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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55, submitted May 21, 2024.
3. Applicant has not filed an English language translation of foreign priority JP Application No. 2020-216704. It is suggested that a certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English be submitted. See 35 U.S.C. 119(b)(3) and 372(b)(3) and 37 CFR 1.55(g)(3)(i) and 41.154(b). A showing of priority that relies on a non-English language application is prima facie insufficient to overcome an intervening reference if no certified translation of the application is on file. See 37 CFR 41.154(b) and 41.202(e).
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on May 21, 2024, May 21, 2025, and August 21, 2025, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner, please refer to the signed copy of Applicant’s PTO-1449 form, attached herewith.
Claim Rejections - 35 USC § 112(b)
5. 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.
6. Claims 1-8 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.
7. Claim 1, line 2, it is not clear what is embraced by the term “raw materials,” rendering the claim indefinite. The term “raw materials” is not defined by the claim(s) nor the Specification, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the Specification, Applicant describes just two raw materials:
“In an exemplary embodiment, the raw materials may include dimethyl
carbonate (DMC) and ethanol (EtOH) at a molar ratio (EtOH/DMC) in the range of 0.2 to 8.0.”
(Page 5, lines 13-15).
Therefore, in view of a broadest reasonable interpretation consistent with the Specification, for purposes of applying prior art, the term “raw materials” is construed to mean: dimethyl carbonate and ethanol.
8. Claim 4 depends from claim 1 and recites the limitation "wherein the reaction step includes reacting raw materials with the moisture content…[language omitted]," [emphasis added] in line 2. However, this limitation is confusing and lacks sufficient antecedent basis, because there is no recitation of moisture content in claim 1.
Therefore in view of a broadest reasonable interpretation of the claim, consistent with the Specification and for purposes of applying prior art, the limitation “wherein the reaction step includes reacting raw materials with the moisture content” is construed to mean:
“wherein in the reaction step, the raw materials have a moisture content of from 20 ppm to 500 ppm.”
9. Claims 2-8 are rejected as being dependent upon and including all of the limitations of claim 1.
Claim Rejections - 35 USC § 112(a)
10. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
11. Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
12. In particular, support cannot be found for the full scope of carbonate compounds to be produced, or the full scope of reactants, (i.e., “raw materials containing dimethyl carbonate and ethanol” as instantly claimed.
13. The MPEP §2163 states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. In the case of chemical entities, Applicant's attention is further directed to Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089, 118 S. Ct. 1548 (1998), which notes that an adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties, “not a mere wish or plan for obtaining the claimed chemical invention.” While the court recognizes that, “[i]n claims involving chemical materials, generic formulae usually indicate with specificity what the generic claims encompass” (Id.), it is also recognized that for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim and/or the genus must be sufficiently detailed to show that applicant was in possession of the claimed invention as a whole (see Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991)). If a genus has substantial variance, the disclosure must present a sufficient number of representative species that encompass the genus in order to adequately describe the genus (i.e., the disclosure must describe a sufficient variety of species to reflect the variation within that genus). See MPEP § 2163. Otherwise, as stated by the court in Ariad Pharmaceuticals, Inc., v. Eli Lilly and Company (Fed. Cir. 2010), “a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus.”
14. In the instant case, it is evident that the genus of compounds embraced by “a carbonate” has substantial variance. Indeed, the genus of carbonate compounds is virtually without limit, embracing hundreds of millions of potential compounds comprising carbonate, but otherwise bearing no structural resemblance to one another what-so-ever. In the specification, Applicant even acknowledges the breadth of the possible carbonate compounds prepared, as embraced by the claims, “in the chemical reaction used in the present invention, as described above, the product composition varies greatly depending on the reactant composition of the raw materials.” (Page 7, second paragraph).
15. Yet, the instant Specification discloses only the raw materials dimethyl carbonate (DMC) and ethanol (EtOH), and only one carbonate compound product: ethyl methyl carbonate (EMC), see Examples 1-4, Comparative Examples 1-3, and Table 1 (pages 12-15).
16. While the MPEP does not define what constitutes a sufficient number of representative species, the courts have indicated what does not constitute a representative number of species to adequately describe a broad generic. For example, in In re Gostelli, the courts determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gostelli, 872 F.2d 1008 (Fed. Cir. 1989). In the instant case, it is similarly determined that the disclosure of one carbonate compound does not adequately describe a subgenus embracing hundreds of millions of additional compound species bearing no structural relationship aside from a carbonate moiety. That is, the Specification does not disclose a sufficient variety of species to reflect the extreme variance in the genus.
