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 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.
Claims 1-6 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 inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1-6, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kodali (US 20080293602 A1) in view of Cole (US 20140206894 A1), Klostergaard (Klostergaard, Henry. "Esterification with trapping phase." The Journal of Organic Chemistry 23.1 (1958): 108-110, attached), and Cho (Cho et al. “Glycerol Esters from the Reaction of Glycerol with Dicarboxylic Acid Esters.” Journal of Surfactants and Detergents 9.2 (2006): 147-152, attached). Chen (CN 1192433 A, attached with translation) is cited as an evidentiary reference.
Regarding claims 1 and 6, Kodali teaches symmetrical polymers such as polyesters (Abstract; p. 9, [0161]) based on glycerol (i.e. glycerin) (p. 1, [0016]) and diacids such as oxalic acid (p. 12, [0198]). The polymers are useful as hydrogels (p. 14, [0249]). However, Kodali does not teach obtaining oxalic acid via sequestration of carbon dioxide.
In a related field of endeavor, Cole teaches a method for production of oxalic acid by electrochemical conversion of carbon dioxide (Abstract). According to Cole, increasing concentrations of carbon dioxide in the atmosphere may be responsible for various damaging environmental effects. Countries around the world are seeking ways to mitigate emissions of carbon dioxide. If carbon dioxide emissions are converted to economically valuable materials, mitigation of carbon dioxide emissions will be possible (p. 1, [0005]-[0006]). Cole therefore suggests the use of carbon dioxide emissions as starting material in the process. It would have been obvious to one of ordinary skill in the art at the time of filing to begin the process by capturing carbon dioxide either from the atmosphere or from a gaseous waste stream (i.e. carbon dioxide emissions) in order to mitigate concentration of atmospheric carbon dioxide. This reads on the claimed step a.
Oxalic acid has the formula (COOH)2. Cole’s conversion of carbon dioxide to oxalic acid therefore reads on the claimed step b. It would have been obvious to one of ordinary skill in the art at the time of filing to employ Cole’s oxalic acid as starting material for Kodali’s polyester, as this monomer is identified by Kodali as suitable for this purpose and Cole’s method is consistent with Cole’s objective of using “green” (i.e. environmentally friendly/conscious) feedstocks (see, e.g., Cole at p. 5, [0092]).
Regarding the claimed step c, Kodali and Cole are silent as to combining the oxalic acid with a mono-alcohol. In the same field of endeavor, Klostergaard teaches combining oxalic acid and ethanol with sulfuric acid under reflux conditions to yield an oxalic acid ester (diethyl oxalate) (p. 2). It would have been obvious to one of ordinary skill in the art at the time of filing to combine Klostergaard's oxalic acid esterification step with the steps taught by Kodali and Cole to arrive at the claimed invention, and to achieve a high yield using simple equipment, as taught by Klostergaard (p. 2). Klostergaard does not specify the temperature that may be used for this step. Chen clarifies that the same reaction may occur at temperatures ranging from 80-102 degrees centigrade (Celsius) under atmospheric pressure (p. 1).
Regarding the claimed step d, Kodali, Cole, and Klostergaard are silent as to reacting oxalic acid esters with a polyol. In the same field of endeavor, Cho teaches reaction of glycerol with short-chain aliphatic dicarboxylic acid esters (Abstract). This step will result in a final product of polyglycerol oxalate. It would have been obvious to one of ordinary skill in the art at the time of filing to combine the glycerol of Cho with the oxalic acid ester of Kodali in view of Cole and Klostergaard to arrive at the claimed invention, and to achieve a biodegradable polymer, as taught by Cho (p. 147).
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kodali in view of Cole, Klostergaard, and Cho as applied to claim 1 above, and further in view of Lechelt-Kunze (US 6164012 A). Regarding claims 2-5, Kodali, Cole, Klostergaard, and Cho remain as applied to claim 1 above. However, the combined prior art is silent as to combining the composition with soil. In the same field of endeavor, Lechelt-Kunze teaches a composition of hydrogel, nutrients, and plant material that may be shaped into particles, and may further be mixed with soil and beneficial fungi (Abstract; column 5, lines 1622; column 10, lines 18-21, 35-38). It would have been obvious to one of ordinary skill in the art at the time of filing to combine the composition of Kodali in view of Cole, Klostergaard, and Cho with the soil mixture of Lechelt-Kunze to arrive at the claimed invention, and to transport biological material to a target soil, as taught by Lechelt-Kunze (col. 10, lines 27-29).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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