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.
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 1-16 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 1-16, in claim 1, each of the first two paragraphs recites “the step of…” however lacks antecedent basis since this is the first recitation of the steps; applicant must recite “a step of…” in each instance.
Regarding claims 1-16, in claim 1, last paragraph, the recitation “a mass concentration ratio (DPC/catalyst) of the diphenyl carbonate to the catalyst is 1.0 to 10.0” lacks a specification as to where this concentration is found, applicant must specify where this is found; for purposes of examination this is treated as reciting “a mass concentration ratio (DPC/catalyst) of the diphenyl carbonate to the catalyst in the column bottom component (AB) is 1.0 to 10.0” based upon earlier recitations in the claim.
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishiyama et al (EP 2540697) with/without evidence from Shaver (US 9,382,183).
Regarding claim 1, Nishiyama teaches discloses a method for producing diphenyl carbonate (title, abstract, [0027]) Nishiyama teaches the process comprises the first and second steps of supplying dialkyl carbonate in series to the first and second continuous reactive distillation columns (110 and 120) and followed by the first and second purification steps in first and second columns (130 and 140) as claimed (Fig 1-2, [0345-0376,0454-0498]), wherein the low-boiling fraction obtained in column 120 is recirculated to the first column and the high-boiling product obtained in column 130 is sent back to the first column (Fig 1-2, [0345-0376,0454-0498]).
However, Nishiyama does not explicitly indicate the DPC/HB ratio and DPC/catalyst ratio of said high-boiling product obtained in column 130, however the steps of the process as claimed are substantially the same/overlapping with the steps taught in Nishiyama comparative example 14 and therefore expected results, i.e. the ratios of products obtained, would be expected absent a claimed difference in parameters in the process, such as operating temperature, pressure, reflux, etc. In Nishiyama [0455] indicates that in distillation column 130 a high boiling component is removed from the column bottom and contains about 72% by mass of a component having a higher boiling point than that of the diphenyl carbonate; thus, the remaining 28% by mass must correspond to diphenyl carbonate, which results in a DPC/HB ratio falling within the range 0.1 to 10; With regard to the ratio DPC/catalyst, table 6 indicates the molar ratio of each of the main high-boiling by products to titanium atoms, which add up to a total ratio of such byproducts to titanium atoms of 26.81 to 1.;In order to make an approximate calculation of the amount of catalyst present in the high-boiling component it has been assumed that the average molecular weight of the by-products is similar to diphenyl carbonate (214.21 g/mol); the molecular weight of Ti(OBu)4 is 340.25 g/mol. This results in that 5.6% of the weight within said "72% by mass of components having a higher boiling point than diphenyl carbonate" corresponds to the titanium catalyst. Consequently, the total high-boiling point component of comparative example 14 can be assumed to contain 28% of diphenyl carbonate and 4% by mass of catalyst, which results in a DPC/catalyst ratio within the range 1.0-10.0.
Regarding claim 2, Nishyama is silent to the amount of diphenyl carbonate as claimed however the steps of the process as claimed are substantially the same/overlapping with the steps taught in Nishiyama comparative example 14 and therefore expected results, i.e. the ratios of products obtained, would be expected absent a claimed difference in parameters in the process, such as operating temperature, pressure, reflux, etc.
Regarding claims 3 and 6, Nishiyama is silent to the material of construction of the distillation column liquid-contacting part as claimed, however Fe, Mo, Cr was notoriously well known components of construction of stainless steel and the skilled artisan would find obvious to utilize stainless steel (see Shaver C26:L54-C27:L6 for evidence of known Fe stainless steel alloys).
Regarding claim 4 and 7-9, Nishyama is silent to the amount of alkylr aryl carbonate as claimed however the steps of the process as claimed are substantially the same/overlapping with the steps taught in Nishiyama comparative example 14 and therefore expected results, i.e. the ratios of products obtained, would be expected absent a claimed difference in parameters in the process, such as operating temperature, pressure, reflux, etc.
Regarding claims 5 and 10-16, Nishyama is silent to the dimensions of, however the dimensions are changes in shape and scale which are routine for the skilled artisan in order to scale up/scale down the process of Nishiyama and would arrive at columns in the scale claimed with the expected result of performing the separations as claimed, see MPEP 2144.04.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Further citations for producing carbonates are cited herein, including Komiya (US 5,747,609), Tojo (US 6,262,210), Boden (US 2003/0055199), Fukuoka (US 2007/0260083, etc), Ryu (US 2010/0197952.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN MILLER whose telephone number is (571)270-1603. The examiner can normally be reached Monday - Friday 9 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571) 272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN MILLER/Primary Examiner, Art Unit 1772
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