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 1-12 are pending.
Election/Restrictions
Applicants’ election with traverse of Group I, claims 1-11, and the species in the reply filed on 09/23/2026 is acknowledged. The election was made with traverse.
Pursuant to Applicant’s arguments, previously withdrawn species of catalyst species are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all species previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the election of species requirement for Group I as set forth in the Office action mailed on 07/23/2026 is hereby withdrawn.
The traversal is on the ground(s) that the inventions as grouped have unity of invention and special technical features. This is not found persuasive as there is no unity of invention or special technical feature. Please see the rejection as set forth below.
The requirement is still deemed proper and is therefore made FINAL.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Please note that after a final requirement for restriction, the Applicants, in addition to making any response due on the remainder of the action, may petition the Commissioner to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested. (See § 1.181.).
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 1-11 are under current examination.
Claim Objections
Claims 5 and 11are objected to because these Claims recite abbreviations, such as FAU FER etc. and these needs to be spelled out in their entirety because this is the first time these abbreviations appear in the claim and must be defined.
Appropriate correction is required.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kosan (JP H01 242541 A; as provided by the applicant on IDS dated 02/07/2024) in combination.
Determining the scope and contents of the prior art
Kosan teaches a process for producing glycol ethers characterized by reacting glycol esters with hydrogen in the presence of a heterogeneous catalyst capable of hydrogenating a bond to an ether bond (entire document). The catalyst according to the cited prior art contains one or more kinds of elements belonging to the periodic table such as iron, cobalt, nickel, ruthenium, rhodium, palladium, iridium, platinum and the like. Ruthenium, palladium, platinum and nickel are used in the examples on a catalyst carrier, such as alumina, silica gel, silica, silica alumina, diatomaceous earth, carbon, zeolite, titania, zirconia or heteropoly acid and the like (entire document). Kosan further teaches ether with an alkyl (methyl) group, preferred reaction temperature and pressure for the process are in the range of 50 to 350 °C (about 323-623 K) and in the range of 10-300 kg/cm²G (about 1 to 30 MPa (abs)) (entire document). Kosan also teaches that the ether may be unsymmetrical, and reaction may be carried out in any of a liquid phase, a gas phase, and a gas-liquid phase (entire document).
Ascertaining the differences between the prior art and the claims at issue
Kosan teaches a process for producing glycol ethers characterized by reacting glycol esters with hydrogen in the presence of a heterogeneous catalyst capable of hydrogenating a bond to an ether bond. The catalyst according to the cited prior art contains one or more kinds of elements belonging to the periodic table such as iron, cobalt, nickel, ruthenium, rhodium, palladium, iridium, platinum and the like. Ruthenium, palladium, platinum and nickel are used in the examples on a catalyst carrier, such as alumina, silica gel, silica, silica alumina, diatomaceous earth, carbon, zeolite, titania, zirconia or heteropoly acid and the like, but fails to teach the process with example of zeolite, specific zeolite and amount of metal on zeolite.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference of providing an example with zeolite-Kosan teaches that the catalyst may contain one or more kinds of elements belonging to the periodic table such as iron, cobalt, nickel, ruthenium, rhodium, palladium, iridium, platinum and the like. Ruthenium, palladium, platinum and nickel are used in the examples on a catalyst carrier, such as alumina, silica gel, silica, silica alumina, diatomaceous earth, carbon, zeolite, titania, zirconia or heteropoly acid and the like. Thus, with the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that transition metal supported on zeolite maybe used in hydrogenation of ester to ether as taught by the cited prior art.
With regards to the above difference of using specific zeolite and amount of metal deposited on zeolite- The cited prior art teaches that transition metal supported on zeolite maybe used in hydrogenation of ester to ether. Thus, with the guidance provided by the cited prior art it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that any commercially available zeolite with catalytic amount of metal may be useful in hydrogenation of ester to ether.
Based on the above established facts, it appears that the 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 modified the elements as claimed by known methods with no change in their respective functions, and the modification 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, Kosan teaches a process for producing glycol ethers characterized by reacting glycol esters with hydrogen in the presence of a heterogeneous catalyst capable of hydrogenating a bond to an ether bond. The catalyst according to the cited prior art contains one or more kinds of elements belonging to the periodic table such as iron, cobalt, nickel, ruthenium, rhodium, palladium, iridium, platinum and the like. Ruthenium, palladium, platinum and nickel are used in the examples on a catalyst carrier, such as alumina, silica gel, silica, silica alumina, diatomaceous earth, carbon, zeolite, titania, zirconia or heteropoly acid and the like.
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. Further, there is with a reasonable expectation of success that transition metal supported on zeolite may be used in hydrogenation of ester to ether and can be made by teachings 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 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.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-11 in the instant application are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims 1-11 of co-pending US application 19111526. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application and co-pending application are drawn to a process of making same compound using same reactant, and reaction conditions with a difference in wording.
The difference in wording, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of co-pending application. For the foregoing reasons, the instantly claimed process is made obvious.
This is provisional obviousness-type double patenting rejection because the conflicting claims have not been patented yet.
Conclusion
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