17. The description requirement of the patent statue requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See In re Wilder, 736, F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming rejection because the specification does “little more than outlin[e] goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate.”) Accordingly, it is deemed that the specification fails to provide adequate written description for the genus of the claims and does not reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the entire scope of the claimed invention.
18. As such, claims 1-8 are rejected.
19. Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of preparing ethyl methyl carbonate (EMC) comprising the step of reacting the raw materials dimethyl carbonate (DMC) and ethanol (EtOH) in the presence of a catalyst, followed by the step of adding a catalyst remover to the product and then the step of removing the neutralizing salt, does not reasonably provide enablement for a method of preparing any carbonate compound starting from any raw materials containing DMC and EtOH. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
20. The standard for determining whether the Specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? As recognized by the court in In re Wands, 858 F.2d 731 (Fed. Cir. 1988), that is still the standard to be applied, determined by consideration of the Wands factors (MPEP 2164.01(A)); namely, nature of the invention, breadth of the claims, guidance of the specification, the existence of working examples, state of the art, predictability of the art and the amount of experimentation necessary. All of the Wands factors have been considered, with the most relevant factors discussed below.
21. Nature of the Invention: As stated in MPEP 2164.05(a), “[t]he initial inquiry” for determining whether the Specification is enabling “is into the nature of the invention, i.e., the subject matter to which the claimed invention pertains.”
In the instant case, the claimed invention pertains to a method for producing a carbonate comprising:
a reaction step of reacting raw materials containing dimethyl carbonate and ethanol in the presence of a catalyst to produce a product containing ethyl methyl carbonate and diethyl carbonate;
a catalyst neutralization step of adding a catalyst remover to the product to produce a neutralizing salt of the catalyst and the catalyst remover; and
a neutralizing salt removal step of removing the neutralizing salt, wherein the catalyst remover has a pKa value of 2.0 or less.
22. The State of the Prior Art and the Relative Skill of those in the Art: As stated in MPEP 2164.05(a), “[t]he state of the prior art is what one skilled in the art would have known, at the time the application was filed, about the subject matter to which the claimed invention pertains” and, as stated in MPEP 2164.05(b), “[t]he relative skill of those in the art refers to the skill of those in the art in relation to the subject matter to which the claimed invention pertains at the time the application was filed.”
23. As discussed above, the instantly claimed invention pertains to a method for producing any carbonate, comprising the following steps:
(i) reacting raw materials containing dimethyl carbonate and ethanol in the presence of a catalyst to produce a product containing ethyl methyl carbonate and diethyl carbonate;
(ii) adding a catalyst remover to the product to produce a neutralizing salt of the catalyst and the catalyst remover; and
(iii) removing the neutralizing salt,
wherein the catalyst remover has a pKa value of 2.0 or less.
24. At the time the instant application was filed, the state of the art teaches the preparation of ethyl methyl carbonate comprising the reaction of dimethyl carbonate with ethanol via transesterification in the presence of a catalyst, (see e.g., Keller et al., Scheme 1 at page 11074). (See also U.S. 20150291504 A1 paragraph [0112]). The art does not suggest the preparation of any/all carbonate compounds comprising said transesterification reaction.
25. At the time the invention was made, the relative skill of those in the art tasked with producing compounds via transesterification would have been high, as the ordinarily skilled artisan would have had, at minimum, a Ph.D.
26. The Level of Predictability in the Art: Despite the advanced training of those in the art, the pharmaceutical art is highly unpredictable. It is still not possible to fully predict the reaction kinetics and specificity based on the type of compound alone. It is not taught from the specification or from the prior art that the one of skill in the art could fully predict the outcome of every possible carbonate produced from the reaction of any material comprising dimethyl carbonate with any material comprising ethanol.
The level of detail required to satisfy the enablement requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. The fields of biology and chemistry are considered “unpredictable” because the complexity and unpredictability of chemical and biological interactions can make it difficult to understand the exact properties of an invention.
27. The Amount of Direction Provided by the Inventor / Existence of Working Examples: The amount of direction provided by the Applicant is considered to be determined by the Specification and the working examples. In the instant case, the Specification discloses only the raw materials dimethyl carbonate (DMC) and ethanol (EtOH), and the preparation of only one carbonate compound: ethyl methyl carbonate (EMC), see Examples 1-4, Comparative Examples 1-3, and Table 1 (pages 12-15).
