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/JP2022/042371 which claims the benefit of JP 2021-186485 with an effective filing date of 16 November 2021 as reflected in the filing receipt mailed on 03 October 2024.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner. The lined through reference, JP2014148456, on the IDS dated 25 June 2025 appears to not be attached; however, JP2014148456 to Kazuki et al. is herein applied as prior art.
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 1-8 are rejected under 35 U.S.C. 103 as being obvious over Murai et al. (WO2021235335, published 25 November 2021, filed 14 May 2021, hereinafter Murai) in view of Miyamoto et al. (US20180185821, published 05 July 2018, hereinafter Miyamoto). WO2021235335 is translated as US20230192596 which is serving as the English language equivalent and all citations in this action pertain to this US reference.
The applied WO2021235335 reference has common inventors and a common assignee with the instant application. Based upon the earlier effectively filed date of 14 May 2021 of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
The below rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement, see generally MPEP § 717.02.
Murai is in the known prior art field of producing acetaminophen including “causing p-nitrophenol to undergo an acetamination reaction to produce the acetaminophen, by passing a solution containing the p-nitrophenol through a column packed with a catalyst while also passing an acetylating agent and hydrogen through the column. The catalyst may be a supported metal catalyst in which a metal element is supported on a synthetic adsorbent, and a reaction temperature of the acetamination reaction is 0° C. to 60° C., and a reaction pressure of the acetamination reaction is 0.1 MPa to 1 MPa”, see Abstract.
Regarding the limitations of instant application claim 1, Murai teaches a “method for producing acetaminophen, the method comprising: passing a solution comprising p-nitrophenol through a column packed with a catalyst while also passing an acetylating agent and hydrogen through the column, thereby causing p-nitrophenol to undergo an acetamination reaction to produce the acetaminophen, wherein the catalyst is a supported metal catalyst in which a metal element is supported on a synthetic adsorbent, wherein a reaction temperature of the acetamination reaction is in a range of from 0° C. to 60° C., and wherein a reaction pressure of the acetamination reaction is in a range of from 0.1 MPa to 1 MPa” see Claim 1; Figs. 1-2; Paras. [0028];[0043]-[0046], meeting:
The method, the causing, the passing, the supported metal catalyst, and within the range of the temperature and pressure in instant application claim 1.
In regard to the instant application claim 1 functional limitation of “causing p-nitrophenol to undergo an acetamination reaction to produce the acetaminophen, by”. The limitation is considered intended use, see MPEP 2111.02 II, of the claimed “p-nitrophenol”; therefore, the intended use of the “causing” limitation is not considered a claim limitation and is not given patentable weight. The examiner suggests deleting the limitation of “causing p-nitrophenol to undergo an acetamination reaction to produce the acetaminophen, by” and changing “the p-nitrophenol” in line 3 to “
Regarding the limitations of instant application claim 8, Murai teaches “wherein an amount of the supported metal element in the supported metal catalyst is in a range of from 1 mass % to 25 mass % based on a mass of the supported metal catalyst”, see Claim 7; Paras. [0043]-[0046], meeting:
Within the mass% range of the metal in instant application claim 8.
Murai does not teach:
The instant application claim 1 limitations that the catalyst is a monolith porous body; and,
The limitations of instant application claims 2-7.
Miyamoto is in the known prior art field of “a granular porous body which includes a skeleton body including an inorganic compound having a three-dimensional continuous network structure, and which has a two-step hierarchical porous structure including through-holes formed in voids in the skeleton body, and pores extending from a surface to the inside of the skeleton body and dispersively formed on the surface. Particularly, the present invention relates to a reaction method for reacting a reaction object with a liquid containing the reaction object such as a metal ion and a low-molecular-weight compound being in contact with the granular porous body”, see Para. [0001], where the porous body is defined as “a monolithic porous body of dried silica gel or silica glass of three-dimensional continuous network structure which has a two-step hierarchical porous structure”, see Para. [0102], used in methods that include “a column flow method in which the liquid is caused to pass through a column filled with the granular porous body, so that the liquid is diffused in the granular porous body”, see Paras. [0016]-[0031], and the liquid is adsorbed, see Paras. [0108]-[0111], and is applied to teach the same.
