DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-9, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112341414 (CN’414).
The instant claims are drawn to a method for preparing a furan dicarboxylic acid compound, comprising preparing a hydroxyl furfural compound from a hydroxyl-free furfural compound, and oxidizing the hydroxy furfural compound in the presence of a heterogeneous catalyst to produce a furan dicarboxylic acid.
The CN’414 reference discloses a process, wherein 5-chloromethyfurfural, in a mixture of deionized water and calcium carbonate, is heated to 80°C, and stirred at 500 rpm for 15 minutes, thereby producing a crude product containing 5-hydroxymethylfurfural, HMF. The crude HMF is added to a reactor comprising sodium bicarbonate and a water/1,4-dioxane mixture, followed by the addition of a Ru/Al2O3 catalyst, and stirring at 600 rpm. The reactor is sealed and 40 bar oxygen is introduced at a temperature of 140°C. The resulting product is 2,5-furan-dicarboxylic acid (example 1; examples 10-19). This process, and the 2,5-furan-dicarboxylic acid made, anticipate the instant claims.
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.
Claim(s) 4 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 112341414 (CN’414).
The instant claims further limit the process of the present invention, such that a solvent is added to the hydroxy furfural compound followed by filtration to remove humin; and to a method for preparing a polyester by subjecting the furan dicarboxylic acid compound of claim 15 and a diol to an esterification reaction and then a polymerization reaction; the claims are also to a polyester made by said process.
Regarding the use of a solvent, and filtration to remove humin, the CN’414 reference adds sodium dithionite in order to inhibit the formation of humic substances; however, the reference has a general teaching that by-products like humic substances may be separated by vacuum distillation and other methods (page 1). Therefore, it would have been obvious to a person having ordinary skill in the art to remove humic substances, which are known to cause catalyst deactivation, by any technique known in the art, which includes distillation and filtration.
The CN’414 reference does not expressly teach a process for producing a polyester; however, the reference teaches that 2,5-furandicarboxylic acid has a chemical structure and physical properties similar to petroleum-based terephthalic acid, especially its polyester product with ethylene glycol. The reference further teaches that polyethylene furan dicarboxylate shows better performance than polyethylene terephthalate. Therefore, it would have been obvious to a person having ordinary skill in the art to substitute 2,5-furandicarboxylic acid for terephthalic acid, in a process for making a corresponding polyester upon reaction with ethylene glycol (esterification) and subsequent polymerization, since the ‘CN414 reference teaches that the furan dicarboxylic acid-based polymer is a more ideal biological species as an alternative to petroleum-based terephthalic acid.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/292,406 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the dicarboxylic acid composition prepared according to claim 14 of the reference application comprises a species that is would anticipate the furan dicarboxylic acid of the present claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/246,068 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the 2,5-furandicarboxylic acid recited in the method of claim 15 of the reference application would anticipate the furan dicarboxylic acid recited by the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
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