28. Scope or Breadth of the Claims: As stated in MPEP 2164.08, “[t]he focus of the examination inquiry is whether everything within the scope of the claim is enabled” (emphasis added). Indeed, the Federal Circuit has repeatedly held that “the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’.” In re Wright, 999 F.2d 1557 (Fed. Cir. 1993) (emphasis added). At the same time, however, it is also recognized that not everything necessary to practice the invention need be disclosed. Nor is it necessary that an Applicant test all the embodiments of his invention. In re Angstadt, 537 F.2d 498 (CCPA 1976) (emphasis added). In fact, as stated by the court in In re Buchner, 929 F.2d 660 (Fed. Cir. 1991), a patent need not teach, and preferably omits, what is well known in the art.
29. Accordingly, for purposes of enablement, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate in scope with the protection sought by the claims. Thus, while “a patent application is entitled to claim his invention generically” it is necessary that “he provide a disclosure sufficient to enable one skilled in the art to carry out the invention commensurate with the scope of his claims". Amgen, Inc, v. Chugai Pharmaceutical Co., Ltd. (Fed. Cir. 1991). As noted by the court in In re Fisher, 427 F.2d 833 (CCPA 1970), the scope of enablement must bear a “reasonable correlation” to the scope of the claims. See also Ak Steel Corp. v. Sollac, 344 F.3d 1234 (Fed. Cir. 2003) and In re Moore, 439 F.2d 1232 (CCPA 1971). As stated in MPEP 2164.08, resolution of this concern requires two stages of inquiry: “[t]he first is to determine how broad the claim is with respect to the disclosure. The entire claim must be considered. The second inquiry is to determine if one skilled in the art is enabled to make and use the entire scope of the claim without undue experimentation”.
30. As to the first inquiry, as discussed above, the claims are drawn to a method for producing any carbonate, comprising the following steps:
(i) reacting any raw materials containing dimethyl carbonate and ethanol in the presence of a catalyst to produce a product containing ethyl methyl carbonate and diethyl carbonate;
(ii) adding a catalyst remover to the product to produce a neutralizing salt of the catalyst and the catalyst remover; and
(iii) removing the neutralizing salt,
wherein the catalyst remover has a pKa value of 2.0 or less.
31. Considering that “a carbonate” encompasses hundreds of millions of compound species, and potentially billions of compound species, it is evident that the claims are broad. Yet, as discussed above, the instant Specification discloses the preparation of only one carbonate compound species as recited by the claims, i.e., ethyl methyl carbonate. As such, the claim is extremely broad with respect to the disclosure. The second inquiry is discussed in detail below.
32. Amount of Experimentation Necessary: In view of all of the foregoing, at the time the invention was made, it would have required undue experimentation to practice the entire scope of the invention as claimed. As discussed above, the claims are drawn to a method for producing any carbonate, comprising the following steps:
(i) reacting any raw materials containing dimethyl carbonate and ethanol in the presence of a catalyst to produce a product containing ethyl methyl carbonate and diethyl carbonate;
(ii) adding a catalyst remover to the product to produce a neutralizing salt of the catalyst and the catalyst remover; and
(iii) removing the neutralizing salt,
wherein the catalyst remover has a pKa value of 2.0 or less.
33. Given the breadth of the claims, the nature of the instant invention considered to be one of extreme complexity. In the instant case, this complexity is exacerbated by the broadness of the claimed preparation with respect to the disclosure since the claims encompasses the process of preparing hundreds of millions of possible carbonate compounds, starting with reacting any raw materials containing dimethyl carbonate and ethanol in the presence of a catalyst, whereas the instant Specification discloses the preparation of only one such carbonate compound from the raw materials dimethyl carbonate and ethanol. Although the relative skill of those in the art to which the invention pertains is high, the state of the art and unpredictability within the art is such that even the most talented artisan could not reasonably predict which of the hundreds of millions of carbonates encompassed by the claims could be prepared based on the limited disclosure of one carbonate compound. Applicants have failed to provide sufficient guidance or data or evidence as to how the skilled artisan would be able to extrapolate from the disclosure to use the claimed invention. That is, the only way one skilled in the art is enabled to practice the entire scope of the claim based on the instant disclosure entails undue experimentation.
34. To overcome this rejection, Applicant should narrow the scope of the claims such that they bear a reasonable correlation with the disclosure.
