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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1 and 3-10 as amended and new claims 11-16 are presently under consideration as set forth in the preliminary amendment filed 08 January 2024. Claim 2 is cancelled by applicant’s amendment.
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 1 and 3-16 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 1 recites “polyoxyalkylene alkyl ether” where the usual accepted definition of alkyl is the general formula CnH2n+1 but application in there specification at paragraphs [0011] and [0014] appear to indicate alkyl is not necessarily an alkyl group but can be other hydrocarbon groups such as unsaturated straight-chain, branched-chain or cyclic aliphatic hydrocarbon group, or an aromatic hydrocarbon group optionally having a substituent but these passages do not present a clear special redefinition of term “alkyl” as used in the claims and it’s not clear what the specific scope of alkyl is meant to encompass.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). As such, the usage of the term alkyl in claim 1 renders the claim indefinite as the specification does not clearly redefine the term.
Claim 1 further recites “polyoxyalkylene alkyl ether acetate” where “acetate” is a particular type of carboxylate where the R group in -R-COO- is a methylene group (CH2) -CH2-COO-, but applicant’s specification at para [0020] indicates that polyoxyalkylene alkyl ether acetate represents R—O-(A-O)m—(CH2)aCOOH where it appears carboxylate is not limited to being an acetate but can have higher carbon chains when a>1 and thus the usage of the term acetate in claim 1 renders the claim indefinite as the specification does not clearly redefine the term and it’s not clear what the specific scope of acetate is meant to encompass.
Claims 3-16 are also rendered indefinite for the same reasons as set forth above for claim 1 as they depend from indefinite claim 1.
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.
Claims 1, 3-10, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ding et al (CN105568310A, reference made to attached English machine translation), and further in view of Yamauchi et al (US 2021/0057758).
Regarding claim 1 Ding discloses a method for producing polyoxyalkylene alkyl ether acetate (Abstract see: electrochemical synthesis method of fatty alcohol polyethenoxy ether carboxylic acid), the method comprising a step (A) of oxidizing a polyoxyalkylene alkyl ether by an electrochemical reaction at an anode of an electrochemical device equipped with a cathode to obtain the polyoxyalkylene alkyl ether acetate (Abstract and pages 2-3 of translation see: a pair of platinum electrodes are used as an anode and a cathode inserted into micro emulsion having a fatty alcohol polyethenoxy ether which is oxidized into the fatty alcohol polyethenoxy ether carboxylic acid).
Ding does not explicitly the reaction is in an anode chamber of an electrochemical device equipped with a cathode chamber wherein the electrochemical device is a fuel cell.
Yamauchi discloses a fuel cell having an anode chamber and cathode chamber where the anode chamber provides for a redox reaction to produce carboxylic acids using an alcohol as a starting material, performing an electrochemical oxidation reaction of the alcohol using a platinum anode (Yamauchi, [0011]-[0012], [0153]-[0154], Fig. 1 see: cathode 12 with chamber and anode 11 with chamber for oxidizing alcohols to carboxylic acids).
Yamauchi and Ding are combinable as they are both concerned with methods of electrolytic oxidation to produce carboxylic acids compounds.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the method of Ding in view of Yamauchi such that the electrochemical device in Ding is a fuel cell with an anode chamber and cathode chamber where the anode chamber provides for the redox reaction to produce the carboxylic acid of Ding as in Yamauchi (Yamauchi, [0011]-[0012], [0153]-[0154], Fig. 1 see: cathode 12 with chamber and anode 11 with chamber for oxidizing alcohols to carboxylic acids) as Yamauchi teaches the implication of electrochemically oxidizing a primary alcoholic compound in contact with an anode electrode catalyst using a fuel cell as a reaction device to produce a carboxylic compound, and one having ordinary skill in the art at the time of the invention would have been motivated to use this fuel cell in the electrochemical oxidation reaction of the fatty alcohol polyoxyethylene ether of Ding, where oxidation is carried out in the anodic part of the cell allowing the cell to produce the fatty alcohol polyoxyethylene ether and produce electricity as a fuel cell.
Regarding claim 3 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 1, and Yamauchi teaches wherein in the step (A), a gas containing oxygen is fed to the cathode chamber (Fig. 1 see: oxygen gas provided in chamber of cathode 12).
Regarding claim 4 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 1, wherein the polyoxyalkylene alkyl ether comprises a compound represented by the following formula (1):
R—O-(A-O)n—H
(1) wherein R represents a hydrocarbon group having 1 or more and 36 or less carbon atoms; A represents an alkylene group having 2 or more and 4 or less carbon atoms; and n is an average number of mols of alkyleneoxy groups added which is 0.1 or larger and 100.0 or smaller (Ding, Pages 3-5 see Embodiments 1-3 start with isomeric decanol polyoxyethylene ether (C10H21O(C2H4O)nH) with EO number (n) being 7).
Regarding claim 5 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 4, wherein A in the formula (1) comprises at least one selected from the group consisting of an ethylene group and a propylene group (Ding, Pages 3-5 see Embodiments 1-3 start with isomeric decanol polyoxyethylene ether).
Regarding claim 6 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 4, wherein the number of carbon atoms of R in the formula (1) is 6 or larger and 22 or smaller (Ding, Pages 3-5 see Embodiments 1-3 start with isomeric decanol polyoxyethylene ether (C10H21O(C2H4O)nH and thus R=10).
Regarding claim 7 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 4, wherein n in the formula (1) is 2.0 or larger and 10.0 or smaller (Ding, Pages 3-5 see Embodiments 1-3 form isomeric decanol polyoxyethylene ether carboxylic acid (C10H21O(C2H4O)nCH2COOH with EO number (n) being 7 ).
