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 Office action is responsive to Applicant's Response to Election/Restriction filed August 10, 2026. As filed, claims 1-20 are pending.
Priority
This application filed 01/04/2024 is a National Stage entry of PCT/EP2022/065944 , International Filing Date: 06/13/2022 claims foreign priority to 21183693.7, filed 07/05/2021.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) filed have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, 15-20 in the reply filed on Aug. 10, 2026, is acknowledged.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-12, 15-20 will be examined on the merits herein.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-12, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0177007 A1, Aug. 2005, by Neumann et al (“the ‘007 publication”; cited by Applicants in IDS) and further in view of Stichlmair "Distillation and Rectification"
Ullmann's Encyclopedia of Industrial Chemistry, 15 June 2000, vol. 49, pages 1-98 cited by Applicants in IDS).
The claims are drawn to a method for making bisphenol A by reacting phenol and acetone in the presence of an ion-exchange resin catalyst, crystallizing bisphenol A in one or more units, the reaction of phenol and acetone is done in the presence of an inert solvent, separating the crystals is solid-liquid separation unit,
heating the mother liquor in a heat recovery unit and feeding the heated mother liquor to a distillation column,
separating the mother liquor in the distillation column, bottom stream
comprising phenol, top stream comprising water; cooling the bottom stream in said heat recovery unit; wherein in the heat recovery unit heat is exchanged between the bottom stream and the mother liquor.
Regarding instant claim 1, the ‘007 publication teaches a process for producing bisphenol A by a) reacting phenol with acetone in the presence of an acidic catalyst (ion-exchange resin) to form a reaction mixture that includes bisphenol A and water, and b) removing water from the reaction mixture by distillation in a column to obtain a bottom product, and c) separating bisphenol-phenol adduct from the reaction mixture by crystallization and filtration. The bottom temperature of the column is 100 to 150° C, the overhead temperature of the column is 20 to 80°C, the absolute pressure is 50 to 300 mbar at the head of the column and 100 to 300 mbar at the bottom of the column and wherein said (c) is carried out before or after said (b); further comprising re-circulating the bottom product into reactor (abstract; example 1 on [0027]; claims of the refence).
Regarding instant claims 3-4,12,18-20 the ‘007 publication teaches in example 1, acetone and phenol converted into bisphenol A with 96 wt. % mother liquor containing 6 wt. % isomers, 7 wt. % bisphenol A, 0.05 wt. % water, 300 ppm mercaptopropionic acid and approx. 83 wt. % phenol; and the reaction mixture outcomes containing 1 wt. % reaction water and 0.3 wt. % unreacted acetone.
Regarding instant claims 5-7, the ‘007 publication teaches suitable apparatus for solid/liquid separation, such as rotary filters or centrifuges, and are supplied to a further purification stage on [0007]; the phenol that is present in the reaction solution may also
be removed by means of distillation [0009].
Regarding instant claims 9 and 16 the ‘007 publication teaches over 95% of the
reaction water introduced into the column is condensed at the head of the column (example 1 on [0027]). Regarding the pressure and temperature as claimed, the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine the optimum condenser parameters by routine experimentation.
Furthermore, pertaining to the pressure and temperature of a process, it is noted that generally, differences such parameters will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical. “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See MPEP 2144.5.
Regarding instant claims 11 and 17, the ‘655 publication teaches reaction of addition of a co-catalyst such as divinylbiphenyl ([0003]).
The method of the present application differs from the method described in the ‘007 publication in that prior art does not disclose a heat exchange between the distillation product streams and the distillation feed stream.
However, it is noted that heat exchange in a recovery unit before distillation is discussed in the article by Stichlmair.
The prior art by Stichlmair teaches aspects of heart transfer for processes with distillation and rectification separation stage. Disclosed on page 60 of the article by Stichlmair is that the that the heat requirement of a single rectification column can be efficiently minimized by effective heat exchange between the high temperature products feed and the lower temperature feeds.
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Regarding instant claims 8 and 15, in reviewing the instant disclosure for unexpected results, the simulated examples "using known modeling tools", the feed stage was varied from 5th to 8th stage and the corresponding reboiler heat duty, condenser heat duty and reflux ratio were calculated and the results are summarized in the table on page 12 of instant disclosure is to show that introducing the feed on 7th stage is more beneficial to reduce energy consumption of the distillation column for this feed. There is no comparative data for value falling outside of the range. The prior art by Stichlmair discusses aspects of equilibrium stage and advantages and disadvantage of different distillation stage in improving the efficiency of the separation process (page 23, 31, 72-73).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to combine the teachings of the ‘007 publication regarding preparation of bisphenol A by reaction of acetone and phenol mediated by ion-exchange catalyst with the teachings of Stichlmair regarding utilizing a heat exchange between the distillation product streams and the distillation feed stream and preheating the feed stream of the column- the mother liquor separated after separating the crystalline bisphenol - and have reasonable expectation of success in arriving at the claimed invention, because the prior art teach that preheating the feed
stream of the distillation column, reduce the energy demand of the distillation step.
Thus, the claimed invention as a whole is prima facie obvious over the combined teachings of the prior art.
Conclusion
Claims 1-12, 15-20 are rejected. Claims 13-14 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA MURESAN whose telephone number is (571)-270-7587. The examiner can normally be reached on Monday through Friday, 8:30 am to 5:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANA Z MURESAN/Primary Examiner, Art Unit 1692
Prosecution Insights