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 filed on 07/05/2024 is a 35 U.S.C. § 371 National Stage Application of International Application No. PCT/EP2022/087021, filed December 20, 2022, which claims benefit of European Application No. 22150571.2, filed January 7, 2022.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 07/24/2024 and 08/13/2024, complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits, except where noted.
Status of Claims
The preliminary amendment filed on 07/05/2024 that cancelled claims 1-16 and added claims 17-32, has been acknowledged.
Claims 17-32 are pending.
Rejections 35 U.S.C. 112(b)
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.
Claims 17-32 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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000).
Claim 17 recites:
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The instant specification does not define the “mixture N”. The term “mixture N” is referenced in the instant specification without an actual definition or description, including:
Preferably, the DIOPAT-containing aqueous mixture N has a pH of 6 to 14, … [pp. 7]; … the above- outlined subsequent acidification generally provides an aqueous Al-salts-containing phase, whereas DIOPAT is precipitated as a solid, which may be filtered and neutralized to the desired pH, Hence, it may be one option to provide the aqueous mixture N via the afore-mentioned route … [page 7];
Alternatively, the DIOPAT-containing aqueous mixture N may be provided via a preceding Filtration … [page 8];
In this connection the DIOPAT-containing aqueous mixture N may be provided via the preceding filtration step i) comprising a process for isolating 2,4-bis-(2,4-dihydroxyphenyl)-6-(4- methoxyphenyl)-1,3,5-triazine (DIOPAT) from an aqueous alkaline mixture M … [pp. 8]; Further, the DIOPAT-containing aqueous mixture N may be provided via the preceding nanofiltration step ii) comprising process for isolating 2,4-bis-(2,4-dihydroxyphenyl)-6-(4- methoxyphenyl)-1,3,5-triazine (DIOPAT) from an aqueous alkaline mixture M having a pH of 10 or more … [pp. 8]; the aqueous mixture N from step a) has a solid content of 0 to less than 10 wt.-%, … based on the total weight of the aqueous mixture N. It is particularly preferred that said aqueous mixture N from step a) is provided by a preceding filtration step, … said aqueous mixture N from step a) is provided by a preceding filtration step i) as above described. In another particular embodiment, said aqueous mixture N from step a) is provided by a preceding nanofiltration step ii) as above described. [page 9].
The description of the term “mixture N” above does not define the term and does not provide answers to one of ordinary skill in the art questions, for example, what is “mixture N”, what does mixture N contain”, what are the characteristics of “mixture N”, etc.
The specification, however, defines “mixture M”:
As used herein, the term "aqueous alkaline mixture M" refers to a mixture comprising components (i), (ii), and (iii) as defined herein, which is typically obtained after quenching the Friedel-Crafts reaction mixture to prepare DIOPAT, i.e. component (i), with an aqueous sodium hydroxide solution and removing the organic phase. The pH of the aqueous alkaline mixture M is 10 or more, … the amount of Al-salts will typically be in the range of from 1 to 20 % by weight of the aqueous alkaline mixture M, and the amount of 2,4-DHBP will typically be in the range of from 0.5 to 5 % by weight, …. On the other hand, the amount of DIOPAT will typically be in the range of from 6 to 20 % by weight, preferably from 7 to 14 % by weight, based on the total weight of the aqueous alkaline mixture M. [pp. 4], … an aqueous alkaline mixture M comprising:
(i) the 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1,3,5-triazine;
(ii) 2,4-dihydroxybenzophenone; and
(iii) aluminum salts;
While mixture M is well defined in the instant specification as a mixture of (i) the 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1,3,5-triazine, (ii) 2,4-dihydroxybenzophenone, and (iii) aluminum salts, the claim does not recite “mixture M”. It’s not clear if Applicant erroneously recites N instead of M, or Applicant is claiming a completely different mixture. Without knowing the identity of “mixture N”, one of ordinary skill in the art would not be able to apprise the scope of the claim.