Claim Rejections - 35 USC § 103
35. 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.
36. 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.
37. 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.
38. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al., Ind Eng Chem Res (2011), in view of Sanchez et al., Fuel Processing Technology 131 (2015), and further in view of Zhou et al., Department of Chemical Engineering and Applied Chemistry University of Toronto (2006), (Keller et al. and Zhou et al. references are cited on Applicant’s IDS of May 21, 2024).
Claim 1 is drawn to a method for producing a carbonate, comprising:
(i) a reaction step of reacting raw materials containing dimethyl carbonate and ethanol in the presence of a catalyst (more specifically, sodium ethoxide (claim 8)), to produce a product containing ethyl methyl carbonate and diethyl carbonate;
(ii) a catalyst neutralization step of adding a catalyst remover to the product to produce a neutralizing salt of the catalyst and the catalyst remover; and
(iii) a neutralizing salt removal step of removing the neutralizing salt,
wherein the catalyst remover has a pKa value of 2.0 or less.
In view of a broadest reasonable interpretation of claim 1, for purposes of applying prior art, the term “raw materials” is construed to mean: dimethyl carbonate and ethanol (see paragraph “7” above).
Claim 2 is drawn to claim 1, wherein the catalyst remover is linear dicarboxylic acid, (more specifically, oxalic acid (claim 3)).
39. Keller et al. teach a process of preparing ethyl methyl carbonate (EMC) and diethyl carbonate (DEC) comprising:
(i) the transesterification of dimethyl carbonate (DMC) with ethanol, in the presence of a sodium ethoxide catalyst (see abstract and Schemes 1-3 at page 11074). (ii) Keller et al. go on to teach the deactivation of the catalyst sodium ethoxide in the presence of water, wherein water hydrolyzes the carbonates to carbonic acid, which reacts with sodium ethoxide to form sodium hydrogen carbonate and, in a second step, sodium carbonate (see Scheme 4 at page 11081). The formation of sodium carbonate(s) (i.e., a neutralizing salt) leads to a depletion of sodium ethoxide, rendering it no longer available as a catalyst (page 11081, left column, last two paragraphs- right column, first paragraph). One skilled in the art would know that by neutralizing the catalyst, trace catalytic metals left over in the reaction mixture are extracted and removed from the final product, i.e., resulting in improved selectivity and yield of the final products ethyl methyl carbonate (EMC) and diethyl carbonate (DEC).
40. Keller et al. do not teach the catalyst sodium methoxide.
41. Yet, Sanchez et al. teach that sodium ethoxide and sodium methoxide are alkaline catalysts in organic synthesis, and specifically teach their use in transesterification reactions (see abstract). Sanchez et al. demonstrate wherein sodium methoxide catalyst is preferred: “[i]t was concluded that the methanolysis reactions are faster than the ethanolysis and sodium methoxide catalyst is more active than the corresponding ethoxide.” (Page 33, Figure 6, and Page 34, right column, last paragraph). Thus one skilled in the art before the effective filing date of the claimed invention, would have been motivated to substitute the basic catalyst sodium methoxide for sodium ethoxide in the neutralization reaction taught by Zhou et al., with a reasonable expectation of success.
42. Keller et al. do not teach the catalyst remover, oxalic acid.
43. However, Zhou et al. teach the advantage of employing oxalic acid to quench a solution comprising the strong base catalyst sodium methoxide, wherein the oxalic acid immediately neutralized said catalyst. Zhou et al. go on to teach that the resulting sample was washed with NaCl solution to remove the residual oxalic acid (page 105, section 7.2.2 and section 7.2.3).
44. Therefore, in view of the combined art of the record, one of skill in the art before the effective filing date of the claimed invention would have been motivated to employ the catalyst remover oxalic acid rather than water in an improved step of scavenging the sodium ethoxide catalyst used in the transesterification reaction of dimethyl carbonate (DMC) with ethanol, followed by a neutralizing salt removal step, with a reasonable expectation of success.
As such, claims 1, 2, 3, and 8 are prima facie obvious.
Claim 4 is drawn to claim 1, wherein the reaction step includes reacting raw materials with the moisture content in the range of 20 ppm to 500 ppm.
In view of a broadest reasonable interpretation of claim 1, for purposes of applying prior art, claim 4 is construed to mean “wherein in the reaction step, the raw materials have a moisture content of from 20 ppm to 500 ppm.”
