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 .
Claim Objections
Claims 9 and 11 are objected to because of the following informalities: claim 9, the phrase “beta-propio lactone and beta butyro lactone” should be corrected to - - beta-propiolactone and beta-butyrolactone. In claim 11 the phrase “3-hydroxypropionat” should be corrected to - - 3-hydroxypropionate.
Claim Rejections - 35 USC § 112
Claims 1-13 are 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 applicant regard as the invention.
The claims must stand alone and define the metes and bounds of the invention using clear, objective textual limitations. References to the drawing figures (such as parenthetical (claim 10) reference numerals (100, 200 and 300) pointing to drawing elements) are impermissible if the structural elements can be fully described using language alone, as they introduce ambiguity regarding whether the claim scope is limited to the specific embodiment shown in the drawings.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sookraj et al (WO 2019/221925) in view of Harries et al (US 2015/0183708).
Applicant’s claimed invention is directed to a system for manufacturing a biodegradable material, the system comprising: a first system (100) for performing a process of producing hydrogen and carbon monoxide by using an energy raw material; a second system (200) for performing a process of producing an intermediate by using carbon of the carbon monoxide produced in the first system (100) as a carbon source; and a third system (300) for performing a process of manufacturing a biodegradable material by using the intermediate.
Regarding claims 1, 10, 11, and 12, Sookraj teaches an integrated, multi-system chemical plant layout that achieves high carbon efficiency by converting raw fossil or biomass energy feeds into sustainable polymers. Specifically, Sookraj discloses a process comprising:
A first system block: Sookraj teaches gasifying a carbonaceous source or performing methane reforming to provide a syngas stream containing hydrogen and carbon monoxide [0027][kk].
A second system block: Sookraj teaches carbonylating at least a portion of an epoxide-based compound (such as bioethanol derived ethylene oxide) in the presence of the CO stream and a carbonylation catalyst to produce an intermediate beta-lactone series compound (specifically, beta-propiolactone) [0027][d].
Downstream derivatives: Sookraj teaches converting the resulting beta-propiolactone intermediate into downstream chemical commodities, including acrylic acid, acrylamide, and acrylonitrile [0027][e].
The difference between Sookraj and the claimed invention lies in the exact manufacturing path of the third system (300) that directly uses the chemically synthesized beta-lactone intermediate from the second system to manufacture a biodegradable material (3-hydroxypropionate [3-HP] or a polymer/copolymer derivative thereof), which is optionally cracked downstream into acrylic acid or acrylonitrile. However, Harris teaches manufacturing, processing and handling of poly(3-hydroxypropionate) [P3HP], which is explicitly identified as a valuable biodegradable material/biopolymer [0013]. Harries further teaches that this P3HP polymer can be thermally cracked or dehydrated to yield a highly purified acrylic acid product with yields of at least 80% to 85% by weight [0013].
On the other hand, Sookraj teaches converting beta-propiolactone directly to acrylic acid monomer [0027][e] before polymerizing it into conventional vinyl adsorbent polymers [0027][f].
While Harris teaches producing biodegradable poly (3-hydroxypropionate) matrix, but generates it via a biological route utilizing a genetically engineered recombinant host biomass [0013] rather than chaining it directly to a gas-phase catalytic synthesis loop.
It would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to modify the integrated chemical network of Sookraj by routing the beta-propiolactone intermediate into a polymerization system that manufactures poly (3-hydroxypropionate) [P3HP], as taught by Harris, rather than instantly converting it to vinyl acrylic acid. A PHOSITA would be motivated to integrate Harris’s P3HP polymer pathway into Sookraj’s system because P3HP is highly valued, marketable biodegradable plastic belonging to the PHA family. Sookraj explicitly seeks to maximize carbon efficiency while producing valuable commodity chemicals [0043]. Generating biodegradable P3HP directly from Sookraj’s chemical intermediate allows the plant operator to pivot production between durable chemical monomer (acrylic acid) and eco-friendly packaging plastics depending on real-time market demand.
Furthermore, Sookraj already details downstream transitions from beta-propiolactone to acrylic acid derivatives. Because Harris establishes that P3HP cleanly decomposes into a high-purity acrylic acid product [0013], yield >85%, a PHOSITA would recognize that synthesizing P3HP as a stable, transportable, biodegradable polymer intermediate represents a predictable, logically equivalent holding stage within Sookraj’s integrated commodity chemical complex.
Regarding claims 2-4, Sookraj explicitly teaches steam methane reforming process on natural gas or “methane” to yield an enriched syngas containing hydrogen and carbon monoxide.
Regarding claims 5 and 6, Sookraj teaches carbonylation at least a portion of the ethylene oxide in the presence of the syngas and a carbonylation catalyst [0027].
Regarding claims 8 and 9, Sookraj explicitly names beta-propiolactone and succinic anhydride as the resulting carbonylation products [0009], [0027].
Regarding claim 7, Harris teaches hydrating the alcohol to produce an alkene; oxidizing the alkene with an oxygen gas to produce an epoxide, and carbonylating the epoxide with a syngas to produce a carbonylation product and a hydrogen-enriched syngas [0014]. Also, Sookraj explicitly describes [jj] fermenting biomass to provide ethanol and [b] converting that ethanol to ethylene oxide [0027].
A person of ordinary skill in the art, prior to the effective filing date of the claimed invention would be motivated to physically couple a bioethanol fermentation block to the epoxide production stream to achieve the exact environmental and sustainability goals explicitly praised by Sookraj in paragraph [0043].
2113 Product-by-Process Claims [R-01.2024]
Claim 13 is considered product-by-process claim. A product claim defined solely by its process of manufacture (a product-by-process claim) lacks novelty or non-obviousness if the underlying process steps are obvious. Because Harris teaches the standalone utility of a finished [0013] 3-hydroxypropionate polymer product, a PHOSITA would predictably expect the final material of this continuous loop to exhibit those identical biodegradable properties.
I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[E]ven 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 re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAFAR F PARSA whose telephone number is (571)272-0643. The examiner can normally be reached M-F 10:00 AM-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAFAR F PARSA/Primary Examiner, Art Unit 1692
