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 .
Priority
This application is a 371 of PCT/EP2022/077162 which claims the benefit of EP 21201336.1 with an effective filing date of 06 October 2021 as reflected in the filing receipt mailed on 28 October 2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claims 8-13 are objected to because of the following informalities:
Claims 8, 9, 11, and 12, line 2 state “for catalytic degradation of methanol”, which appear to include grammatical omissions. The limitations are interpreted to state “for the catalytic degradation of the methanol”.
Claim 10, line 2 states “wherein methanol” and “for catalytic degradation”, which appear to include grammatical omissions. The limitations are interpreted to state “wherein the methanol” and “for the catalytic degradation”.
Claim 10, line 3 states “to form carbon monoxide”, which appears to include a grammatical omission. The limitation is interpreted to state “to form the carbon monoxide”.
Claim 13, line 3 states “methanol” and “the catalytic degradation of methanol”, which appear to include grammatical omissions. The limitations are interpreted to state “the methanol” and “the catalytic degradation of the methanol”.
Claim 13, line 6 states “carbon monoxide”, which appears to include a grammatical omission. The limitation is interpreted to state “the carbon monoxide”.
Appropriate correction is required.
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, 6, 8-12, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grabowski et al. (US20060183938, published 17 August 2006, hereinafter Grabowski).
Grabowski is in the known prior art field of converting methanol to carbon monoxide to produce phosphene, see Abstract; Claims 1 and 9.
Regarding the limitations of instant application claims 1, 8-12, 19, and 20, Grabowski discloses the specific express embodiments in Claims 1-9 and in Example 1a, where “1.233 g nitrobenzene, 3.232 g methanol and 0.119 g palladium catalyst (5 wt. % Pd on basic aluminum oxide) were provided in a mixing vessel of VA steel. The vessel was sealed and brought to reaction in an oil bath with magnetic stirring at 195° C. for 150 min under pressure”, where CO and CO2 are catalytically obtained from the reaction with methanol, see Paras. [0023];[0040]-[0043], the “reaction can generally be carried out in the gas and/or liquid phase”, and the “absolute reaction pressure is conventionally in the range of 0.1 bar to 300 bar, preferably in the range of 1 bar to 100 bar”, see Para. [0023], see also specifically Claims 1 and 9, meeting:
Providing carbon monoxide by the catalytic degradation of methanol in instant application claim 1;
Within the temperature range in instant application claim 8 and in instant application claim 19;
Within the pressure range in instant application claim 9 and in instant application claim 20;
The gas phase of methanol to produce carbon monoxide in instant application claim 10;
The catalyst contains a transition metal, Pd, with methanol in a gaseous phase to produce carbon monoxide in instant application claim 11;
The Pd on basic aluminum oxide support in instant application claim 12; and,
Then the carbon monoxide produced by the catalytic degradation of methanol is reacted with chlorine to produce phosgene, see Claims 1 and 9, Para. [0038], meeting:
The process to produce phosgene by reacting carbon monoxide with chlorine to give phosgene in instant application claim 1.
The instant application claim 1 limitations of “reacting the carbon monoxide with chlorine to give phosgene” are broad, vague, and include an intended use limitation of “to give phosgene”. As stated in the instant specification, page 17, lines 9-12, the reacting of carbon monoxide with chlorine takes place in the presence of a catalyst to give phosgene. The purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use of “to give phosgene” is not considered a claim limitation and is not given patentable weight. Herein, the claim limitations are interpreted as “reacting the carbon monoxide with chlorine in the presence of a catalyst to produce phosgene”.
Regarding the limitations of instant application claim 6, Grabowski discloses a “process for the production of di- and polyisocyanates of the diphenylmethane series”, such as “methylene diphenyl diisocyanate (MDI)”, by “b) converting the aniline and formaldehyde produced in step a) in the presence of an acid catalyst to di- and polyamines of the diphenylmethane series, c) converting the carbon monoxide produced in step a) with chlorine to phosgene, and d) converting the di- and polyamines of the diphenylmethane series produced in step b) by phosgenation to di- and polyisocyanates of the diphenylmethane series”, see Para. [0002]; Claim 9, meeting:
The phosgene is contacted with an amine to produce a methylene diphenyl isocyanate, such as methylene diphenyl diisocyanate (MDI), in instant application claim 6.
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.
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 1-6, 8-13, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Grabowski et al. (US20060183938, published 17 August 2006, hereinafter Grabowski) in view of Jakovlevich (RU2497748, published 10 November 2013, see machine translation and original, hereinafter Jakovlevich).
