DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 1 December 2023, in the matter of Application No. 18/566,345. Said documents have been entered on the record. The Examiner further acknowledges the following:
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 are pending.
Claims 3-15 have been amended.
No claims have been cancelled.
Thus, claims 1-15 represent all claims currently under consideration.
Priority
Acknowledgment is made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the present application filed 1 December 2023 and in parent Application No. PCT/EP2022/068503, filed on 5 July 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant claims foreign priority to Application No. EP21185121.7, filed on 12 July 2021.
Domestic Priority data as claimed by Applicant:
This application is a 371 of PCT/EP2022/068503 (07/05/2022)
Foreign Applications:
EUROPEAN PATENT 21185121.7 (07/12/2021)
Information Disclosure Statement (IDS)
The information disclosure statement (IDS) submitted on 1 December 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the Examiner.
Claim Objections
Claim 2 is objected to because of the following informalities:
In line 2, “…preferably of below…” should read “…preferably below…”
Claim 4 is objected to because of the following informalities:
In line 4, “…is the selected…” should read “…is selected…”
In line 6, “2-butanol” is recited twice. One of the instances of “2-butanol” should be deleted.
Claim 6 is objected to because of the following informalities:
In line 4, “…preferably of from…” should read “…preferably from…”
Claim 8 is objected to because of the following informalities:
In line 1, “…donor…” should read “…donors…”
Claim 9 is objected to because of the following informalities:
In line 1, “…donor…” should read “…donors…”
Claim 12 is objected to because of the following informalities:
In lines 3-4, “…more preferably 10 to 55 vol.%…” should read “…more preferably in a range of 10 to 55 vol.%…”
In line 4, “…the range…” should read “…a range…”
Claim 13 is objected to because of the following informalities:
In line 2, “…the range…” should read “…a range…”
Appropriate correction is required.
Claim Interpretation
The term “Guerbet self-condensation reaction” as recited in instant claim 1 will be interpreted in a manner consistent with the written description as the self-condensation of alcohols in the presence of a catalyst into dimerized alcohols or higher order alcohols (Specification; page 1, lines 7-8).
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 2, 4-8, and 10-13 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.
Claim 2 recites the phrase “…preferably of below 175ºC, more preferably below 145ºC, and most preferably below 125ºC.” However, it is unclear whether the claimed narrower range is a limitation, and the use of the word “preferably” leads to confusion over the intended scope of the claim, thus rendering it indefinite.
Similarly, claims 4-8 and 10-13 recite claimed narrower ranges of numbers or species and employ the ambiguous use of the term “preferably”. MPEP § 2173.05(c)(I) states that “Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim.” The Examiner notes that amending the claim language to address these ambiguities would ameliorate these claim rejections.
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.
Claims 1, 3-10, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida et al. (EP 1829851 B1; IDS of 12-01-2023; hereinafter “Tsuchida”), in view of Stein et al. (US 3,296,317; hereinafter “Stein”), Ftouni et al. (EP 3542897 A1; hereinafter “Ftouni”), and Silvester et al. (“Reactivity of ethanol over hydroxyapatite-based Ca-enriched catalysts with various carbonate contents”; Catal. Sci. Technol. 2015, 5, 2994-3006; hereinafter “Silvester”).
Regarding claim 1, claim 14, and claim 15 depending from claim 14, Tsuchida teaches a production method for synthesizing a high molecular alcohol having 6 or more and an even number of carbon atoms such as 1-butanol, hexanol, octanol, and decanol comprising contacting ethanol as a raw material with a calcium phosphate hydroxyapatite catalyst through self-condensation reactions (Tsuchida; claims 1-4; paragraphs [0006] and [0008]-[0009]; equations (2)-(8)). The method of Tsuchida further comprises contacting ethanol with a catalyst directly in the gas phase or in the presence of an inert carrier gas such as nitrogen or helium (Tsuchida; paragraph [0024]). Example 2 of Tsuchida teaches an optimization experiment of 1-butanol synthesis in a fixed bed gas flow catalytic reactor, wherein ethanol at a concentration of 8.1 vol% in a carrier gas is introduced to a hydroxyapatite catalyst at a reaction temperature in a range of 150 to 500 ºC and a contact time of 1.0 second (Tsuchida; paragraphs [0029] and [0032]-[0034]; Example 2, Table 1).
