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 .
Claims 1-15 filed 21 November 2023 are pending in the application.
Priority
This application is a 371 of PCT/EP2022/062741 filed 05/11/2022. This application claims foreign priority to MALAYSIA MYPI2021002821 filed 05/21/2021, under 35 U.S.C. 119(a)-(d). The certified copy of the priority document has been filed in the instant application.
The parent application MALAYSIA MYPI2021002821 to which priority is claimed is seen to provide adequate support under 35 U.S.C. 112 for claims 1-15 of this application.
Specification
The disclosure is objected to because of the following informalities: In the specification, at page 1, everything above the title of the invention should be deleted. This also applies to the Abstract. Also, in the Abstract the terms ‘No figure’ should be deleted
Appropriate correction is required.
Claim Objections
Page 1 of the Claims is objected to because of the following informalities: At page 1, everything above the title ‘Claims’ should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 14-15 are rejected under 35 U.S.C. 101 because it is not clear what statutory class the claim falls into. Specifically, by reciting a use, the claim could be drawn to a process or it could be drawn to a product. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-6, 9-11 and 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The recitation of the term ‘preferably’ in claims 4-6 and 9, and recitation of the terms ‘in particular’ in claims 10-11 and 13-14 renders the claim(s) indefinite because it is unclear whether the limitations after the said terms are part of the claimed invention in these and all other claims in which the said terms are recited. See MPEP 2173.05(d). Applicant is requested to check all the claims for such recitations.
Claims 14-15 provide for the use of the compound according to any one of claims 1-12, but, since the claims do not set forth any steps involved in the method/process of use, it is unclear what method/process of use applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Painter et al (EP 2975016 A1; cited in IDS filed 01/12/2024) in view of Schaum et al (US 4,094,901) and further in view of Broell et al (US 7,714,165), Zhang et al (Green Chemistry, 2017, 19, 5708-5713) and Turkmen et al (Chemistry Select, 2019, 4, 8322-8326).
Painter et al teaches a process for production of acetic anhydride via the reaction of ketene with acetic acid (paras 0032, 0033; part f the limitations of claim 1 regarding reagents and product anhydride; limitation of claims 3 and 5). The acetic acid used is from wood acetylation process (para 0033; as in claim 4). Figures 1 and 2 show the reaction zones for ketene-based anhydride production and ketene production (as in claim 8). The ketene furnace is operated at a temperature of 700oC to 740oC (para 0002; part of the limitation of claim 7-ketene produced by thermal process and limitation of claim 9). Painter teaches that the ketene is reacted with acetic acid in an exothermic process to form acetic anhydride (para 0002). In view of this one of ordinary skill in the art will adjust the temperature of the second zone to be lower and in the range recited in claim 9 in order to have a controlled reaction leading to the final product. Painter teaches that acetic acid and acetic anhydride are used in the process for acetylation of wood, and thereby it is desired to avoid wasting the acetylation medium, and preferably recirculate and reuse it in wood acetylation (para 0003). This renders obvious the use of the carboxylic anhydride for treating wood as in claim 13. From the teaching of Painter, it would be obvious to the artisan to use all the other carboxylic acids recited in claim 5 to react with ketene to obtain the corresponding anhydrides.
Painter does not teach introduction of carboxylic acid comprising C2-12 aldehydes and/or C3-12 ketones as in claim 1, and does not teach the limitations of claims 2, 6-7 and 10-12.
Schaum teaches acetic acid is prepared by catalytic oxidation of acetaldehyde. The acetic acid obtained contains about 1 to 10% weight of acetaldehyde (col. 3, claim 1; part of the limitation of claim 1, parts I and II). In view of this the artisan would meet the conditions I and II as in claim 1 since the acetic acid is going to have some acetaldehyde. Regarding claim 2, it is a matter of choice to use carboxylic acid having the amounts of the aldehyde and/or ketones. The less the contaminants in the starting carboxylic acid the better the yield of the anhydride without the contaminants affecting the reaction that produces the desired anhydride. Regarding claim 10, the artisan can provide the carboxylic acid comprising the aldehydes and ketones without intermediate treatment if their amounts is low enough that it will not affect the reaction of the yield of the desired product. Regarding claim 11, the artisan can use the purification steps recited in order to purify the carboxylic acid to reduce the amount of the aldehyde/ketone contaminants.
Broell, drawn to a method of producing carboxylic anhydrides, teaches purification of the anhydride via rectification (claim 1 of Broell; as in claim 6). This same procedure can be used in the instant method for purifying the carboxylic anhydride.
Zhang et al teaches conversion of aldehyde to the corresponding carboxylic acid in the presence of metal ions and water (page 5710, Fig. 3).
Turkmen et al teaches conversion of ketones to alcohol using metal salts and water (page 8323, Table 1).
One of ordinary skill in the art can use the reactions taught by Zhang and Turkmen to teat the carboxylic acids containing the aldehydes and ketones and then subject the composition to the operations as in claim 12 to recover purified carboxylic acid fraction. This is well withing the skill of the artisan to recognize and perform.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, the production of carboxylic anhydrides via reaction of a carboxylic acid and ketene and the purification steps as claimed are known in the art. Thus, it is obvious to arrive at the claimed process from the combined teachings of the prior art.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would prefer to use an art tested method for making the carboxylic anhydride.
Conclusion
Pending claims 1-15 are rejected
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693