLO). The conditions of dependent claims 2-21 of the present invention are the same as those disclosed in Pinkos. See Id., ‘299 patent, claims 1-14. The difference between the prior art and present inventions is the conversion of 2-hydroxytetrahydropyran (HTHP) to DVL.
Nonetheless, Pinkos also teaches that the synthesis of DVL from PD proceeds thru the intermediate, 5-hydroxypetanal (5Hval). See Id., Col. 4, lns. 15-23. Huber teaches that 5Hval is in equilibrium with HTHP under the conditions disclosed in both Pinkos and Huber, as follows:
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(Huber et al., ‘224 patent, Col. 11, Lns. 1-14; please note that the structure of 2-hydroxytetrahyropyran (2-HY-THP) is incorrectly depicted in the formula above; the chemical structure is missing the oxygen atom of the heterocyclic pyran ring.) Accordingly, all the elements of the present invention were known in the art at the time of the invention.
It would have been obvious to the ordinary artisan at the time of the invention to combine the method of making DVL from PD as taught Pinkos in view of the teaching of Huber (PD is in equilibrium with HTHP) with a reasonable expectation of success. In this case, the elements of the present invention were known in the art at the time of the invention. The present invention combines these known prior art elements according to known methods to yield predictable results.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached Monday - Friday, 9:00 a.m. -5:00 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY R ROZOF/Primary Examiner, Art Unit 1625
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