The skilled artisan would recognize that the method of Tsuchida comprises a Guebert self-condensation reaction in the gas phase, in a manner consistent with instant claims 1 and 14. In addition, the skilled artisan would recognize that the ethanol raw material used in the method of Tsuchida is a primary alcohol that has at least one β-hydrogen, in a manner consistent with step a) of instant claim 1 and instant claim 15. Furthermore, the skilled artisan would recognize that the the ethanol is vaporized and reacted in the presence of a catalyst, in a manner consistent with steps c) and d) of instant claim 1.
Tsuchida fails to explicitly teach providing a surface-reacted calcium carbonate as a catalyst, wherein the surface-reacted calcium carbonate is a reaction product of ground natural calcium carbonate (GNCC) or precipitated calcium carbonate (PCC) with carbon dioxide and one or more H3O+ ion donors and wherein the carbon dioxide is formed in situ by the H3O+ ion donors treatment and/or is supplied from an external source, and wherein the surface-reacted calcium carbonate has a specific surface area of at least 15 m2/g, measured using nitrogen and the BET method according to ISO 9277:2010, as recited in step b) of instant claims 1 and claim 14; and reacting the vaporized alcohol in the presence of the surface-reacted calcium carbonate as a catalyst, as recited in step d) of instant claim 1.
However, Stein teaches a process for the polymerization of unsaturated fatty alcohols through a Guerbet reaction comprising contacting an unsaturated fatty alcohol in the presence of at least one basically reacting alkaline earth metal compound (Stein; Title; claim 1; Col. 1, lines 26-34). Stein further teaches that catalysts suitable for use in the invention includes slightly basic alkaline earth metal compounds and, in particular, the bicarbonates, carbonates, oxides, hydroxides, alcoholates, phenolates, or compounds of magnesium, calcium, strontium, and barium (Stein; Col. 2, lines 51-56). Of particular note, Example 3 of Stein teaches the use of calcium carbonate as a catalyst for the polymerization of a fatty alcohol (Stein; Col. 5, lines 37-42; Examples 3).
Although the teachings of Stein demonstrate that calcium carbonate can catalyze the Guerbet reaction, Stein does not teach a surface-reacted calcium carbonate.
However, Ftouni teaches a method for the transesterification of carboxylic acid esters by heterogeneous catalysis using a catalyst that is obtainable by calcination of surface-reacted calcium carbonate, wherein the surface-reacted calcium carbonate is a reaction product of ground natural calcium carbonate-containing mineral (GNCC) or precipitated calcium carbonate (PCC) with carbon dioxide and one or more H3O+ ion donors and wherein the carbon dioxide is formed in situ by the H3O+ ion donors treatment and/or is supplied from an external source, and wherein the catalyst has a specific surface area of from 1 to 200 m2/g, preferably from 5 to 120 m2/g, and most preferably from 10 to 100 m2/g, measured using nitrogen and the BET method according to ISO 9277:2010. (Ftouni; Title; Abstract; claims 1 and 6). The specific surface area range taught by Ftouni overlaps with the instantly claimed range of at least 15 m2/g recited in instant claims 1 and 14. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Ftouni further teaches that the use of a catalyst comprising calcined surface-reacted calcium carbonate leads to a reduction of impurities (Ftouni; paragraph [0019]). In addition, Ftouni teaches that the particle size distribution and/or the specific surface area of the catalyst can be controlled by applying the appropriate calcination temperature and/or calcination time (Ftouni; paragraph [0117]).
Further regarding claims 1 and 14, Ftouni teaches that the chemical composition of surface-reacted calcium carbonate changes upon thermal activation and contains 70 to 99% hydroxyapatite based on the total composition as determined by XRD (Ftouni; paragraph [0114]; Fig. 4). In addition, a preferred embodiment in the written description of the instant application describes that the surface-reacted calcium carbonate provided in step b) contains an amount of hydroxyapatite relative to an amount of calcium carbonate in the range of from 10:90 to 90:10, preferably 35:65 to 90:10, more preferably 60:40 to 90:10 (e.g. 70:30 to 85:15), as determined by XRD (Specification; page 15, lines 35-39).
Furthermore, Silvester teaches the reactivity of ethanol in the Guerbet reaction over hydroxyapatite-based Ca-enriched catalysts with various carbonate contents (Silvester; Title; Abstract). Of particular note, Silvester teaches that the best performance was obtained over the carbonated Hap-CO3 catalyst (Ca/P ratio = 1.70; Specific surface area = 107 m2g-1) in terms of butanol selectivity from ethanol and yield of total alcohols (Silvester; Abstract; page 2995, Table 1; page 2996, Table 2).
