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 10 – 18 are pending.
Claims 10 – 18 are rejected.
Drawings
The drawings are objected to because the single Figure is not reference according to MPEP 1.84 (u) Numbering of view.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
Amending the title of the drawing to “The Figure” will overcome the objection.
Specification
The abstract of the disclosure is objected to because it is not a concise summary of the invention and exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: the specification refers to “The Figure” as Fig. 1 on page 30. This objection can be overcome by amending the specification to “The Figure” when referring to the drawing..
Appropriate correction is required.
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 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.
Claim 16 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 16 provides for the preparation of propylene oxide utilizing a liquid mixture prepared by the process of claim 10 but, since the claim does not set forth all the steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a process without any active, positive steps delimiting how this process is actually practiced. The elements of a method claim must be steps or acts, expressed as verbal statements or phrases.
Claim 16 is rejected under MPEP 2173.05(q) which states that this type of rejection is more appropriate under 35 U.S.C. 101. ( Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967)). In this case, claim 16 is rejected under 35 U.S.C. 101 for being directed to nonstatutory subject matter. The claims does not fall into one of the four categories of patent eligible subject matter because it does not define “actions” for all of the listed steps.
As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) (italics added) (quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 141 (1876)). Accord Nuijten, 500 F.3d at 1355, 84 USPQ2d at 1501 ("The Supreme Court and this court have consistently interpreted the statutory term ‘process’ to require action") (MEPE 2106.03.I.).
Claim Rejections - 35 USC § 102
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 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) 18 is rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Teles et al. (WO 2012/076543).
The rejected claim covers, inter alia, propylene oxide.
Teles discloses propylene oxide in Example 1.
Applicant is reminded that claim 18 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
The PTO takes the following position with respect to Product- by-Process claims, As stated in ln re Thorpe, 777 F.2d 695, 697, 698,227 USPQ 964, 966 (Fed. Cir. 1985): Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
In Examination, “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221,223 (CCPA 1979). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Additionally, once the Examiner establishes that a product, recited in terms of its process of making, is prima facie unpatentable due to anticipation, Appellants bear the burden of proving "that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." Id. at 698 (quoting In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Teles. Therefore, the claim is anticipated by the prior art.
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) 10 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Pascally et al. (US 2018/0354923).
The rejected claims cover, inter alia, a process for the preparation of a liquid mixture comprising methanol, water and hydrogen peroxide, the process comprising (i) providing a feed stream comprising methanol, and a feed stream comprising an aqueous hydrogen peroxide solution;(ii) combining the feed stream comprising the methanol and the feed stream comprising the aqueous hydrogen peroxide solution provided according to (i) at a point in time t1, so that a combined stream comprising methanol, hydrogen peroxide and water is obtained; (iii) filtrating the combined stream obtained according to (ii) at a point in time t2, through a filtration device, thereby obtaining a liquid mixture comprising methanol, hydrogen peroxide and water; wherein the period of time between t1i and t2 is in the range of from 8 seconds to 1 hour.
Dependent claim 11 further limits the reactants. Dependent claims 12 – 15 further limit the reaction conditions.
However, Pascaly in Example 1 discloses the mixing of methanol with an aqueous hydrogen peroxide solution. (pp.4, [0027]). Further, Pascaly teaches that the mixture of aqueous hydrogen peroxide and methanol are filtered after mixing. (Example 1, pp.4, [0028]). According to Pascaly the filtering the mixed hydrogen peroxide solution and methanol before using it in the epoxidation reaction, reduces the formation of deposits that form on the catalyst during epoxidation of an olefin. (pp. 1, [0004], [0003]). The problem of deposit formation in the process of Pascaly is solved by the aqueous hydrogen peroxide solution being mixed with methanol to give a feed mixture, and this feed mixture is filtered before being contacted with the fixed bed epoxidation catalyst. (pp1. [0005]). As such, based on the teaching of Example 2, the aqueous hydrogen peroxide solution being mixed with methanol to give a feed mixture, was filtered before being in contact with the propene coming from a separate distribution tube into the fixed bed. (pp. 3, [0021]).
