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 1-20 are pending and under current examination.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ohno (US20090216053 A1), Kato (JP2019127436; as provided by the applicant on IDS dated 04/02/2024) and Taguchi (US20080287715 A1) in combination.
Determining the scope and contents of the prior art
Ohno teaches a method of making hexafluoro 1, 3-butadiene comprising performing dichlorination of 1,2,3,4-tetrachlorohexafluorobutane in presence of Zn and organic solvent, with example of isopropanol alcohol (2-propanol) (entire application, and examples).
Ascertaining the differences between the prior art and the claims at issue
Ohno teaches a method of making hexafluoro 1, 3-butadiene comprising performing dichlorination of 1,2,3,4-tetrachlorohexafluorobutane in presence of Zn and organic solvent, with example of isopropanol alcohol (2-propanol), but fails to teach antioxidant or polymerization inhibitor.
Resolving the level of ordinary skill in the pertinent art
With regard to the above difference- Since hexafluoro 1, 3-butadiene, a vinyl monomer, is known to undergo polymerization, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success to add commonly known polymerization inhibitor or an antioxidant to the process to increase the yield of hexafluoro 1, 3-butadiene and to prevent formation of side products during the reaction. This deficiency is cured by Kato and Taguchi.
In the same field of endeavor, Kato teaches suppression of polymerization while dealing with vinyl monomers during their production or purification, such as 1,3-butadienes by adding polymerization inhibitor, such as antioxidant etc. with examples of phenothiazine and antioxidants, such as hydroquinone, cresol etc. in an amount of 1 to1000ppm of weight of vinyl monomer (within limits of 0.01% or more and 10% or less) (entire article).
In the same field of endeavor, Taguchi teaches suppression of polymerization while dealing with vinyl monomers, TFE during their production process, by adding polymerization inhibitor, cyclohexadiene, in an amount of 0.1-400micromol ((400/10-6) x100=0.04% mole) per mole of vinyl monomer (entire article).
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 that a polymerization suppresser, such as phenothiazine, or cyclohexadiene may be added in an amount of 0.01% or more and 10% or less during production process of hexafluoro 1, 3-butadiene, a vinyl monomer, to increase the yield of hexafluoro 1, 3-butadiene and to prevent formation of side products during the reaction. Thus, the cited prior art meets limitation of the instant claims.
With regards to limitation of the instant claims “peroxide decomposer”, Since the cited prior art teaches same inhibitor as in the instant claims, the inhibitor of the cited prior art is also expected to be peroxide decomposer whether or not realized by the cited prior art. Thus, the cited prior art meets limitation of the instant claims.
Therefore, combination reads applicants claims.
Based on the above established facts, it appears that the combination of 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 combined the elements as claimed by known methods with no change in their respective functions, and the combination 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, Ohno teaches a method of making hexafluoro 1, 3-butadiene comprising performing dichlorination of 1,2,3,4-tetrachlorohexafluorobutane in presence of Zn and organic solvent, with example of isopropanol alcohol (2-propanol), Kato teaches suppression of polymerization while dealing with vinyl monomers during their production or purification, such as 1,3-butadienes by adding polymerization inhibitor, such as antioxidant etc. with examples of phenothiazine and antioxidants, such as hydroquinone, cresol, whereas Taguchi teaches suppression of polymerization while dealing with vinyl monomers, TFE during their production process, by adding polymerization inhibitor, cyclohexadiene. So, the combination of prior art read applicants claims.
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 a reasonable expectation of success and motivation that polymerization inhibitor may be added during the production process of vinyl monomer and can be made by combination 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 the 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 applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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