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
Claim Rejections - 35 USC § 103
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.
Claims 1, 2, 5, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Machine translated WO 2004031113 A1 (April 15, 2004).
The examiner interprets that the recited “providing a bio-phenol that is derived from a bio-naphtha” of claim 1 does not require an active step of obtaining the bio-phenol derived from the bio-naphtha. In other words, providing a phenol obtained from any source/raw material would meet the recited first step of providing a bio-phenol that is derived from a bio-naphtha.
Machine translated WO teaches a method of obtaining 3,5-di-t-butyl-4-hydroxybenzoic acid by (i) reacting a phenol and sodium or potassium hydroxide at 180-300oC under nitrogen to obtain a salt and (ii) reacting the salt with carbon dioxide at 6 kgf/cm2 (i.e., about 5.8 atm).
Thus, the instant claim 1 lack novelty.
Regarding claim 2, sodium or potassium hydroxide taught by WO meets claim 2.
Regarding claim 5, 6 kgf/cm2 (i.e., about 5.8 atm) taught by WO meets claim 3.
Regarding claims 12 and 13, 3,5-di-t-butyl-4-hydroxybenzoic acid taught by WO meets claims 12 and 13.
Claims 1-5 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable 102(a)(1) as being anticipated by Suzuki et al. (US.5,072,036).
The examiner interprets that the recited “providing a bio-phenol that is derived from a bio-naphtha” of claim 1 does not require an active step of obtaining the bio-phenol derived from the bio-naphtha. In other words, providing a phenol obtained from any source/raw material would meet the recited first step of providing a bio-phenol that is derived from a bio-naphtha.
Suzuki et al. teach that liquid crystallin polyesters obtained from para-hydroxybenzoic acid is known in the art in lines 9-15 of col. 1.
Suzuki et al. teach a process for obtaining hydroxybenzoic acid in which a step of blending potassium hydroxide and phenols to obtain potassium phenolate and heating in presence of carbon dioxide pressure of 7 kg/cm2 (G) (i.e., about 6.8 atm) and 250oC to obtain a para-hydroxybenzoic acid in example 4.
Thus, the instant claim 1 lack novelty.
Regarding claim 2, sodium or potassium hydroxide taught by Suzuki et al. meets claim 2.
Regarding claim 3, Suzuki et al. teach 250oC to obtain para-hydroxybenzoic acid in example 4.
Regarding claim 4, Suzuki et al. teach utilization of atmospheric pressure in lines 45-49 of col. 4.
Regarding claim 5, 6 kgf/cm2 (i.e., about 5.8 atm) taught by Suzuki et al. meets claim 3.
Regarding claims 12 and 13, para-hydroxybenzoic acid taught by Suzuki et al. meets claims 12 and 13.
Regarding claims 14 and 15, A liquid crystallin polyester obtained from para-hydroxybenzoic acid taught by Suzuki et al. meets claims 14 and 15.
Claims 1-5 and 12-15 rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US.5,072,036) in view of Schlosberg et al. (US 4,256,568) and Fredriksen (US 2010/0083566 A1).
This rejection would address when an active step of obtaining the bio-phenol derived from the bio-naphtha is required in claim 1.
Suzuki et al. are discussed in detail at above pages 3 and 4.
The instant invention further recites providing the bio-phenol derived from the bio-naphtha over Suzuki et al.
Schlosberg et al. teach phenols obtained from a phenol-containing naphtha cut derived from a coal liquefaction process in examples 1-4.
Fredriksen teaches a bio-naphtha fraction obtained from at least one biooil such as fish oil and vegetable oils in [0013] and [0022].
Thus, utilization of the bio-naphtha fraction obtained from at least one biooil such as fish oil and vegetable oils taught by Fredriksen in obtaining the phenols of Schlosberg et al. in lieu of the phenol-containing naphtha cut derived from a coal liquefaction process would have been obvious since it would provide an opportunity to use phenols obtained from environmentally friendly renewable biooils in lieu of environmentally unfriendly coal.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize phenols obtained from the bio-naphtha fraction obtained from at least one biooil taught by Schlosberg et al. and Fredriksen thereof in Suzuki et al. absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claim 2, sodium or potassium hydroxide taught by Suzuki et al. meets claim 2.
Regarding claim 3, Suzuki et al. teach 250oC to obtain para-hydroxybenzoic acid in example 4 and 200oC to 500oC in lines 32-36 of col. 4.
Regarding claim 4, Suzuki et al. teach utilization of atmospheric pressure in line 36 of col. 4.
Regarding claim 5, 6 kgf/cm2 (i.e., about 5.8 atm) taught by Suzuki et al. meets claim 3.
Regarding claims 12 and 13, para-hydroxybenzoic acid taught by Suzuki et al. meets claims 12 and 13.
Regarding claims 14 and 15, a liquid crystallin polyester obtained from para-hydroxybenzoic acid taught by Suzuki et al., Schlosberg et al. and Fredriksen thereof would make claims 14 and 15 obvious.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US.5,072,036) in view of Schlosberg et al. (US 4,256,568) and Fredriksen (US 2010/0083566 A1) as applied to claims 1-5 and 12-15 above, and further in view of Machine translated CN 105051173 A (Nov. 11, 2015).
Further regarding claims 9-11, Machine translated CN teach a bio-naphtha from a complex mixture of natural occurring fats and oils and fractionation of triglyceride into a liquid triglyceride (phase L) and a solid triglyceride (phase S) in abstract. Machine translated CN further teaches palm, soybean, rapeseed, sunflower, coconut, corn, animal fat and milk fat as the major source of grease in a third paragraph of page 4.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize bio-naphtha obtained by fractionation taught by CN in Suzuki et al., Schlosberg et al. and Fredriksen thereof in absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claims 16-18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US.5,072,036) in view of Schlosberg et al. (US 4,256,568) and Fredriksen (US 2010/0083566 A1) as applied to claims 1-5 and 12-15 above, and further in view of Machine translated JP 2022184071 A (Dec. 13, 2022).