Regarding the limitations of instant application claims 1, 8-12, 19, and 20, Grabowski discloses the specific express embodiments in Claims 1-9 and in Example 1a, where “1.233 g nitrobenzene, 3.232 g methanol and 0.119 g palladium catalyst (5 wt. % Pd on basic aluminum oxide) were provided in a mixing vessel of VA steel. The vessel was sealed and brought to reaction in an oil bath with magnetic stirring at 195° C. for 150 min under pressure”, where CO and CO2 are catalytically obtained from the reaction with methanol, see Paras. [0023];[0040]-[0043], the “reaction can generally be carried out in the gas and/or liquid phase”, and the “absolute reaction pressure is conventionally in the range of 0.1 bar to 300 bar, preferably in the range of 1 bar to 100 bar”, see Para. [0023], see also specifically Claims 1 and 9, meeting:
Providing carbon monoxide by the catalytic degradation of methanol in instant application claim 1;
Within the temperature range in instant application claim 8 and in instant application claim 19;
Within the pressure range in instant application claim 9 and in instant application claim 20;
The gas phase of methanol to produce carbon monoxide in instant application claim 10;
The catalyst contains a transition metal, Pd, with methanol in a gaseous phase to produce carbon monoxide in instant application claim 11;
The Pd on basic aluminum oxide support in instant application claim 12; and,
Then the carbon monoxide produced by the catalytic degradation of methanol is reacted with chlorine to produce phosgene, see Claims 1 and 9, Para. [0038], meeting:
The process to produce phosgene by reacting carbon monoxide with chlorine to give phosgene in instant application claim 1.
Regarding the limitations of instant application claim 5, Grabowski discloses unconverted methanol is “re-circulated into the reaction cycle”, see Para. [0026], i.e. a continuous process in which methanol is fed again to the catalytic degradation, meeting:
The methanol origin provision and recycle in instant application claim 5; and,
In addition, it is inherent that methanol used in any process is obtained from a storage vessel, see MPEP 2112.
Regarding the limitations of instant application claim 6, Grabowski discloses a “process for the production of di- and polyisocyanates of the diphenylmethane series”, such as “methylene diphenyl diisocyanate (MDI)”, by “b) converting the aniline and formaldehyde produced in step a) in the presence of an acid catalyst to di- and polyamines of the diphenylmethane series, c) converting the carbon monoxide produced in step a) with chlorine to phosgene, and d) converting the di- and polyamines of the diphenylmethane series produced in step b) by phosgenation to di- and polyisocyanates of the diphenylmethane series”, see Para. [0002]; Claim 9, meeting:
The phosgene is contacted with an amine to produce a methylene diphenyl isocyanate, such as methylene diphenyl diisocyanate (MDI), in instant application claim 6.
Grabowski is in the known prior art field of converting methanol to carbon monoxide to produce phosphene, see Abstract; Claims 1 and 9, including where produced/unreacted methanol is “preferably re-circulated into the reaction cycle”, see Para. [0026].
Regarding the limitations of instant application claim 18, Grabowski teaches a “process for the production of di- and polyisocyanates of the diphenylmethane series”, such as “methylene diphenyl diisocyanate (MDI)”, by “b) converting the aniline and formaldehyde produced in step a) in the presence of an acid catalyst to di- and polyamines of the diphenylmethane series, c) converting the carbon monoxide produced in step a) with chlorine to phosgene, and d) converting the di- and polyamines of the diphenylmethane series produced in step b) by phosgenation to di- and polyisocyanates of the diphenylmethane series”, see Paras. [0002];[0033]-[0038]; Claim 9, where the diamine is a “methylene diphenyl diamine (MDA)”, such as 4,4’-MDA, 2,4’-MDA, and 2,2’-MDA, see Paras. [0002];[0033]-[0038];[0046], Table.
“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103”, see MPEP 2112 III. In this case, Grabowski teaches the conversion of 4,4’-MDA, 2,4’-MDA, and 2,2’-MDA into MDI which will inherently create 4,4’-MDI, 2,4’-MDI, and 2,2’-MDI, meeting:
The specific MDIs in instant application claim 18.
Grabowski does not teach:
The limitations of instant application claims 2-4, 13, and 17.
Jakovlevich is in the known prior art field of the catalytic conversion of methanol to syngas, i.e., hydrogen and carbon monoxide, including the co-production of methanol, see Abstract; Paras. [0009];[0023]-[0033];[0036]-[0038];[0042]-[0044]; Fig. 1, and is applied to teach the same.
