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 the Application
Claims 1-16 are pending.
Election/Restrictions
Applicants’ election without traverse of Group I, claims 1-10, in the reply filed on 09/24/2026 is acknowledged. The election was made without traverse.
The requirement is therefore made FINAL.
Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1-10 are under current examination.
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 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.
Claims 1, 4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) and 102 (a)(2) as being anticipated by Makshina (US 20200377442 A1).
Makshina discloses a method of producing methyl acrylate comprising- (1) synthesizing a catalyst comprising zeolite ZSM-5 without using any structure directing agent by adding and reacting the zeolite with a solution comprising a potassium salt to ion-exchange the zeolite with potassium ions;(2) contacting methyl lactate with obtained catalyst and methanol (i.e., alkanol and alkyl lactate comprises same alkyl group, thus reads on the instant claim 8), specifically 35%methyl lactate in methanol (i.e., 35%methyl lactate and 65%methanol by weight) (reads on the instant claim 10) (entire application, especially, figures, examples and paragraphs 0017, 0019, 0028-0078 and claims). The cited prior art teaches that potassium salt may be any salt, such as KCl and also provides examples in the background of known use of KBr (see paragraph 0004) in such ion exchange (entire application, especially figures, examples, and paragraphs 0004, 0017, 0019, 0028-0078 and claims). The cited prior art discloses Si/Al ratio from 10-30 and K/Al ratio as 0.95-1 (entire application, especially figures, examples and paragraphs 0017, 0019, 0028-0078 and claims) (reads on ratio of instant claims 6 and 7). The cited prior art discloses conducting the reaction of obtaining alkyl acrylate at temperature 340C.
Since zeolite is same as in the instant claims, the chemical formula before calcining step is expected to be same, whether or not recognized by the cited prior art.
Since the cited prior art reads on all the limitations of the instant claims 1, 4 and 6-10, these claims are anticipated.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Makshina (US 20200377442 A1), and Argauer (US3702886) in combination.
Determining the scope and contents of the prior art
Makshina discloses a method of producing methyl acrylate comprising- (1) synthesizing a catalyst comprising zeolite ZSM-5 without using any structure directing agent by adding and reacting the zeolite with a solution comprising a potassium salt to ion-exchange the zeolite with potassium ions;(2) contacting methyl lactate with obtained catalyst and methanol (i.e., alkanol and alkyl lactate comprises same alkyl group, thus reads on the instant claim 8), specifically 35%methyl lactate in methanol (i.e., 35%methyl lactate and 65%methanol by weight) (reads on the instant claim 10) (entire application, especially, figures, examples and paragraphs 0017, 0019, 0028-0078 and claims). The cited prior art teaches that potassium salt may be any salt, such as KCl and also provides examples in the background of known use of KBr (see paragraph 0004) in such ion exchange (entire application, especially figures, examples, and paragraphs 0004, 0017, 0019, 0028-0078 and claims). The cited prior art discloses Si/Al ratio from 10-30 and K/Al ratio as 0.95-1 (entire application, especially figures, examples and paragraphs 0017, 0019, 0028-0078 and claims) (reads on ratio of instant claims 6 and 7). The cited prior art discloses conducting the reaction of obtaining alkyl acrylate at temperature 340C
Since zeolite is same as in the instant claims, the chemical formula before calcining step is expected to be same, whether or not recognized by the cited prior art.
Ascertaining the differences between the prior art and the claims at issue
Makshina discloses a method of producing methyl acrylate comprising- (1) synthesizing a catalyst comprising zeolite ZSM-5 without using any structure directing agent by adding and reacting the zeolite with a solution comprising a potassium salt to ion-exchange the zeolite with potassium ions;(2) contacting methyl lactate with obtained catalyst and methanol (i.e., alkanol and alkyl lactate comprises same alkyl group, thus reads on the instant claim 8), specifically 35%methyl lactate in methanol (i.e., 35%methyl lactate and 65%methanol by weight), but fails to teach the steps of obtaining ZSM-5 and calcining; example of ion exchange with KBr.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference of obtaining ZSM-5 and calcining- Makshina teaches using commercially available already calcined ZSM-5 and performing ion-exchange before performing reaction to obtain alkyl acrylate.
The deficiency of method of obtaining ZSM-5 by hydrothermal synthesis and calcining is cured by Argauer.
Argauer teaches method of obtaining ZSM-5 with no structure directing compound comprising preparing a mixed solution comprising an Al source, a silicon source, an alkali source and water, performing hydrothermal synthesis of the mixed solution; obtaining zeolite; calcining the zeolite (entire patent). The cited prior art further teaches ion-exchange with zeolite with different alkali metal cations, ammonium ion etc., if desired (entire patent).
Since method of preparing zeolite and the obtained zeolite ZSM-5 is same as in the instant claims, the chemical formula of zeolite before calcining step is expected to be same, whether or not recognized by the cited prior art.
Thus, with the guidance provided by Makshina and Argauer, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that ZSM-5 obtained commercially or prepared according to the method of Argauer may be ion exchanged with potassium ion and the obtained catalyst may be useful in obtaining alkyl acrylate according to the process of Makshina.
“Since the claimed process and article produced therby are no more than a selective combination of prior art teachings, done in a manner obvious to one of ordinary skill in the art, since each step of the process appears to be realtively complete in itself and there is no indication of an interaction between steps of such a type that would lead one of ordinary skill in the art to doubt that a substitution of alternative steps known to the art could be made”. In re Mostovych 144USPQ 38 (1964). Thus, the cited prior art meets limitation of the instant claims.
With regards to limitation of performing ion-exchange with KBr, Makshina teaches performing ion-exchange with potassium salts, such as KCl and also provides in the background that ion-exchange with KBr is known. Thus, with the guidance provided by Makshina, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that potassium salt used for performing ion-exchange may be KCl, KBr etc. Thus, the cited prior art meets limitation of the instant claims.
Therefore, combination reads applicants claims.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Makshina discloses a method of producing methyl acrylate comprising- (1) synthesizing a catalyst comprising zeolite ZSM-5 without using any structure directing agent by adding and reacting the zeolite with a solution comprising a potassium salt to ion-exchange the zeolite with potassium ions;(2) contacting methyl lactate with obtained catalyst and methanol (i.e., alkanol and alkyl lactate comprises same alkyl group, thus reads on the instant claim 8), specifically 35%methyl lactate in methanol (i.e., 35%methyl lactate and 65%methanol by weight), whereas Argauer teaches method of obtaining ZSM-5 with no structure directing compound comprising preparing a mixed solution comprising an Al source, a silicon source, an alkali source and water, performing hydrothermal synthesis of the mixed solution; obtaining zeolite; calcining the zeolite (entire patent). The cited prior art further teaches ion-exchange with zeolite with different alkali metal cations, ammonium ion etc., if desired.
So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. It is well within the skill of the organic chemist to recognize the fact that applicants claimed process is nothing but the combination of known individual chemical processes. Further, there is a reasonable expectation of success that ZSM-5 obtained commercially or prepared may be ion exchanged with potassium ion and the obtained catalyst may be useful in obtaining alkyl acrylate and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive at applicants’ process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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