Claim 17 also recites “suspension S1”. The instant specification recites “wherein the process comprises the steps of concentrating the aqueous mixture N to obtain a DIOPAT-containing aqueous suspension S1 having a certain solid content. [pp. 1]. Instant specification further recites “as used herein, the term "suspension" denotes a heterogeneous mixture comprising a solvent and a precipitate. The term "solvent" in this context encompasses any type of solvent present in the aqueous suspension S1, in particular also water. It appears that “suspension S1” is a concentration suspension of mixture N”. Thus, suspension S1 is also indefinite since skilled artisan would not be able to identify “mixture N”.
A claim limitation which is considered indefinite cannot be disregarded. MPEP § 2143.03(I). If a claim is subject to more than one interpretation, at least one of which would render the claim unpatentable over the prior art, the examiner should reject the claim as indefinite under 35 U.S.C. 112(b) and should reject the claim over the prior art based on the interpretation of the claim that renders the prior art applicable. MPEP § 2143.03(I) (citing Ex parte Ionescu, 222 USPQ 537 (Bd. Pat. App. & Inter. 1984)). Thus, in view of compact prosecution, for the purpose of applying prior art, the term “mixture N” is interpreted to be a mixture of (i) the 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1,3,5-triazine (DIOPAT), (ii) 2,4-dihydroxybenzophenone, and (iii) aluminum salts in a solvent.
Dependent claims 18-32 are indefinite due to their dependence on a rejected claim and lacking any limitations that cure the ambiguities resulting from the parent claim(s).
Claim 25 recites “… containing aqueous suspension S2 having a solid content of 10 to 90 wt.-% based on the total weight of the aqueous suspension S2.” Claim 25 is rejected for the lack of antecedent basis because independent claim 17 does not recite suspension S2.
Claims 21, 22, 27 and 31 are rejected as being indefinite for reciting “preferably”. Claim 21 recites “… preferably wherein the discharge flow in step a) is controlled by the concentration of solids …”. Claim 22 recites “… preferably made of polyvinylidene fluoride (PVDF), …”, claim 27 recites “…, preferably a slow rotating linear dryer.”, and claim 31 recites “… preferably by a preceding ultrafiltration step or nanofiltration step.”. As provided in MEMP 2173.05(d), “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth. Note that the mere use of the phrase "such as" or "for example" in a claim does not by itself render the claim indefinite.
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 (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 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.
§ 103 Rejection over Malisz
Claims 17-22, 26 and 28-32 are rejected under 35 U.S.C. 103 as being obvious over J. Malisz et al. (WO 2020/016366, 01/23/2020, “Malisz” cited in the IDS dated 07/24/2024).
Joint Inventorship
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.
Malisz teaches a process for isolating 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1 ,3,5-triazine (DIOPAT) from an aqueous alkaline mixture M comprising (i) the 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1 ,3,5-triazine; (ii) 2,4-dihydroxybenzophenone; and (iii) aluminum salts; wherein the process comprises the steps of:
a) precipitating the 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1 ,3,5-triazine by acidifying the mixture M to a pH < 1; b) heating the acidified mixture M to a temperature in the range of from 80 °C to 95 °C; c) separating the precipitated 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1 ,3,5- triazine from the dissolved 2,4-dihydroxybenzophenone and the dissolved aluminum salts with a ceramic membrane by means of diafiltration with water, wherein the separation step c) provides the precipitated 2,4-bis-(2,4-dihydroxyphenyl)-6-(4- methoxyphenyl)-1 ,3,5-triazine in the form of an aqueous suspension in the retentate, and the dissolved 2,4-dihydroxybenzophenone and the dissolved aluminum salts in the form of an aqueous solution in the permeate [page 3, line 5-22]; wherein the process further comprise neutralizing and concentrating the obtained aqueous suspension comprising DIOPAT of the retentate to obtain a pH of 9 [page 11, ln. 20-22]; wherein the suspension simultaneously be concentrated while neutralizing [page 11, line 27-29]; wherein, the concentrating results in an increase of the solid content in the aqueous suspension from about 2% to about 25 % based on the total weight of the DIOPAT suspension [page 12, line 11-15];
continuous washing of the suspension in the retentate with water, and removing of the permeate (the dissolved component including the solvents), and concentrating the neutralized aqueous suspension obtained [page 12, line 37- page 13, line 2]; and
drying the concentrate obtained [page 13, line 3], wherein drying may be performed by any method known in the art such as spray drying, evaporation, air drying, under vacuum, filtration, centrifugation, freeze drying, or mixtures thereof, wherein the amount of DIOPAT in the dried DIOPAT mass is at least about 80 wt.%, particularly at least about 87 wt.%, based on the total weight of the dried DIOPAT mass [page 12, line 23-35].