Regarding the limitations of instant application claims 2-4, 13, and 17, Jakovlevich teaches a process for the coproduction of “a mixture of gases 5, consisting of hydrogen and carbon monoxide and dioxide, i.e., raw synthesis gas”, and methanol, see Paras. [0038]-[0042]; Original, Pg. 5, Lns. 22-25, Reaction Scheme; Fig. 1, where in a cyclic gaseous process product methanol stream 1 is sent to “a catalytic reactor 3” to produce “a mixture of gases 5, consisting of hydrogen and carbon monoxide and dioxide, i.e., raw synthesis gas”, see Paras. [0028]-[0029];[0042]; Fig. 1, then “reaction products 5 are sent for electrolysis in a high-temperature electrolyzer 7”, then at “the outlet of the cathode space, the reaction stream contains predominantly synthesis gas 8” containing “hydrogen and carbon monoxide and dioxide” “which is sent to the catalytic synthesis of methanol (2) using a catalyst in the synthesis reactor 9” producing the process product methanol stream 1 by catalytic steam reforming, see Paras. [0009];[0028]-[0032];[0042]-[0044]; Fig. 1, meeting:
Prior to the catalytic degradation of methanol providing methanol as a product of electrochemical reaction or catalyzed reaction in instant application claim 2;
Prior to the catalytic degradation of methanol providing methanol as a product of the conversion of a hydrogen, CO and/or CO2 gas stream in instant application claim 3 and in instant application claim 17;
Prior to the catalytic degradation of methanol providing methanol as a product of the conversion of a hydrogen, CO and/or CO2 gas stream obtained from electrolysis and catalytic steam reforming of methanol in instant application claim 4; and,
The methanol is a process product of CO2 and hydrogen gas, the methanol is catalytically degraded to carbon monoxide, and hydrogen gas, and the catalytically produced hydrogen gas is used to produce the methanol in instant application claim 13.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the origin of the methanol in Grabowski to catalytically synthesis and degrade the methanol from and to hydrogen and carbon monoxide as taught by Jakovlevich with a reasonable predictability of success for the purpose of efficiently producing syngas with lowered cost without introducing additional “chemical reagents into the system”, such as water and methanol, in order to increase “the purity of the final product”, where the syngas is used to synthesize “other large-scale chemical products”, see Jakovlevich, Paras. [0002]-[0003];[0006];[0009];[0011];[0046].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the origin of the methanol in Grabowski by applying the known technique of the catalytic synthesis and degradation of methanol from and to hydrogen and carbon monoxide as taught by Jakovlevich with a reasonable predictability of success for the purpose of efficiently producing syngas with lowered cost without introducing additional “chemical reagents into the system”, such as water and methanol, in order to increase “the purity of the final product”, where the syngas is used to synthesize “other large-scale chemical products”, see Jakovlevich, Paras. [0002]-[0003];[0006];[0009];[0011];[0046]; and MPEP 2143 I. B-D.
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”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Grabowski and Jakovlevich both teach the catalytic degradation of methanol to carbon monoxide, hydrogen, and carbon dioxide, a person of ordinary skill in the art has good reason to modify Grabowski by relying upon Jakovlevich before the effective filing date of the claimed invention for knowledge generally available within the methanol to syngas art regarding the cyclic nature of the methanol to syngas reaction, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing syngas with lowered cost without introducing additional “chemical reagents into the system”, such as water and methanol, in order to increase “the purity of the final product”, where the syngas is used to synthesize “other large-scale chemical products”, see Jakovlevich, Paras. [0002]-[0003];[0006];[0009];[0011];[0046]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as a methanol synthesis and degradation catalyst, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claims 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Grabowski et al. (US20060183938, published 17 August 2006, hereinafter Grabowski) in view of Spriewald et al. (WO2019007834, published 10 January 2019, hereinafter Spriewald). WO2019007834 is translated as US20210147346 which is serving as the English language equivalent and all citations in this action pertain to this US reference.
Grabowski is in the known prior art field of the production of phosgene and using the phosgene to produce MDI, see Abstract; Paras. [0006];[0032]-[0038], where the production of phosgene creates additional products, such as carbonates, see Para. [0018].