Regarding the limitations of instant application claims 1 and 2, Miyamoto teaches a porous body is defined as “a monolithic porous body of dried silica gel or silica glass of three-dimensional continuous network structure which has a two-step hierarchical porous structure”, see Para. [0102], used in methods that include “a column flow method in which the liquid is caused to pass through a column filled with the granular porous body, so that the liquid is diffused in the granular porous body”, see Paras. [0016]-[0031], where the “monolithic porous body including silica gel or silica glass having a three-dimensional continuous network structure” is made “by a spinodal decomposition sol-gel method” with “a silica precursor as a raw material of silica gel or silica glass”, where as “a main component of the silica precursor, water glass (sodium silicate aqueous solution), or an inorganic or organic silane compound can be used”, see Paras. [0092]-[0095], meeting:
The inorganic porous monolith support body in instant application claim 1 and in instant application claim 2.
Regarding the limitations of instant application claims 3 and 4, Miyamoto teaches “the massive porous body includes a skeleton body including the inorganic compound having a three-dimensional continuous network structure, and has a two-step hierarchical porous structure including through-holes formed in voids in the skeleton body, and pores extending from a surface to an inside of the skeleton body and dispersively formed on the surface”, where the “porous body according to the aforementioned aspect has a function in which the functional group adsorbs the metal ion to the surface of the granular porous body by undergoing a complexation reaction with the metal ion”, see Paras. [0012];[0047]-[0057], and the metal ion is palladium or platinum, see Paras. [0110]-[0111];[0193], meeting:
The monolith skeleton structure in instant application claim 3 and in instant application claim 4; and,
The specific metals in instant application claim 4.
Regarding the limitations of instant application claims 5 and 6, Miyamoto teaches “a most frequent pore diameter in a pore diameter distribution of the pores is within a range of 2 nm or more and 20 nm or less when the reaction object is a metal ion, and the most frequent pore diameter of the pores is within a range of 5 nm or more and 50 nm or less when the reaction object is the low-molecular-weight compound, a most frequent pore diameter in a pore diameter distribution of the through-holes is equal to or more than 5 times of the most frequent pore diameter of the pores, and within a range of 0.1 μm or more and 50 μm or less”, see Claim 1; Paras. [0017]-[0024];[0104]-[0107], meeting:
Within the size distribution of the pores in instant application claim 5; and
Within the size distributions of the through holes in instant application claim 6.
Regarding the limitations of instant application claim 7, Miyamoto teaches a “granulation step is a step of crushing and granulating the massive monolithic porous body obtained” “so that the granulated monolithic porous body is recovered as the granular porous body 1 with the particle diameter Dp falling within a desired particle diameter range (D0 μm or more and 250 μm or less)”, see Paras. [0102]-[0104], where “a particle diameter of the granular porous body is equal to or more than 2 times of the most frequent pore diameter of the through-holes, and within a range of 20 μm or more and 4 mm or less”, see Paras. [0055];[0089]; Claim 1, meeting:
The particulate monolith and within the particle size distribution 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 replaced the synthetic adsorbent catalyst support of Murai with the synthetic adsorbent catalyst support as taught by Miyamoto with a reasonable predictability of success for the purpose of efficiently producing a product compound through use of an inorganic or organic porous catalyst with “a granular porous body having a two-step hierarchical porous structure [with] through-holes serving as diffusion channels in particles”, where “a fluid is easily quickly diffused to the inside of the particle, and good reaction efficiency is obtained even when the particle diameter is larger as compared to a single-pore particle” by providing “efficient reaction conditions by clarifying a relationship between a contact time and an optimum particle diameter etc. in a method for reacting a reaction object with a liquid containing the reaction object being in contact with the granular porous body”, see Miyamoto, Paras. [0008]-[0015];[0092]-[0095].
