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 .
Status of Claims
Claims 1 – 20 are pending.
Claims 1 – 20 are rejected.
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.
Claims 1 – 20 are 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.
In claim 1 there is reference to "an oxo product or a derivative thereof”. The claim is indefinite because the metes and bounds of the term "derivative" are not known. The specification does not provide a clear meaning for the term “derivative” in this context, and as such is not clearly setting forth substituents to be included or excluded, or what structures are deemed to be sufficient to qualify as derivatives of oxo product. The term derivative also refers to a chemical compound related structurally to oxo product. In chemistry, a derivative is a compound that is derived from a compound that is not similar in chemical or physical process.
Claims 1, 2, 6, 8, 9, 13, 15, 16, 17, 18, 19 and 20 recite the expression “oxo-product”, which lacks clarity because it has no well-recognized meaning and leaves the reader in doubt as to the meaning of the technical feature to which it is referring. As such, rendering the definition of the subject matter of the claim unclear.
Claims 1, 2, 3, 4, 6, 10, 11, 12, 14, 17, 18 and 20 recite the expression “recycled content”, which lacks clarity because it has no well-recognized meaning and leaves the reader in doubt as to the meaning of the technical feature to which it is referring. As such, rendering the definition of the subject matter of the claim unclear.
Claim 2 recites the expression “identifier associated with the oxo product”, which lacks clarity because it has no well-recognized meaning and leaves the reader in doubt as to the meaning of the technical feature to which it is referring. As such, rendering the definition of the subject matter of the claim unclear.
Claim 5 recites the expression “sustainable reactant”, which lacks clarity because it has no well-recognized meaning and leaves the reader in doubt as to the meaning of the technical feature to which it is referring. As such, rendering the definition of the subject matter of the claim unclear.
Claims 16 and 17 recite the expression “physical recycled content”, which lacks clarity because it has no well-recognized meaning and leaves the reader in doubt as to the meaning of the technical feature to which it is referring. As such, rendering the definition of the subject matter of the claim unclear.
Claims 16, 17, 19 and 20 recite the expression “credit-based recycle content”, which lacks clarity because it has no well-recognized meaning and leaves the reader in doubt as to the meaning of the technical feature to which it is referring. As such, rendering the definition of the subject matter of the claim unclear.
Claim 4 recites the limitation "the r-reactant” in line 2. There is insufficient antecedent basis for this limitation in the claim. This rejection can be overcome by amending to depend upon claim 3.
Claim 17 recites the limitation "the r-reactant” in lines 5 and 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the source materials” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the at least source materials” in line 2 to 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 7 and 12 are rejected for being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim does not list a previous claim to which it depend on. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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(s) 2 is is/are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Slivensky et al. (WO2021/092291: US 2022/0396546).
The rejected claim covers, inter alia, a system or package comprising: an oxo product and an identifier associated with the oxo product, wherein the identifier is a representation that the oxo product has recycled content or is made from a source having recycled content.
However, Slivensky discloses a system or package comprising: a glycerol ester, and b. an identifier associated with said glycol ester, said identifier being a representation that said glycol ester has recycle content or is made from a source having a recycle content value. (pp. 139, [432] & claim 14).
Claim Rejections - 35 USC § 102
Claim(s) 2 is is/are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Slivensky et al. (WO2021/092293: US 2022/0371980).
Rejected claim 2 is discussed in paragraph 21 above.
However, Slivensky discloses a system or package comprising: a. oxo glycol, and b. an identifier associated with said oxo glycol, said identifier being a representation that said oxo glycol has recycle content or is made from a source having a recycle content value. (pp. 140, [0435] & claim 14).
Claim Rejections - 35 USC § 102
Claim(s) 2 is is/are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Slivensky et al. (WO2021/092321: US 2022/0402845).
Rejected claim 2 is discussed in paragraph 21 above.
However, Slivensky disclose a system or package comprising: a. an oxo alcohol, and b. an identifier associated with said oxo alcohol, said identifier being a representation that said oxo alcohol has recycle content or is made from a source having a recycle content value. (pp. 113, [345] & clam 15).