The difference between the instantly claimed invention and Pascaly is as follows: the minimum time delay t1 between mixing and filtration t2.
However, regarding the minimum time delay t1 between mixing and filtration t2, the Examiner turns to Pascaly. The prior art of Pascaly teaches that a precipitate will form when mixing hydrogen peroxide and methanol, and that . Further, Pascaly states that mixture of hydrogen peroxide and methanol cause the formation of deposits on the catalyst during the epoxidation reaction. The ordinarily skilled person in the art would know that the deposits are from the precipitate formed from the mixture of the aqueous hydrogen peroxide and methanol. Additonally, ordinarily skilled person would know that the formation of a precipitate will require time for the formation and growth of the particles with low solubility in the surrounding medium. There would be no incentive at all to keep the time between mixing and filtration short, but all incentive to wait for formation of the precipitate, which is to be removed from the feed by filtration. In the teaching of Pascaly, it is preferred that the feed mixture (aqueous hydrogen peroxide and methanol) be filtered before being mixed with the olefin and contacting the epoxidation catalyst. (pp. 3, [0021]).
As such, applying the teaching of Pascaly, along with the common general knowledge regarding the formation of precipitates, from mixing aqueous hydrogen peroxide and methanol, the person of ordinary skill before the effective fling date of the instantly claimed invention, would have avoided the build-up of deposits same as has been achieved in Example 2 of Pascaly. Also, should a ordinarily skilled person experience a build-up of deposits by using a very short delay time, than it would have been obvious for the ordinarily skilled person to achieve a complete filtration of the precipitate by waiting long enough for the precipitate to form fully, especially in the knowledge that the technical effect to avoid the deposits by filtration has been successfully solved already as disclosed in Pascaly.
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) 1977). 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. From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention based on having knowledge of Pascaly.
Regarding claim 11, Pascaly discloses in [0023] adding olefin to the feed mixture of aqueous hydrogen peroxide and methanol. Also, the olefin is preferably propene. (pp. 1, [0007]). This limitation is deemed obvious.
Regarding claim 12, Pascaly discloses that their hydrogen peroxide is obtained form an anthraquinone process. (pp. 1, [0003] & [0008]). This limitation is deemed obvious.
Regarding claims 13 and 14, Pascaly discloses in paragraph [0015], the olefin is preferably used at a molar ratio of olefin to hydrogen peroxide of from 1.1:1 to 30:1, more preferably 2:1 to 10:1, and most preferably 3:1 to 5:1. Also, paragraph [0019] in discussing the feed mixture, discloses preferably, aqueous hydrogen peroxide solution is mixed with at lest 50% of the methanol used for reacting the olefin with hydrogen peroxide, more preferably with at least 80% of the methanol, to provide the feed mixture that is filtered. 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 claim 15, Pascaly discloses that suitable filter media are commercially available from 3M and Pall. Most preferably, the filter medium is made from polypropylene or from the polyamide of 1,3-diaminobenzene and benzene-1,3-dicarboxylic acid available under the trade name Nomex®. (pp. 3, [0020}). This limitation is deemed obvious.
Claim Rejections - 35 USC § 103
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Pascally et al. (US 2018/0354923).