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 replacing the synthetic adsorbent catalyst support of Murai by applying the known synthetic adsorbent catalyst support as taught by Miyamoto with a reasonable predictability of success for the purpose of efficiently producing a product compound through use of an inorganic or organic porous catalyst with “a granular porous body having a two-step hierarchical porous structure [with] through-holes serving as diffusion channels in particles”, where “a fluid is easily quickly diffused to the inside of the particle, and good reaction efficiency is obtained even when the particle diameter is larger as compared to a single-pore particle” by providing “efficient reaction conditions by clarifying a relationship between a contact time and an optimum particle diameter etc. in a method for reacting a reaction object with a liquid containing the reaction object being in contact with the granular porous body”, see Miyamoto, Paras. [0008]-[0015];[0092]-[0095]; 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 Murai and Miyamoto both teach organic adsorbent porous catalyst supports, a person of ordinary skill in the art has good reason to modify Murai by relying upon Miyamoto before the effective filing date of the claimed invention for knowledge generally available within the adsorbent porous catalyst supports art regarding the method of making the support with inorganic or organic silica precursors and the shape of the catalyst, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing a product compound through use of an inorganic or organic porous catalyst with “a granular porous body having a two-step hierarchical porous structure [with] through-holes serving as diffusion channels in particles”, where “a fluid is easily quickly diffused to the inside of the particle, and good reaction efficiency is obtained even when the particle diameter is larger as compared to a single-pore particle” by providing “efficient reaction conditions by clarifying a relationship between a contact time and an optimum particle diameter etc. in a method for reacting a reaction object with a liquid containing the reaction object being in contact with the granular porous body”, see Miyamoto, Paras. [0008]-[0015];[0092]-[0095]; 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 inorganic or organic silica precursors, 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” such as granulating the solid to particles, “proportions,” such as the size of the granulated particles, through holes, and pores, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, 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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being obvious over Kazuki et al. (JP2014148456, published 21 August 2014, see machine translation, hereinafter Kazuki) in view of Nesu et al. (JPS5998048, published 06 June 1984, see machine translation, hereinafter Nesu).
Kazuki is in the known prior art field of “macroporous monolith, more specifically a microporous monolith having a co-continuous structure of a skeleton and macropores, as well as a hierarchical porous structure of mesopores and macropores, and a method for manufacturing the same”, see Abstract; Para. [0001], where the monolith “is widely used in chromatography separation columns, enzyme
supports, catalyst supports, and other applications”, such as “hydrogenation of nitro, hydrogenation of nitriles and esters, hydrogenation of acids and esters, reductive alkylation and amination, hydrogenation of aldehydes and ketones, hydrogenation of acetylenes, hydrogenation of olefins”, etc., and specifically in the catalytic “reduction reaction of 4-nitrophenol to 4-aminophenol”, see Page 22; Figs. 62-64; Paras. [0166]-[0176];[0199].
Regarding the limitations of instant application claims 1 and 2, Kazuki teaches a method of producing 4-aminophenol by passing a solution of 4-nitrophenol aka p-nitrophenol and a reducing agent through a monolithic silica palladium catalyst at room temperature to produce 4-aminophenol, see Page 22; Figs. 62-64; Paras. [0168]-[0173], where the “macroporous monolith was prepared” “in the shape of a cylinder” with palladium nanoparticles “and inserted into a cylindrical column”, see Paras. [0172]-[0173]; Page 22; Figs. 62-64, and the catalyst is a “(the first macroporous monolith) ha[ving] a framework composed of hydride silica and macropores exhibiting a co-continuous structure with the framework, and ha[ving] a hierarchical porous structure of mesopores and macropores formed on the surface of the framework, wherein hydrogen sites based on Si-H bonds are distributed on the surface of the framework and inside the mesopores” and/or a second “macroporous monolith having a framework composed of hydride silica and macropores exhibiting a co-continuous structure with the framework, wherein mesopores having openings on the surface of the framework are formed in the framework, thereby having a hierarchical porous structure of mesopores and macropores, and hydrogen sites based on Si-H bonds distributed on the surface of the framework and inside the mesopores” with “the metal at the hydrogen sites in the macroporous monolith and forming nanoparticles composed of the metal, thereby obtaining a macroporous monolith in which nanoparticles are arranged at least inside the mesopores”, see Paras. [0009]-[0010], meeting:
Passing p-nitrophenol and additional reactants through an inorganic monolithic catalyst packed in a column in instant application claim 1 and in instant application claim 2; and,
The catalyst supporting a metal on the monolith porous body in instant application claim 1; and,
The hydrogenation reaction using the monolith catalysts is performed in the presence of hydrogen at 1 atm or 0.1 MPa, see Para. [0175].
