DETAILED ACTION
Pending Claims
Claims 1-11 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 1-11, claim 1 includes the step of: a) reacting epichlorohydrin with boron trifluoroetherate in the presence of a polymerisation initiator. The claim language indicates a reaction involving epichlorohydrin and boron trifluoroetherate. However, boron trifluoroetherate typically behaves as a catalyst and does not participate in a reaction. Accordingly, it is unclear if:
(1) boron trifluoroetherate actually reacts with epichlorohydrin (in the presence of a polymerisation initiator) in step a); or
(2) epichlorohydrin reacts (polymerizes) on its own, in the presence of boron trifluoroetherate and a polymerisation initiator is step a).
For the purpose of the prior art search, step a) has been interpreted as: reacting (polymerizing) epichlorohydrin in the presence of boron trifluoroetherate and a polymerisation initiator. Claims 2-11 are rejected because they are dependent from claim 1.
Further regarding claim 11, the claim states: (11) wherein the recovered solvent is reused in the process of steps a) to c). It is unclear how the recovered solvent is reused in the process of steps a) to c) because the solvent recovery of step d) takes place at the end of the process, after steps a) to c). For the purpose of the prior art search, this has been interpreted as a future intended use of the recovered solvent in future runs of the process of steps a) to c).
Claim Rejections - 35 USC § 112, 4th paragraph (d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claims 4 and 5, claim 3 states: (3) wherein the good solvent (singular) for epichlorohydrin is a hydrocarbon (singular). Claims 4 and 5 attempt to further limit claim 3 with: (4) wherein the hydrocarbon is at least one compound selected from an alkane and a cycloalkane; and (5) wherein the hydrocarbon is selected from hexane, methylcyclohexane, dodecane, petroleum ether and mixtures of these compounds. These claims fail to further limit claim 3 because they improperly shift the scope of the claim from a singular hydrocarbon solvent to multiple hydrocarbon solvents.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jung et al. (KR 10-1299619 B1).
Regarding claims 1, 8, and 9, Jung et al. disclose: (1) a process for the synthesis of polyepichlorohydrin (Abstract; Example 1 in paragraphs 0044-0046) which comprises:
a) reacting epichlorohydrin with in the presence of boron trifluoroetherate and a polymerisation initiator (paragraphs 0044-0045 of Example 1: epichlorohydrin added to boron trifluoride etherate and trimethylolpropane);
b) adding a good solvent for epichlorohydrin to the reaction product obtained in step a) (paragraph 0045 of Example 1: refluxed methylene chloride); and
c) adding epichlorohydrin to the reaction product obtained in step b) (paragraph 0045 of Examples 1: epichlorohydrin added for 11.5 hours under reflux conditions);
(8) wherein the reaction of step a) is carried out in the presence of a good solvent for epichlorohydrin (paragraph 0045 of Example 1); and
(9) wherein steps a) and b) are carried out simultaneously (paragraph 0045 of Example 1).
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 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (KR 10-1299619 B1).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (KR 10-1299619 B1) in view of Shirtum et al. (US Pat. No. 4,952,647).
Regarding claim 10, Jung et al. disclose: (10) d) decanting the product obtained in step c) (paragraph 0046 of Example 1: separated using separatory funnel), followed by separating the polyepichlorohydrin (paragraph 0046 of Example 1: washed and solvent evaporation). Jung et al. remove their methylene chloride solvent by evaporation (see paragraph 0046 of Example 1). Jung et al. fail to explicitly disclose: (10) recovering the residual good solvent. However, it appears that their evaporation technique would have obviously involved solvent recovery, to some degree, due to the hazardous nature of methylene chloride.
Furthermore, Shirtum et al. disclose a related reaction involving epichlorohydrin (see column 5, lines 3-37), a catalyst such as boron trifluoride etherate (column 5, lines 38-43), and a solvent such as methylene chloride (see column 5, lines 44-56). They disclose the use of rotary evaporation (see column 5, lines 57-62)), which would have embraced solvent recovery.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recover the residual good solvent in the process of Jung et al. because: (a) Jung et al. remove their methylene chloride solvent by evaporation; and (b) it appears that the evaporation technique of Jung et al. would have obviously involved solvent recovery, to some degree, due to the hazardous nature of methylene chloride. Furthermore: (c) Shirtum et al. disclose a related reaction involving epichlorohydrin, a catalyst such as boron trifluoride etherate, and a solvent such as methylene chloride; and (d) Shirtum et al. disclose the use of rotary evaporation, which would have embraced solvent recovery.
Regarding claim 11, the teachings of Jung et al. and the combined teachings of {Jung et al. and Shirtum et al.} are as set forth above and incorporated herein. They fail to explicitly disclose: (11) wherein the recovered solvent is reused in the process of steps a) to c). However, the recovered solvent of Jung et al. and the recovered solvent in the combined teachings of {Jung et al. and Shirtum et al.} would have been obviously capable of this future intended use (in future runs of the process of steps a) to c)).
Allowable Subject Matter
Claims 2, 3, 6, and 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 4 and 5 would be allowable if rewritten to overcome {the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph} and {the rejection(s) under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph}, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Suggested Claim Language
The following is suggested claim language for independent claim 1. The proposed language would overcome the indefinite rejection and clearly convey the crux of the invention described on page 5 of the specification (see lines 12-26; see also paragraphs 0034-0040 of the pre-publication):
(1) a process for the synthesis of polyepichlorohydrin which comprises:
a) initiating polymerization of boron trifluoroetherate and a polymerisation initiator;
b) forming a polymer solution by adding a good solvent for epichlorohydrin to the initiated polymerization product obtained in step a);
c) continuing polymerization and forming a polymer suspension by adding epichlorohydrin to the polymer solution obtained in step b); and
d) continuing polymerization by adding epichlorohydrin to the polymer suspension obtained in step c).
International Search Report
The international search report cited three X-references. These references have been considered, and one has been applied as prior art.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
September 19, 2026
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