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 and 3 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Meiswinkel et al. (WO 2021/009312 = US 2023/0146273) (refer to US application), in view of Saebea et al. (Energy Report, 2020).
The rejected claims cover, inter alia, a process for producing an oxo product or a derivative thereof having recycled content, the process comprising:(a) carbon reforming a hydrocarbon containing feed to thereby produce a first syngas; (b) hydroformylating a C2 to C24 olefin with at least a portion of the first syngas to thereby produce a first oxo product; and (c) subjecting at least a portion of the first oxo product to at least one additional reaction with an additional reactant to thereby produce a second oxo product, wherein the second oxo product comprises recycled content from one or more of the following sources: (i) waste plastic, (ii) a recycled content syngas (r-syngas), and (iii) a recycled content additional reactant.
Dependent claims 3 – 20 further limit the reactants and process.
However. Meiswinkel disclosed is a method for the producing a target compound by oxidative coupling of methane. A starting gas mixture is provided which contains an olefin, carbon monoxide, carbon dioxide and optionally hydrogen, wherein the olefin is subjected to hydroformylation with the carbon monoxide and the hydrogen of the starting mixture to obtain an aldehyde, wherein the paraffin and the olefin have a carbon chain with a first carbon number and the aldehyde has a carbon chain with a second carbon number which is greater by one than the first carbon number. The carbon dioxide present in the starting mixture is removed upstream and/or downstream of the hydroformylation. The carbon dioxide is subjected to dry reforming with methane to obtain carbon monoxide, and that the carbon monoxide subjected to hydroformylation comprises at least part of the carbon monoxide obtained in the dry reforming. (abstract). Specifically, Meiswinkel discloses a process for preparing a target compound wherein an outlet gas mixture comprising an olefin, CO, CO₂ and optionally hydrogen is provided by oxidatively coupling methane. (pp. 3, [0026]). In a second step said outlet gas mixture is subjected to a hydroformylation thereby obtaining an aldehyde. (pp. 3, [0035] & [0038]). (PP. 4, [0045] & [0048], & claim 1). In a third reaction step the aldehyde is hydrogenated to the corresponding alcohol. (pp. 6, [0058]; pp. 7, [0069] & claim 4). Unreacted ethane and other light compounds, such as methane and carbon dioxide are recycled into oxidative coupling. (pp. 6, [0064] & pp. 9, [0101]).
The difference between Meiswinkel and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Meiswinkel teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
The remaining difference between Meiswinkel and the instantly claimed invention is as follows: use or waste plastic, a recycled content syngas (r-syngas), or a recycled content additional reactant.
However, with regard to use or waste plastic, a recycled content syngas (r-syngas), or a recycled content additional reactant, the Examiner turns to the teaching of Saebae. The prior art of Saebae discusses the synthesis gas production from gasification of plastic waste, i.e. polyethylene (PE) and polypropylene (PP). The steam gasification is modeled by using AspenPlus™ simulation software. (Entire document). These limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Regarding claims 3 – 20, considering their lack of clarity, the teaching of Meiswinkel, and the fact that they only disclose features which are a straight forward selection for one of ordinary skill in the art before the effective filing date of the instantly clamed invention, seeking to optimize a chemical process are deem obvious. It is noted that a prima facie case of obviousness has been established when the reference discloses all the limitations of a claim except for a property and the examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention but has a basis for shifting the burden of proof to applicant, as per In re Fitzgerald, 619 F.2d 67,205 USPQ 594 (CCPA 1980). See also In re Best, 195 USPQ 430,433 (CCPA 1977) as to the providing of this rejection under 35 USC 103.
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bonnell et al. (US 2,880,244) discloses process for the production of aldehydes and/or alcohols by the reaction between synthesis gas comprising hydrogen and carbon monoxide and an olefin or olefins to produce a hydroformylation reaction product containing aldehydes, which aldehydes are then preferably hydrogenated to the corresponding alcohols. This invention relates more particularly to a method of treating the hydroformylation reaction product prior to hydrogenation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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