In regard to the instant application claim 1 functional limitation of “causing p-nitrophenol to undergo an acetamination reaction to produce the acetaminophen, by”. The limitation is considered intended use, see MPEP 2111.02 II, of the claimed “p-nitrophenol”; therefore, the intended use of the “causing” limitation is not considered a claim limitation and is not given patentable weight. The examiner suggests deleting the limitation of “causing p-nitrophenol to undergo an acetamination reaction to produce the acetaminophen, by” and changing “the p-nitrophenol” in line 3 to “
Regarding the limitations of instant application claims 3 and 4, Kazuki teaches a “first macroporous monolith”, were the “first manufacturing method includes a process (gelation step) in which a gel composed of a skeletal phase and a solution phase is formed by carrying out hydrolysis and polymerization (polycondensation) of a silicon compound having a hydrolyzable functional group by a sol-gel method and phase separation of the solution system”, where the “skeletal phase has pores with openings on its surface (pores that become mesopores after the gel dries)”, i.e., the mesopores are the inward pores, the “skeletal phase and solution phase, which are formed through the phase separation process, each have a continuous three-dimensional network structure and are intertwined with one another. In other words, the gel formed in the gelation process has a co-continuous structure of the skeletal phase and the solution phase”, where “the framework of the first monolith is formed from the gel's skeletal phase, and the macropores of the first monolith are formed from the solution phase”, i.e., the macropores are the through holes, see Paras. [0013];[0025]-[0026]; Fig. 1(a)-(e), and the “monolith has a framework composed of hydride silica and macropores that exhibit a co-continuous structure with the framework, and has a hierarchical porous structure of mesopores and macropores, with mesopores having openings on the surface of the framework, and is a macroporous monolith in which hydrogen sites based on Si-H bonds are distributed on the surface of the framework and inside the mesopores”, see Paras. [0030]-[0031], meeting:
The porous body skeleton formed of an inorganic compound with the 3D continuous network of the hierarchical porous through hole and surface pore structure in instant application claim 3; and,
The “first macroporous monolith is brought into contact with a solution containing a salt of a metal” “thereby reducing the metal at the hydrogen sites in the first macroporous monolith and forming nanoparticles composed of the metal” yielding “a macroporous monolith (a second macroporous monolith) in which nanoparticles composed of the metal are arranged at least inside the mesopores” and on the surface of the monolith, where the metal is “at least one selected from platinum (Pt), palladium (Pd)”, see Page 18; Figs. 36-37A(e)-(f); Paras. [0060]-[0064];[0137]-[0139], meeting:
The porous body skeleton formed of an inorganic compound with the 3D continuous structure containing the metal palladium therein and thereon in instant application claim 4.
Regarding the limitations of instant application claims 5 and 6, Kazuki teaches, as stated above, the mesopores are the inward pores and the macropores are the through holes, see Paras. [0013];[0025]-[0026]; Fig. 1(a)-(e), with the through hole macropores having “a pore with a diameter (pore size) of 50 nm or more” that is “highly uniform”, where “the average pore size of the macropores is preferably 1 µm or larger” and the inward mesopores having “a pore with a diameter in the range of 2 nm or more and less than 50 nm” with the “central pore diameter of the mesopore is preferably 2 to 10 nm”, see Paras. [0024];[0052]-[0053], meeting:
Within the pore size distribution range of the inward pores in instant application claim 5; and,
The through hole size distribution is greater than or equal to 5 times the size distribution of the inward pores and within the through hole size distribution range in instant application claim 6.
Regarding the limitations of instant application claim 8, Kazuki teaches “a second macroporous monolith Pd-silica (5 mol%, 0.015 mmol)”, “second macroporous monolith Pd-silica (0.02 mol%, 0.015 mmol)”, and “second macroporous monolith Pd-silica (2 mol%)”, see Paras. [0171]-[0180], meeting:
Since mol% directly correlates to mass % via calculation within the range in instant application claim 8.