Regarding claim 8 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to a claim 1, wherein a temperature of the anode chamber in the step (A) is 10° C. or higher and 100° C. or lower (Ding, Abstract see: reaction taking place at room temperature).
Regarding claim 9 modified Ding discloses a method for generating an electric power, the method comprising a step (A) of oxidizing a polyoxyalkylene alkyl ether by an electrochemical reaction in an anode chamber of an electrochemical device equipped with a cathode chamber and the anode chamber to obtain polyoxyalkylene alkyl ether acetate as recited above in the rejection of claim 1.
Regarding claim 10 modified Ding discloses a system for generating an electric power, the system comprising a step (A) of oxidizing a polyoxyalkylene alkyl ether by an electrochemical reaction in an anode chamber of an electrochemical device equipped with a cathode chamber and the anode chamber to obtain polyoxyalkylene alkyl ether acetate as recited above in the rejection of claim 1.
Regarding claim 12 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 4, wherein A in the formula (1) is an ethylene group (Ding, Pages 3-5 see Embodiments 1-3 form isomeric decanol polyoxyethylene ether carboxylic acid).
Regarding claim 13 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 4, wherein the number of carbon atoms of R in the formula (1) is 8 or larger and 12 or smaller (Ding, Pages 3-5 see Embodiments 1-3 form isomeric decanol polyoxyethylene ether carboxylic acid where R=10).
Regarding claim 14 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 1, wherein in the anode chamber at the start of the reaction, the polyoxyalkylene alkyl ether is present in the state of being a mixture with water (Ding, Abstract see: fatty alcohol polyethenoxy ether provided in water solution).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ding et al (CN105568310A, reference made to attached English machine translation) in view of Yamauchi et al (US 2021/0057758) as applied to claims 1, 3-10, and 12-14 above, and further in view of Uchida et al (US 2004/0126631).
Regarding claim 11 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 1, but does not explicitly disclose wherein the fuel cell is a solid polymer fuel cell.
Uchida discloses fuel cells can include a solid polymer ([0048]-[0049] Fig. 1 see: fuel cell having an ion exchange membrane formed of a solid polymer such as a perfluoroalkylsulfonic acid polymer).
Uchida and modified Ding are combinable as they are both concerned with fuel cells oxidizing a fuel.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the method of Ding in view of Uchida such that the fuel cell is a solid polymer fuel cell as in Uchida ([0048]-[0049] Fig. 1 see: fuel cell having an ion exchange membrane formed of a solid polymer such as a perfluoroalkylsulfonic acid polymer) as such a modification would have amounted to the use of a known solid polymer for its intended use in a fuel cell to accomplish an entirely expected result.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Ding et al (CN105568310A, reference made to attached English machine translation) in view of Yamauchi et al (US 2021/0057758) as applied to claims 1, 3-10, and 12-14 above, and further in view of Tanaka et al (JP 2006249500A, reference made to attached English machine translation).
Regarding claim 16 modified Ding discloses the method for producing polyoxyalkylene alkyl ether acetate according to claim 1, but does not explicitly disclose wherein a temperature of the anode chamber in the step (A) is 35° C. or higher and 50° C. or lower.
Tanaka discloses a method for producing polyoxyalkylene alkyl ether acetate by oxidizing polyoxyalkylene alkyl ether in an electrochemical cell where a temperature of the reaction is at 0° C. to 40° C (Tanaka, see Abstract and page 4 of translation).
Tanaka and modified Ding are combinable as they are both concerned with electrochemical methods for producing polyoxyalkylene alkyl ether acetate.
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the method of Ding in view of Tanaka such that a temperature of the anode chamber in the step (A) is 0° C to 40° C as Tanaka teaches such a temperature range is suitable for producing polyoxyalkylene alkyl ether acetate by oxidizing polyoxyalkylene alkyl ether in an electrochemical cell (Tanaka, see Abstract and page 4 of translation).
Furthermore, the recited range of 0° C to 40° C in modified Ding substantially overlaps applicant’s claimed temperature range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Allowable Subject Matter
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 15 recites the method for producing polyoxyalkylene alkyl ether acetate according to claim 14, and further recites “wherein the content of the polyoxyalkylene alkyl ether in the mixture at the start of the reaction is, with the total amount of the polyoxyalkylene alkyl ether and the water being taken to be 100% by mass, 4% by mass or higher and 10% by mass or lower” which is not taught by Ding as Ding (Abstract and Pages 3-5) necessarily includes a buffer solution and catalyst material in addition to the water and polyoxyalkylene alkyl ether in the mixture at the start of the reaction which would destroy the invention of Ding if removed and thus one having ordinary skill in the art at the time of the invention would have been discouraged from doing so.
Furthermore, the prior art of Sakaguchi et al (US 2014/0088323) cited but not relied upon also discloses a method for producing polyoxyalkylene alkyl ether acetate by oxidizing method for producing polyoxyalkylene alkyl ether includes polyoxyalkylene alkyl ether and water to be 100% by mass at the beginning of the reaction (see Abstract) but does not disclose the polyoxyalkylene alkyl ether present at 4% by mass or higher and 10% by mass or lower as Sakaguchi teaches a much higher content of polyoxyalkylene alkyl ether (Abstract, see: 60% to 95% by mass of polyoxyalkylene alkyl ether) and thus does not make up for the deficiencies of Ding.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J GOLDEN whose telephone number is (571)270-7935. The examiner can normally be reached 11am-8pm.
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ANDREW J. GOLDEN
Primary Examiner
Art Unit 1726
/ANDREW J GOLDEN/Primary Examiner, Art Unit 1726
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