Thus, the skilled artisan would recognize that the surface-reacted calcium carbonate of Ftouni and the instant application largely comprises hydroxyapatite, which is known to catalyze the Guerbet self-condensation as taught by Tsuchida and detailed above (Tsuchida; claims 1-4; paragraph [0014]). In addition, the teachings of Silvester demonstrate that hydroxyapatite catalysts enriched in both calcium and in carbonates are highly effective in catalyzing the Guerbet reaction of ethanol to butanol (Silvester; Abstract; page 2995, Table 1; page 2996, Table 2).
Therefore, due to the close structural similarity of the catalysts of Tsuchida, Ftouni, and Silvester with respect to the instantly claimed surface-reacted calcium carbonate, the skilled artisan could reasonably deduce that the transesterification catalyst of Ftouni could be applied to the Guerbert self-condensation method of Tsuchida and Silvester with a reasonable expectation of success because of the expectation that compounds similar in structure will have similar properties. See MPEP § 2144.09(I).
The prior art as taught by Tsuchida, Stein, Ftouni, and Silvester reside in the closely overlapping technical field of calcium-derived catalysts in synthetic organic chemistry. In addition, Tsuchida, Ftouni, and Silvester teach catalysts comprising hydroxyapatite; Ftouni and Stein teach catalysts comprising calcium carbonate; Ftouni and Silvester teach catalysts comprising calcium, hydroxyapatites, and carbonates; and Tsuchida, Stein, and Silvester teach calcium-derived catalysts for the Guerbet self-condensation reaction. Therefore, the prior art is deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would have been sufficiently motivated to substitute the hydroxyapatite catalyst of Tsuchida with the surface-reacted calcium carbonate catalyst of Ftouni that comprises hydroxyapatite and calcium carbonate to pursue an alternative catalyst known to lead to a reduction of impurities and whose particle size distribution and/or the specific surface area of the catalyst can be controlled by applying the appropriate calcination temperature and/or calcination time with a reasonable expectation of success. Such an endeavor would result in the simple substitution of one known element for another to obtain predictable results, as described in MPEP § 2143(I)(B).
Furthermore, since (1) Stein teaches that calcium carbonate can catalyze the Guerbet reaction; (2) Silvester teaches that carbonated hydroxyapatite catalysts enriched in calcium offer improved butanol selectivity and ethanol conversion in the Guerbet reaction; and (3) the catalysts of Tsuchida, Ftouni, Silvester, and of the instantly claimed invention largely comprise hydroxyapatite, the skilled artisan would recognize that surface-reacted calcium carbonate can be predictably applied to catalyze the Guerbet reaction because compounds similar in structure are expected to possess similar properties. See MPEP § 2144.09(I).
Therefore, it would have been prima facie obvious it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the catalyst of Tsuchida with the catalyst of Ftouni based on the supporting teachings of Stein and Silvester to arrive at the claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, an alternative catalyst known to lead to a reduction of impurities and whose particle size distribution and/or the specific surface area of the catalyst can be controlled by applying the appropriate calcination temperature and/or calcination time, as described above.
Regarding claims 3-4 depending from claim 1, Tsuchida teaches a production method for synthesizing a high molecular alcohol having 6 or more and an even number of carbon atoms such as 1-butanol, hexanol, octanol, and decanol comprising contacting ethanol as a raw material with a calcium phosphate hydroxyapatite catalyst through self-condensation reactions (Tsuchida; claims 1-4; paragraphs [0006] and [0008]-[0009]; equations (2)-(8)). The skilled artisan would recognize that ethanol is a primary alcohol and therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of Tsuchida in view of Stein, Ftouni, and Silvester.