Regarding claims 16-18 and 20-22, Machine translated JP teaches a wholly aromatic liquid crystallin polyester having a melting point of 218oC obtained from 40 mol% of 4-hydroxybenzoic acid (i.e., para-hydroxybenzoic acid), hydroquinone and terephthalic acid at page 2.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a wholly aromatic liquid crystallin polyester having a melting point of 218oC taught by JP in Suzuki et al. since the wholly aromatic liquid crystallin polyester having a high melting point utilizing 40 mol% of 4-hydroxybenzoic acid (i.e., para-hydroxybenzoic acid) is well known as taught by Machine translated JP absent showing otherwise.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claims 16 and 20, 40 mol% of 4-hydroxybenzoic acid taught by Machine translated JP meets claim 16.
Regarding claims 17 and 20, 40 mol% of 4-hydroxybenzoic acid (i.e., para-hydroxybenzoic acid) taught by Machine translated JP meets claims 17 and 20.
Regarding claim 18, a wholly aromatic liquid crystallin polyester taught by Machine translated JP meets claim 18.
Regarding claim 21, Machine translated JP teaches a liquid crystal polymer composition comprising 100 pts. mass of a wholly aromatic liquid crystallin polyester and 1 to 100 pts. mass of an acid modified thermoplastic elastomer in claim of page 2.
Regarding claim 22, Machine translated JP teaches a liquid crystal polymer composition comprising 100 pts. mass of a wholly aromatic liquid crystallin polyester 40 mol% of 4-hydroxybenzoic acid and 1 to 100 pts. mass of an acid modified thermoplastic elastomer in claim of page 2 and thus the recited sustainable content of 10-90 wt.% would have been obvious since the 4-hydroxybenzoic acid would be same regardless of how it is obtained.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US.5,072,036) in view of Schlosberg et al. (US 4,256,568) and Fredriksen (US 2010/0083566 A1) as applied to claims 1-5 and 12-15 above, and further in view of Hood (US 5,371,305) and Stevenson et al. (US 2022/0126251 A1, Apr. 28, 2022).
Hood teaches a process for producing phenol by the acid-catalyzed cleavage of cumene hydroperoxide in abstract.
Stevenson et al. teach that it is known to derive cumene from naphtha by alkylation of benzene and phenol is produced by oxidation of the cumene in [0060] and claim 7. Stevenson et al. teach forming benzene by subjecting naphtha to a steam cracking process in [0157] and claim 7.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize a bio-naphtha to obtain phenol taught by Hood and further to utilize cumene from bio-naphtha by alkylation of benzene obtained by subjecting naphtha to a steam cracking process taught by Stevenson et al. in Suzuki et al., Schlosberg et al. and Fredriksen thereof since the bio-naphtha would provide an opportunity to use phenols obtained from environmentally friendly renewable biooils absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US.5,072,036) in view of Schlosberg et al. (US 4,256,568) and Fredriksen (US 2010/0083566 A1) further in view of Machine translated JP 2022184071 A (Dec. 13, 2022) as applied to claims 1-5 and 12-18 and 20-22 above, and further in view of Machine translated JP 4368078 B2 (Nov. 18, 2009).
Regarding claim 19, a wholly aromatic liquid crystallin polyester is known to have a high meting point such as 300oC or higher as taught by [0031] of JP 4368078 B2.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a wholly aromatic liquid crystallin polyester having a high meting point such as 300oC or higher taught by JP’078 in Suzuki et al., Schlosberg et al., Fredriksen and Machine translated JP 2022184071 A thereof since a wholly aromatic liquid crystallin polyester is known to have a high meting point in the art as taught by JP 4368078 B2 absent showing otherwise.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14-15 and 18-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-23 of copending Application No. 18/616,254 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the recited bio-hydroxybenzoic acid of the instant claims 14 and 15 is a hydroxybenzoic acid regardless of how it is obtained and thus 4-hydroxybenzoic acid taught in claim 19 of the copending Application would meet the recited bio-hydroxybenzoic acid. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14-15 and 18-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/256,225 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the recited bio-hydroxybenzoic acid of the instant claims 14 and 15 is a hydroxybenzoic acid regardless of how it is obtained and thus 4-hydroxybenzoic acid taught in claim 11 of the copending Application would meet the recited bio-hydroxybenzoic acid. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.Regrading claim 22, modification to amount of the recited optional additives in claim 20 of the copending Application would have been obvious and claim 12 of the copending application teaches that a liquid crystalline polymer comprises 10-70 mol % of 4-hydroxybenzoic acid.
Claims 14-15 and 18-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-21 of copending Application No. 19/112,628 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the recited bio-hydroxybenzoic acid of the instant claims 14 and 15 is a hydroxybenzoic acid regardless of how it is obtained and thus 4-hydroxybenzoic acid taught in claim 16 of the copending Application would meet the recited bio-hydroxybenzoic acid. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14-15 and 18-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-23 of copending Application No. 19/112,628 of copending Application No. 19/112,628 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the recited bio-hydroxybenzoic acid of the instant claims 14 and 15 is a hydroxybenzoic acid regardless of how it is obtained and thus 4-hydroxybenzoic acid taught in claim 19 of the copending Application would meet the recited bio-hydroxybenzoic acid. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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