The rejected claim covers, inter alia, a method for the preparation of propylene oxide comprising (i) providing a feed stream comprising methanol, a feed stream comprising an aqueous hydrogen peroxide solution and a feed stream comprising propylene;(ii) combining the feed stream comprising the methanol and the feed stream comprising the aqueous hydrogen peroxide solution provided according to (i) at a point in time tl, so that a combined stream comprising methanol, hydrogen peroxide and water is obtained; (iii) filtrating the combined stream obtained according to (ii) at a point in time t2, through a filtration device, thereby obtaining a liquid mixture comprising methanol, hydrogen peroxide and water; (iv) combining the feed stream comprising propylene either with the combined stream obtained in (ii) or with the liquid mixture obtained in (iii), thereby obtaining a liquid mixture comprising methanol, hydrogen peroxide, water and propylene; (v) bringing the liquid mixture obtained according to (iv) in an epoxidation zone in contact with an epoxidation catalyst comprising a zeolitic material having a framework structure comprising Si, O, and Ti under epoxidation reaction conditions, thereby obtaining in the epoxidation zone a mixture comprising propylene oxide, methanol and water; wherein the period of time between t1 and t2 is in the range of from 8 seconds to 1 hour
However, Pascaly in Example 1 discloses the mixing of methanol with an aqueous hydrogen peroxide solution. (pp.4, [0027]). Further, Pascaly teaches that the mixture of aqueous hydrogen peroxide and methanol are filtered after mixing. (Example 1, pp.4, [0028]). According to Pascaly the filtering the mixed hydrogen peroxide solution and methanol before using it in the epoxidation reaction, reduces the formation of deposits that form on the catalyst during epoxidation of an olefin. (pp. 1, [0004], [0003]). The problem of deposit formation in the process of Pascaly is solved by the aqueous hydrogen peroxide solution being mixed with methanol to give a feed mixture, and this feed mixture is filtered before being contacted with the fixed bed epoxidation catalyst. (pp1. [0005]). As such, based on the teaching of Example 2, the aqueous hydrogen peroxide solution being mixed with methanol to give a feed mixture, was filtered before being in contact with the propene coming from a separate distribution tube into the fixed bed. (pp. 3, [0021]).
The olefin is preferably propene. (pp. 1, [0007]). The epoxidation catalyst comprising a titanium zeolite. (pp. 2, [0017]). Suitable titanium zeolites contain titanium atoms on silicon lattice positions. In the process of Pascaly, the filtered feed mixture may be combined with the olefin before it is distributed to the top of the tubes. In a further alternative, the filtered feed mixture and the olefin may be distributed to the top of the tubes through orifices of two separate liquid distributors, which is preferred when the olefin is employed in an amount exceeding its solubility in the filtered feed mixture. (pp. 3, [0023]).
The difference between the instantly claimed invention and Pascaly is as follows: the minimum time delay t1 between mixing and filtration t2.
However, regarding the minimum time delay t1 between mixing and filtration t2, the Examiner turns to Pascaly. The prior art of Pascaly teaches that a precipitate will form when mixing hydrogen peroxide and methanol, and that . Further, Pascaly states that mixture of hydrogen peroxide and methanol cause the formation of deposits on the catalyst during the epoxidation reaction. The ordinarily skilled person in the art would know that the deposits are from the precipitate formed from the mixture of the aqueous hydrogen peroxide and methanol. Additonally, ordinarily skilled person would know that the formation of a precipitate will require time for the formation and growth of the particles with low solubility in the surrounding medium. There would be no incentive at all to keep the time between mixing and filtration short, but all incentive to wait for formation of the precipitate, which is to be removed from the feed by filtration. In the teaching of Pascaly, it is preferred that the feed mixture (aqueous hydrogen peroxide and methanol) be filtered before being mixed with the olefin and contacting the epoxidation catalyst. (pp. 3, [0021]).
As such, applying the teaching of Pascaly, along with the common general knowledge regarding the formation of precipitates, from mixing aqueous hydrogen peroxide and methanol, the person of ordinary skill before the effective fling date of the instantly claimed invention, would have avoided the build-up of deposits same as has been achieved in Example 2 of Pascaly. Also, should a ordinarily skilled person experience a build-up of deposits by using a very short delay time, than it would have been obvious for the ordinarily skilled person to achieve a complete filtration of the precipitate by waiting long enough for the precipitate to form fully, especially in the knowledge that the technical effect to avoid the deposits by filtration has been successfully solved already as disclosed in Pascaly.
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) 1977). 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. From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention based on having knowledge of Pascaly.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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