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 1-10 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over LG (KR20160030715 A; as provided by the applicant on IDS dated 11/17/2025), Nordhoff (US 7557245 B2) in combination.
Determining the scope and contents of the prior art
LG teaches a method for preparing high purity (meth)acrylic acid from gas phase oxidation of a compound such as propane, propylene, (meth)acrolein in the presence of a catalyst comprising the following purification steps (see [0010]-[0016]):
1) Contacting a mixed gas comprising (meth) acrylic acid, organic by-products and water vapor generated by a synthesis reaction of (meth) acrylic acid with water in an absorption tower 100 to obtain an aqueous (meth) acrylic acid solution (same step as in absorption tower of the instant claims); 2) Supplying (meth) acrylic acid aqueous solution to the extraction tower 200 and the water separation tower 300; 3) Obtaining a (meth) acrylic acid extract having a reduced water content from the aqueous (meth) acrylic acid solution supplied to the extraction tower 200 and supplying it to the water separation tower 300; 4) Distilling the (meth) acrylic acid aqueous solution and the (meth) acrylic acid extract that are supplied to the water separation tower 300 and supplying the water discharge column bottom discharge liquid (from which low-boiling by-products have been removed as theses are discharged as upper stream) (same as degassing and removing low-boiling by-products of the instant claim 2) to the high boiling point by-product separation tower 400; 5) Distilling the water separation tower bottom discharge liquid supplied to the high boiling point by-product separation tower 400 to separate the high boiling point by- product separation tower 400 into an upper discharge liquid and a high boiling point by- product separation tower 400 under discharge; 6) Distilling the bottom boiling liquid of the high boiling point by-product separation tower 400 in a distillation column 700 or 800 to obtain a distillation tower 700 or 800 upper discharge; And 7) Crystallization of a portion of the top boiling by-product separation tower 400 to obtain (meth) acrylic acid and mixing the remaining portion of the top boiling by-product of the high boiling by-product separation tower 400 with distillation towers 700 or 800 to obtain crude (meth) acrylic acid (same as crystallization step of the instant claims). Further steps 6 and 7 of the cited prior art are same as “supplying the lower discharge stream of the water separation column----to the crystallizer of the instant claims”.
Nordhoff teaches a method for preparing high purity (meth)acrylic acid from gas phase comprising the following purification steps (entire patent, especially cl7-26):
Contacting a mixed gas comprising (meth) acrylic acid, organic by-products and with water in an absorption tower (same step as in absorption tower of the instant claims); 2) Supplying (meth) acrylic acid aqueous solution to distillation apparatus to reduce the water content and degassing; 3) Obtaining a (meth) acrylic acid crude extract with concentration of (meth) acrylic acid as 80%, 85%, 95% etc., and having a reduced water content from the aqueous (meth) acrylic acid solution to the purification apparatus; 4) Crystallization to obtain (meth) acrylic acid; 5) Separation of crystals of (meth) acrylic acid from the mother liquor; 6) recycling of mother liquor to increase the efficiency of the process. The cited prior art teaches treating mother liquor before recycling by any of the processes, such as (see Cl 14-16):
Distillation of mother liquor comprising (meth) acrylic acid, acetic acid, water and high-boilers- and separation into low boiler acetic acid, water etc. (low-boiling upper discharge stream) and a lower stream comprising (meth) acrylic acid and high-boilers by-products (lower discharge stream) and azeotropic purification of lower stream comprising (meth) acrylic acid before passing stream to again crystallization;
Extraction of (meth) acrylic acid using n-butanol and separating. Phase with max amount of (meth) acrylic acid is recycled to step 2 and rest with water is discarded;
Dewatering of (meth) acrylic acid by pervaporation before recycling.
Ascertaining the differences between the prior art and the claims at issue
LG teaches a method for preparing high purity (meth)acrylic acid using same process steps as in the instant claims followed by crystallization. However, the cited prior art is silent about recycling mother liquor after separation of (meth)acrylic acid crystals and treatment of mother liquor before recycling.
Nordhoff teaches a method for preparing high purity (meth)acrylic acid using same process steps as in the instant claims followed by crystallization and separation and treatment of mother liquor before recycling. Although the treatment steps of Nordhoff are same as in the instant claims, the steps described by Nordhoff are not as descriptive and naming streams as upper stream, lower streams etc.
Resolving the level of ordinary skill in the pertinent art
With regards to the difference of recycling mother liquor after separation of (meth)acrylic acid crystals and treatment of mother liquor before recycling, a person of ordinary skill in the art would have been motivated to increase the efficiency of the process and yield of the desired product by recycling of the mother liquor, which is also routine in the art. Further, it would have been prima facie obvious to a person of ordinary skill in the art that mother liquor may be treated before recycling using concentration steps 2-6 taught by LG to originally obtain the composition for crystallization. This deficiency is also cured by Nordhoff. In the same field of endeavor, Nordhoff teaches a method for preparing high purity (meth)acrylic acid using same process steps as in the instant claims followed by crystallization and separation and treatment of mother liquor before recycling. Nordhoff provides treatment of mother liquor before recycling using steps, such as distillation, separation of phases etc., and using the treated stream concentrated in the product for further crystallization.
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, LG teaches a method for preparing high purity (meth)acrylic acid using same process steps as in the instant claims followed by crystallization. Nordhoff teaches a method for preparing high purity (meth)acrylic acid using same process steps as in the instant claims followed by crystallization and separation and treatment of mother liquor before recycling. 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 that mother liquor may be separated from pdruct crystals and recycled for increasing efficiency and yield of the process 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 at 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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