Kazuki does not teach:
The instant application claim 1 limitations of a method for producing acetaminophen, an acetamination reaction to produce the acetaminophen, while also passing an acetylating agent and hydrogen through the column, and a reaction temperature of the acetamination reaction is 00C to 60°C, and a reaction pressure of the acetamination reaction is 0.1 MPa to 1 MPa.
Further regarding the limitations of instant application claim 1, Kazuki teaches the hydrogenation reaction using the monolith catalysts is performed in the presence of hydrogen at 1 atm or 0.1 MPa, see Para. [0175], meeting:
Adding hydrogen to the hydrogenation/acetylation reaction and within the pressure range of the hydrogenation/acetylation in instant application claim 1.
Nesu is in the known prior art field of the production of “N-acetyl-p aminophenol by hydrogenating p-nitrophenol to p-aminophenol and simultaneously acetylating the p-aminophenol with acetic anhydride”, see Pgs. 2-3, Field of Invention, i.e., N-acetyl-p-aminophenol is acetaminophen, and is applied to teach the same.
Regarding the limitations of instant application claim 1, Nesu teaches “a method for producing N-acetyl-p-aminophenol, wherein a) p-nitrophenol is hydrogenated to p-aminophenol, and b) the p-aminophenol is simultaneously acetylated with acetic anhydride at a controlled acetylation rate such that there is substantially no excess acetic anhydride in the reaction system until the hydrogenation reaction is substantially completed”, see Pgs. 3-4, Summary of the Invention-Disclosure of a Preferred Embodiment; Claim 1, where the reaction takes place in a “suitable hydrogenation apparatus in the presence of a hydrogenation catalyst. A particularly preferred catalyst is wet palladium with a carbon support. The hydrogen source for the hydrogenation reaction only needs to be a gas containing sufficient hydrogen for hydrogenation”, “wherein the gaseous hydrogen is at a pressure of approximately 50 to approximately 500 psig (approximately 450 to approximately 1140 kP)” or 0.45 to 1.14 MPa, see Pgs. 3-4, Disclosure of a Preferred Embodiment; Claim 7, and the temperature of the reaction is “about 0°C to about 125°C”, see Pg. 5, meeting:
The method for producing acetaminophen by reacting p-nitrophenol with an acetylating agent and hydrogen in the presence of a catalyst metal on a support, within the acetamination reaction temperature range, and within the acetamination reaction pressure range in instant application claim 1.
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 Kazuki monolithic catalyst packed column production of 4-aminophenol to incorporate the hydrogenating p-nitrophenol to p-aminophenol and simultaneously acetylating the p-aminophenol to N-acetyl-p-aminophenol aka acetaminophen as taught by Nesu with a reasonable predictability of success for the purpose of efficiently producing color free N-acetyl-p-aminophenol aka acetaminophen with less production steps, a shorter reaction time, and high purity, see Nesu, Pgs. 2-3, Background.
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 Kazuki monolithic catalyst packed column production of 4-aminophenol by applying the known technique of hydrogenating p-nitrophenol to p-aminophenol and simultaneously acetylating the p-aminophenol to N-acetyl-p-aminophenol aka acetaminophen as taught by Nesu with a reasonable predictability of success for the purpose of efficiently producing color free N-acetyl-p-aminophenol aka acetaminophen with less production steps, a shorter reaction time, and high purity, see Nesu, Pgs. 2-3, Background; 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 Kazuki and Nesu both teach the catalytic reduction of p-nitrophenol to p-aminophenol, a person of ordinary skill in the art has good reason to modify Kazuki by relying upon Nesu before the effective filing date of the claimed invention for knowledge generally available within the N-acetyl-p-aminophenol aka acetaminophen art regarding the catalytic synthesis, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing color free N-acetyl-p-aminophenol aka acetaminophen with less production steps, a shorter reaction time, and high purity, see Nesu, Pgs. 2-3, Background; 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.
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,” such as the size of the through holes and pores, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, 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.