Regarding the limitations of instant application claim 1, Grabowski discloses the specific express embodiments in Claims 1-9 and in Example 1a, where “1.233 g nitrobenzene, 3.232 g methanol and 0.119 g palladium catalyst (5 wt. % Pd on basic aluminum oxide) were provided in a mixing vessel of VA steel. The vessel was sealed and brought to reaction in an oil bath with magnetic stirring at 195° C. for 150 min under pressure”, where CO and CO2 are catalytically obtained from the reaction with methanol, see Paras. [0023];[0040]-[0043], the “reaction can generally be carried out in the gas and/or liquid phase”, and the “absolute reaction pressure is conventionally in the range of 0.1 bar to 300 bar, preferably in the range of 1 bar to 100 bar”, see Para. [0023], see also specifically Claims 1 and 9, meeting:
Providing carbon monoxide by the catalytic degradation of methanol in instant application claim 1; and,
Then the carbon monoxide produced by the catalytic degradation of methanol is reacted with chlorine to produce phosgene, see Claims 1 and 9, Para. [0038], meeting:
The process to produce phosgene by reacting carbon monoxide with chlorine to give phosgene in instant application claim 1.
The instant application claim 1 limitations of “reacting the carbon monoxide with chlorine to give phosgene” are broad, vague, and include an intended use limitation of “to give phosgene”. As stated in the instant specification, page 17, lines 9-12, the reacting of carbon monoxide with chlorine takes place in the presence of a catalyst to give phosgene. The purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use of “to give phosgene” is not considered a claim limitation and is not given patentable weight. Herein, the claim limitations are interpreted as “reacting the carbon monoxide with chlorine in the presence of a catalyst to produce phosgene”.
Grabowski does not teach the limitations of instant application claim 7.
Spriewald is in the known prior art field of a production plant for producing chemical products, such as phosgene, MDI, and polycarbonates, see Abstract; Paras. [0051]-[0052];[0070];[0108], and is applied to teach the same.
Regarding the limitations of instant application claim 7, Spriewald teaches “chemical products (1) obtainable in this way are organic carbonates, especially polycarbonates (by reaction of organic alcohols, especially polyhydric alcohols, with phosgene) and isocyanates (by reaction of organic primary amines with phosgene)”, where the organic alcohol is “bisphenol S, dihydroxydiphenyl sulfide, tetramethylbisphenol A, 1,1-bis(4-hydroxyphenyl)-3,3,5-trimethylcyclohexane (BPTMC), 1,1,1-tris(4-hydroxyphenyl)ethane (THPE) or bisphenol A”, where phosgene (3) and alcohol (2) are fed to reactor 1200 to produce polycarbonate (60), see Paras. [0083]-[0089]; Fig. 1a, meeting:
Feeding phosgene to a reaction with a dihydroxyl aryl compound to produce polycarbonate in instant application claim 7.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the product produced by reaction with phosgene of Grabowski to produce both polycarbonates and MDI as taught by Spriewald with a reasonable predictability of success for the purpose of efficiently utilizing as much of the phosgene “gaseous process streams obtained” as possible to synthesize additional valuable chemical products in order “to minimize economic losses and damage to the environment” by the release of dangerous off-gases, see Spriewald, Paras. [0001]-[0003];[0005].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the product produced by reaction with phosgene of Grabowski by applying the known technique of producing both polycarbonates and MDI as taught by Spriewald with a reasonable predictability of success for the purpose of efficiently utilizing as much of the phosgene “gaseous process streams obtained” as possible to synthesize additional valuable chemical products in order “to minimize economic losses and damage to the environment” by the release of dangerous off-gases, see Spriewald, Paras. [0001]-[0003];[0005]; and MPEP 2143 I. B-D.
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”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Grabowski and Spriewald both teach the production of carbonate from phosgene, a person of ordinary skill in the art has good reason to modify Grabowski by relying upon Spriewald before the effective filing date of the claimed invention for knowledge generally available within the phosgene art regarding the products produced, see MPEP 2143 B & G and 2141, for the benefit of efficiently utilizing as much of the phosgene “gaseous process streams obtained” as possible to synthesize additional valuable chemical products in order “to minimize economic losses and damage to the environment” by the release of dangerous off-gases, see Spriewald, Paras. [0001]-[0003];[0005]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as the production of polycarbonates from phosgene, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Stroefer et al. (DE10311865, published 30 September 2004, see machine translation, hereinafter Stroefer) in view of Jakovlevich (RU2497748, published 10 November 2013, see machine translation, hereinafter Jakovlevich).
Stroefer is in the known prior art field of the “[p]roduction of polyurethane components e.g. diphenylmethane di-isocyanate, involves making intermediates from simple starting materials and then reacting the intermediates, all in a system of micro-technology components”, see Abstract; Fig. 1.