45. However, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). That is, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
46. In the instant case, the moisture content of the same starting materials taught by Keller et al. (dimethyl carbonate and ethanol) in the same process of preparing ethyl methyl carbonate and diethyl carbonate as the first step of claim 1, is inherent to said materials and does not render the known process unobvious. Thus one of skill in the art before the effective filing date of the claimed invention would have been motivated to employ the raw materials (dimethyl carbonate and ethanol) having a moisture content of from 20 ppm to 500 ppm, with a reasonable expectation of success.
As such, claim 4 is prima facie obvious.
Claim 5 is drawn to claim 1, wherein in the reaction step, the catalyst is used in the range of 0.02 wt% to 0.2 wt% based on the weight of the dimethyl carbonate.
47. Keller et al. additionally teach that the initial molar ratio between ethanol and dimethyl carbonate is 2.0 or 3.0, and the catalyst molar fraction is between 4 x 10-4 mol/mol and 2 x 10-3 mol/mol, (i.e., from 0.0004 to 0.002 mole per mole of dimethyl carbonate), (page 11077, left column, last paragraph). Thus, it would have been obvious to one of skill in the art before the effective filing date of the claimed invention to use the starting point of catalyst of from 0.0004 to 0.002 mole/mole of dimethyl carbonate and optimize said amount, with a reasonable expectation of success. And, discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980),
As such, claim 5 is prima facie obvious.
Claim 6 is drawn to claim 1, wherein the catalyst neutralization step includes adding the catalyst remover so that the pH of the product to which the catalyst remover is added is in the range of 5 to 8.
48. Claim 6 is drafted in terms of a desired outcome of the addition of the catalyst remover in the second step: i.e., wherein the catalyst remover is added “so that the pH of the product to which the catalyst remover is added is in the range of 5 to 8.” However, a claimed composition maybe obvious because it was suggested by, or structurally similar to, a prior art composition even though a particular benefit of the claimed composition is not expressly disclosed in the prior art. It is the differences in fact in their respective properties which are determinative of nonobviousness. If the prior art composition does in fact possess a particular benefit, even though the benefit is not recognized in the prior art, Applicant's recognition of the benefit is not in itself sufficient to distinguish the claimed composition from the prior art, In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991). In this case, the resulting “pH of the product… in the range of 5 to 8” is considered a latent property of the addition of the catalyst remover disclosed by Zhou et al. and the desired outcome of a pH level in the range of 5 to 8 does not confer patentability. As such, nothing unobvious is seen in one skilled in the art adding the catalyst remover in the catalyst neutralization step “so that the pH of the product… is in the range of 5 to 8,” with a reasonable expectation of success.
49. Thus, claim 6 is prima facie obvious.
Claim 7 is drawn to claim 1, wherein the catalyst neutralization step includes adding the catalyst remover in the range of 0.7 to 1 times greater than the weight of the catalyst.
50. Zhou et al. additionally teach that the catalyst, sodium methoxide solution, is employed at 25 wt%, 2.6 mL, (wherein a standard 25 wt% sodium methoxide solution has a density of around 0.97 g/mL), which is a mass of 2.522 g sodium methoxide solution (2.6 mL x 0.97 g/mL = 2.522 g total solution). Zhou et al. teach that the catalyst is quenched by the addition of 0.12 g oxalic acid (i.e., the catalyst remover). While 0.12 g of oxalic acid does not meet the limitation of 0.7 to 1 time greater than the weight of the sodium methoxide catalyst, since the recited process is a well-known process, optimization of variables of said process such as weight percentages, purity, etc. would be obvious to one skilled in the art. Changing the weight, purity or other characteristic of an old process does not render the newer claimed form patentable where the difference in weight, purity or characteristic was inherent, please see In re Cofer (CCPA 1966) 354 F2d 664, 148 USPA 268.
51. Therefore one skilled in the art before the effective filing date of the claimed invention would have been motivated to use the starting point of 0.12 g catalyst remover in the catalyst neutralization step and optimize said amount, with a reasonable expectation of success.
Conclusion
52. Claims 1-8 are pending in the application, and all claims are rejected. No claim is presently allowed.
51. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANET L COPPINS whose telephone number is (571)272-0680. The examiner can normally be reached Monday-Friday 8:30AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L Clark can be reached at 571-272-1310. 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.
/JANET L COPPINS/Examiner, Art Unit 1628
/AMY L CLARK/Supervisory Patent Examiner, Art Unit 1628
Prosecution Insights