Claim 7 is rejected under 35 U.S.C. 103 as being obvious over Kazuki et al. (JP2014148456, published 21 August 2014, see machine translation, hereinafter Kazuki) in view of Nesu et al. (JPS5998048, published 06 June 1984, see machine translation, hereinafter Nesu), as applied in the 35 USC 103 rejection of claims 1-6 and 8 above, in further view of Miyamoto et al. (US20180185821, published 05 July 2018, hereinafter Miyamoto).
Kazuki does not teach the limitations in instant application claim 7.
Miyamoto is in the known prior art field of “a granular porous body which includes a skeleton body including an inorganic compound having a three-dimensional continuous network structure, and which has a two-step hierarchical porous structure including through-holes formed in voids in the skeleton body, and pores extending from a surface to the inside of the skeleton body and dispersively formed on the surface. Particularly, the present invention relates to a reaction method for reacting a reaction object with a liquid containing the reaction object such as a metal ion and a low-molecular-weight compound being in contact with the granular porous body”, see Para. [0001], where the porous body is defined as “a monolithic porous body of dried silica gel or silica glass of three-dimensional continuous network structure which has a two-step hierarchical porous structure”, see Para. [0102], used in methods that include “a column flow method in which the liquid is caused to pass through a column filled with the granular porous body, so that the liquid is diffused in the granular porous body”, see Paras. [0016]-[0031], and is applied to teach the same.
Regarding the limitations of instant application claim 7, Miyamoto teaches a “granulation step is a step of crushing and granulating the massive monolithic porous body obtained” “so that the granulated monolithic porous body is recovered as the granular porous body 1 with the particle diameter Dp falling within a desired particle diameter range (D0 μm or more and 250 μm or less)”, see Paras. [0102]-[0104], where “a particle diameter of the granular porous body is equal to or more than 2 times of the most frequent pore diameter of the through-holes, and within a range of 20 μm or more and 4 mm or less”, see Paras. [0055];[0089]; Claim 1, meeting:
The particulate monolith and within the particle size distribution 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 monolithic catalyst of Kazuki by granulating the monolith into particles as taught by Miyamoto with a reasonable predictability of success for the purpose of efficiently producing a porous catalyst with “a granular porous body having a two-step hierarchical porous structure [with] through-holes serving as diffusion channels in particles”, where “a fluid is easily quickly diffused to the inside of the particle, and good reaction efficiency is obtained even when the particle diameter is larger as compared to a single-pore particle” by providing “efficient reaction conditions by clarifying a relationship between a contact time and an optimum particle diameter etc. in a method for reacting a reaction object with a liquid containing the reaction object being in contact with the granular porous body”, see Miyamoto, Paras. [0008]-[0015].
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 monolithic catalyst of Kazuki by applying the known technique of granulating the monolith into particles as taught by Miyamoto with a reasonable predictability of success for the purpose of efficiently producing a porous catalyst with “a granular porous body having a two-step hierarchical porous structure [with] through-holes serving as diffusion channels in particles”, where “a fluid is easily quickly diffused to the inside of the particle, and good reaction efficiency is obtained even when the particle diameter is larger as compared to a single-pore particle” by providing “efficient reaction conditions by clarifying a relationship between a contact time and an optimum particle diameter etc. in a method for reacting a reaction object with a liquid containing the reaction object being in contact with the granular porous body”, see Miyamoto, Paras. [0008]-[0015]; 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 Kazuki and Miyamoto both teach monolithic porous catalysts, a person of ordinary skill in the art has good reason to modify Kazuki by relying upon Miyamoto before the effective filing date of the claimed invention for knowledge generally available within the monolithic porous catalyst art regarding the shape of the catalyst, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing a porous catalyst with “a granular porous body having a two-step hierarchical porous structure [with] through-holes serving as diffusion channels in particles”, where “a fluid is easily quickly diffused to the inside of the particle, and good reaction efficiency is obtained even when the particle diameter is larger as compared to a single-pore particle” by providing “efficient reaction conditions by clarifying a relationship between a contact time and an optimum particle diameter etc. in a method for reacting a reaction object with a liquid containing the reaction object being in contact with the granular porous body”, see Miyamoto, Paras. [0008]-[0015]; 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.
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” such as granulating the solid to particles, “proportions,” such as the size of the granulated particles, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, 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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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