Regarding claim 5 depending from claim 1, Ftouni teaches that the the surface-reacted calcium carbonate particles have a volume median grain diameter d 50(vol) of from 0.5 to 50 µm (Ftouni; paragraph [0014]). According to a further embodiment, Ftouni teaches that the natural or precipitated calcium carbonate is in form of particles having a top cut particle size d 98(wt) of from 0.15 to 55 µm, (Ftouni; paragraph [0075]). These ranges overlap with the ranges recited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 6 depending from claim 1, Ftouni teaches wherein the catalyst has a specific surface area of from 1 to 200 m2/g, preferably from 5 to 120 m2/g, and most preferably from 10 to 100 m2/g, measured using nitrogen and the BET method according to ISO 9277:2010 (Ftouni; claim 6). The specific surface area range taught by Ftouni overlaps with the instantly claimed range. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 7 depending from claim 1, Ftouni teaches that the surface-reacted calcium carbonate has an intra-particle intruded specific pore volume in the range from 0.1 to 2.3 cm3/g, more preferably from 0.2 to 2.0 cm3/g, especially preferably from 0.4 to 1.8 cm3/g and most preferably from 0.6 to 1.6 cm3/g, calculated from mercury porosimetry measurement. These ranges overlap with the ranges recited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 8 depending from claim 1, Ftouni teaches that the at least one H3O+ ion donor is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, citric acid, oxalic acid, acetic acid, formic acid and mixtures thereof. Preferably the at least one H3O+ ion donor is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, oxalic acid, H2PO4–, being at least partially neutralized by a corresponding cation such as Li+, Na+ or K+, HPO42–, being at least partially neutralized by a corresponding cation such as Li+, Na+, K+, Mg2+ or Ca2+ and mixtures thereof, more preferably the at least one acid is selected from the group consisting of hydrochloric acid, sulphuric acid, sulphurous acid, phosphoric acid, oxalic acid, or mixtures thereof. A particularly preferred H3O+ ion donor is phosphoric acid (Ftouni; paragraph [0081]).
Regarding claim 9 depending from claim 1, Ftouni teaches that the catalyst comprises surface-reacted calcium carbonate activated by calcination, wherein the surface-reacted calcium carbonate is a reaction product of ground natural calcium carbonate-containing mineral (GNCC) or precipitated calcium carbonate (PCC) with carbon dioxide and one or more H3O+ ion donors and wherein the carbon dioxide is formed in situ by the H3O+ ion donors treatment and/or is supplied from an external source (Ftouni; paragraph [0062]). Ftouni further teaches that a particularly preferred H3O+ ion donor is phosphoric acid (Ftouni; paragraph [0081]).
Regarding claim 10 depending from claim 1, Tsuchida teaches that the control of the Ca/P molar ratio in the calcium-phosphate based catalysts means to control the types and the distribution densities of solid acid sites and solid base sites, which are active sites on the catalyst surface, and the intensity and the amount of acid sites and base sites can be assessed by NH3-TPD (Temperature Programmed Desorption) and CO2-TPD (Tsuchida; paragraph [0017]).
Tsuchida, Ftouni, and Stein do not explicitly teach wherein the surface-reacted calcium carbonate provided in step b) has a total number of basic sites from 0.01 to 0.6 mmol/g, preferably from 0.05 to 0.5 mmol/g, more preferably from 0.10 to 0.45 mmol/g, based on the total dry weight of the surface- reacted calcium carbonate, determined by temperature-programmed desorption with carbon dioxide, and/or a total number of acidic sites from 0.01 to 0.6 mmol/g, preferably from 0.05 to 0.5 mmol/g, more preferably from 0.10 to 0.45 mmol/g, based on the total dry weight of the surface- reacted calcium carbonate, determined by temperature-programmed desorption with ammonia.
In spite of this deficiency in the prior art detailed above, the preparation method of the surface-reacted calcium carbonate catalyst of Ftouni’s Inventive Example-EX1 (Ftouni; paragraph [0167]) is nearly identical to the preparation of catalyst SRCC2 described in the written description (Specification; page 23, lines 32-38 and page 24, lines 1-7), the only difference being Ftouni teaches adding 1.60 kg of the phosphoric acid solution and adding a citric acid solution to the catalyst slurry, whereas the present application teaches adding 1.80 kg of the phosphoric acid solution and the addition of solid citric acid. The SRCC2 described in the written description has a total number of basic sites of 0.33 mmol/g as measured by CO2 TPD and a total number of acidic sites of 0.19 mmol/g as measured by NH3-TPD (Specification; Table 3). Given the similarities between the catalyst preparation method of Ftouni and that described in the present application, one of ordinary skill in the art could arrive at a total number of basic sites and acidic sites that reside within the ranges recited in the instant claim. Furthermore, since Tsuchida teaches that the basic and acidic sites can be controlled by adjusting the Ca/P molar ratio, the skilled artisan could reasonably arrive at the limitation of instant claim 10 based on the teachings of Tsuchida, Ftouni, and Stein through means of routine experimentation that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of Tsuchida in view of Stein, Ftouni, and Silvester.