Regarding the limitations of instant application claims 14 and 15, Stroefer teaches a continuous multicomponent process for “the production of diphenylmethane diisocyanate (MDI)”, see Paras. [0008];[0020]; Fig. 1, where “[m]ethanol serves as a starting material for the production of synthesis gas, which is a mixture of hydrogen and carbon monoxide, and formaldehyde”, see Para. [0022]; Fig. 1; Claim 1, meeting:
The multicomponent system and step i) carbon monoxide produced from methanol in instant application claim 14;
The process starts with a methanol feed to a syngas reactor to produce carbon monoxide, the carbon monoxide is fed to a phosgene synthesis reactor along with chlorine to produce phosgene, the phosgene is sent to a reactor along with “diphenylmethanediamine (MDA)” to produce “diphenylmethane diisocyanate (MDI)”, such as 2,4 MDI and 4,4 MDI, see Fig. 1; Paras. [0020]-[0023], as depicted in Fig. 1, the process plant is “micro and mini modules” connected with an inlet for methanol into the syngas reactor, an outlet for carbon monoxide from the syngas reactor, an inlet for carbon monoxide into the phosgene reactor, an inlet for chlorine into the phosgene reactor, and an outlet for phosgene into the MDI reactor, see Fig. 1; Para. [0020], meeting:
The step ii) apparatus and feed conduit for carbon monoxide, the apparatus for producing phosgene with the carbon monoxide inlet, the chlorine inlet, and the phosgene outlet in instant application claim 14;
The syngas reactor apparatus with an inlet for methanol and an outlet for carbon monoxide in fluid communication with the phosgene reactor in instant application claim 15.
Stroefer does not teach:
The instant application claim 14 limitation of a catalytic degradation of methanol;
The instant application claim 15 limitation of at least one catalyst in the first component apparatus; and,
The limitations in instant application claim 16.
Jakovlevich is in the known prior art field of the catalytic conversion of methanol to syngas, i.e., hydrogen and carbon monoxide, including the co-production of methanol, see Abstract; Paras. [0009];[0023]-[0033];[0036]-[0038];[0042]-[0044]; Fig. 1, and is applied to teach the same.
Regarding the limitations of instant application claims 14-16, Jakovlevich teaches a methanol stream 1 is sent to “a catalytic reactor 3” to produce “a mixture of gases 5, consisting of hydrogen and carbon monoxide and dioxide, i.e., raw synthesis gas”, see Paras. [0028]-[0029];[0042]; Fig. 1, where the catalyst is “a catalyst based on metals selected from the group of copper”, “a metal of Group IB of the Periodic Table (copper, silver, gold)”, i.e., Group XI, and/or “a catalyst containing a metal of group VIII of the Periodic Table”, see Paras. [0006];[0013];[0028]-[0030]; Claims 2 and 4, meeting:
The catalytic conversion of methanol to syngas with at least a Group XI catalyst metal, copper, in instant application claim 14, in instant application claim 15, and in instant application claim 16.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the methanol to carbon monoxide conversion in Stroefer to catalytically synthesis methanol to carbon monoxide as taught by Jakovlevich with a reasonable predictability of success for the purpose of efficiently producing syngas with lowered cost without introducing additional “chemical reagents into the system”, such as water and methanol, in order to increase “the purity of the final product”, where the syngas is used to synthesize “other large-scale chemical products”, see Jakovlevich, Paras. [0002]-[0003];[0006];[0009];[0011];[0046].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the methanol to carbon monoxide conversion in Stroefer by applying the known technique of the catalytic synthesis and degradation of methanol from and to hydrogen and carbon monoxide as taught by Jakovlevich with a reasonable predictability of success for the purpose of efficiently producing syngas with lowered cost without introducing additional “chemical reagents into the system”, such as water and methanol, in order to increase “the purity of the final product”, where the syngas is used to synthesize “other large-scale chemical products”, see Jakovlevich, Paras. [0002]-[0003];[0006];[0009];[0011];[0046]; and MPEP 2143 I. B-D.
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”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Stroefer and Jakovlevich both teach the degradation of methanol to carbon monoxide, a person of ordinary skill in the art has good reason to modify Stroefer by relying upon Jakovlevich before the effective filing date of the claimed invention for knowledge generally available within the methanol to syngas art regarding the conversion, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing syngas with lowered cost without introducing additional “chemical reagents into the system”, such as water and methanol, in order to increase “the purity of the final product”, where the syngas is used to synthesize “other large-scale chemical products”, see Jakovlevich, Paras. [0002]-[0003];[0006];[0009];[0011];[0046]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as a catalyst for a catalytic conversion, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as a catalytic conversion of methanol to carbon dioxide, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Y. Lynnette Kelly-O'Neill whose telephone number is (571) 270-3456. The examiner can normally be reached Tuesday-Friday, 8:30 a.m. - 6:30 p.m., EST, with Flex Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Yen-Ye 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.
/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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