Finally, absent any demonstration of criticality, there is no clear indication in the present application that the recited range for the total number of basic sites and/or the total number of acidic sites is critical to the claimed invention, which would have supported the non-obviousness of a total number of basic sites from 0.01 to 0.6 mmol/g, preferably from 0.05 to 0.5 mmol/g, more preferably from 0.10 to 0.45 mmol/g, based on the total dry weight of the surface- reacted calcium carbonate, determined by temperature-programmed desorption with carbon dioxide, and/or a total number of acidic sites from 0.01 to 0.6 mmol/g, preferably from 0.05 to 0.5 mmol/g, more preferably from 0.10 to 0.45 mmol/g, based on the total dry weight of the surface- reacted calcium carbonate, determined by temperature-programmed desorption with ammonia, as recited in the instant claim. Although the Applicant states that SRCC2 showed the best performance among all the SRCC catalysts and a better conversion and 1-butanol yield in comparison to the commercially available hydroxyapatite catalyst (HAP-H), in addition to superior performance, the written description is silent regarding the basic site and/or acidic site content of HAP-H in the comparative example and only describes its surface area (Specification; Tables 4 and 6). Therefore, it is unclear to what extent (if any) extent this parameter contributes to the criticality of the claimed invention, and as a result the present application does not clearly demonstrate a criticality for the ranges recited in instant claim 10. MPEP § 2144.05(III)(A) states that “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims… In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”
Regarding claim 11 depending from claim 1, Ftouni teaches that the surface-reacted calcium carbonate was calcined for the purpose of catalyst activation and different thermal activation conditions (i.e. temperature and time of activation) were employed (Ftouni; paragraph [0169]). Ftouni further teaches calcination temperatures in the range of 100-900 ºC (Ftouni; Fig. 3). In addition, Ftouni teaches that the calcined surface-reacted calcium carbonate measured in dry state has < 0.5 wt.% total moisture content based on the total weight of the sample (Ftouni; paragraph [0151]). The temperature range and total moisture content range of Ftouni overlap with the ranges recited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 12 depending from claim 1, Example 2 of Tsuchida teaches an optimization experiment of 1-butanol synthesis in a fixed bed gas flow catalytic reactor, wherein ethanol at a concentration of 8.1 vol% in a carrier gas is introduced to a hydroxyapatite catalyst at a reaction temperature in a range of 150 to 500 ºC and a contact time of 1.0 second (Tsuchida; paragraphs [0029] and [0032]-[0034]; Example 2, Table 1). The ethanol concentration resides within the range recited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Furthermore, the method of Tsuchida further comprises contacting ethanol with a catalyst directly in the gas phase or in the presence of an inert carrier gas such as nitrogen or helium (Tsuchida; paragraph [0024]).
Regarding claim 13 depending from claim 1, Tsuchida teaches that the reaction temperature is usually selected preferably from a range of 150 ºC to 450 ºC (Tsuchida; paragraph [0021]). This temperature range overlaps with the range recited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuchida et al. (EP 1829851 B1; IDS of 12-01-2023; hereinafter “Tsuchida”), in view of Ftouni et al. (EP 3542897 A1; hereinafter “Ftouni”) and Stein et al. (US 3,296,317; hereinafter “Stein”) as applied to claims 1, 3-10, and 11-15 above, and further evidenced by Shen et al. (“Enhanced pool boiling of ethanol on wettability-patterned surfaces”; Appl. Therm. Eng. 2019, 149, 325-331; hereinafter “Shen”).
Regarding claim 2 depending from claim 1, Example 2 of Tsuchida teaches an optimization experiment of 1-butanol synthesis in a fixed bed gas flow catalytic reactor, wherein ethanol at a concentration of 8.1 vol% in a carrier gas is introduced to a hydroxyapatite catalyst at a reaction temperature in a range of 150 to 500 ºC and a contact time of 1.0 second (Tsuchida; paragraphs [0029] and [0032]-[0034]; Example 2, Table 1).
Although Tsuchida fails to explicitly teach the boiling point of ethanol, it is known in the art that ethanol has a boiling point of 78.2 ºC at 1 atm, as evidenced by Shen (Shen; page 326, Col. 2, paragraph 4), and this temperature resides within the range recited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Therefore, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of Tsuchida in view of Ftouni and Stein as evidenced by Shen.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DEREK RHOADES whose telephone number is (703)-756-5321. The Examiner can normally be reached Monday–Thursday, 7:30 am–5:00 pm EST; Friday, 7:30 am–4:00 pm EST.
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, Robert Havlin can be reached on 571-272-9066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
Prosecution Insights