Malisz teaches that in Example “the aqueous suspension was neutralized by 1.3 g NaOH (50% w/v). The neutralized retentate was concentrated by means of a Dyno Filter from Bokela to obtain 685.8 g of DIOPAT suspension, comprising 96.0 g (14 %) DIOPAT. After spray drying, 106.9 g spray dried DIOPAT mass, comprising 96.0 g (87.2 %) DIOPAT, [page 14, line36- page 15, line 4].
Malisz’s disclosure renders instant claim 17 obvious for the following reasons:
Malisz teaches the steps of concentrating the aqueous mixture N as interpreted above, removing the solvent to concentrate the suspension (evaporating the solvent, i.e., water), and drying the obtain solid;
The amount of DIOPAT solid obtained of more than 87% reads on claim 17 solid content of more than 90 wt.% because Malisz teaches that the term "about" indicates a deviation from the indicated numerical value of ±20 %, preferably ±15 %, more preferably ±10 %. The amount of 87% calculates to 95.7% (87 x +10% = 95.7%); and
The solid content of 3-30 wt.% is met because Malisz teaches “wherein, the concentrating results in an increase of the solid content in the aqueous suspension from about 2% to about 25 % based on the total weight of the DIOPAT suspension”, and MPEP 2144.05.II.A explains: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).” Furthermore, Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and Selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP 2144.04 IV C.
Therefore, instant claims 17, 18 are prima facie obvious over Malisz.
With regard to claim 19, Malisz teaches that “the preferably neutralizing the aqueous suspension of the retentate to obtain a pH of from 5 to 9.” [page 11, line 28-29]. The pH of the aqueous alkaline mixture M is preferably in a range of from 10 to 15, more preferably from 12 to 14. [page 4, line 12-13]. The pH of values of Malisz overlapped with claim 19 pH value of 6-14. As provided in the MPEP 2144.05, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Moreover, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
With regard to claims 20, 21, and 22, Malisz teaches that separating the precipitated 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1 ,3,5- triazine from the dissolved 2,4-dihydroxybenzophenone and the dissolved aluminum salts with a ceramic membrane by means of diafiltration with water. [page 16, line 12-14]. Malisz also teaches concentrating by filtration, any known filter may be used, such as a Dyno Filter (Bokela), [page 12, line 5], wherein the retentate flows, while the permeate stream exits the tubular ceramic membrane laterally through the ceramic membrane. [page 8, line 6-7]. The ceramic membrane according to the present invention may have a pore size in the range of from 10 to 800 nm, preferably from 20 to 500 nm, more preferably from 30 to 400 nm, even more preferably from 40 to 200 nm, and especially preferably from 50 to 100 nm. [page 8, line 28-30].
With regard to claims 26, 29, Malisz teaches that the process was performed under temperature range of from 80°C to 95°C. [page 3, line 18]. MPEP 2144.05.II.A explains: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
With regard to claim 28, Malisz teaches drying the concentrate obtained, wherein drying may be performed by any method known in the art such as spray drying, evaporation, air drying, under vacuum, filtration, centrifugation, freeze drying, or mixtures thereof, preferably spray drying, wherein suitable spray drier are jet or disc spray dryer, [page 12, line 23-25].
With regard to claim 30, Malisz teaches that the process performed as a continuous process, [page 5, line 10].
With regard to claim 31, Malisz teaches that the concentrating results in an increase of the solid content in the aqueous suspension from about 2 % to about 8. A solid content of 2% reads on solid content of 0-10 wt.%.
Claim 32 is met for the following reasons: Malisz teaches A process for isolating DIOPAT from a DIOPAT- containing aqueous mixture N comprising the steps of a) concentrating the aqueous mixture N to obtain a DIOPAT aqueous suspension S1 having a solid content of 3 to 30 wt.-%, based on the total weight of the aqueous suspension S1;b) evaporating solvent from the aqueous suspension S1; and c) drying the DIOPAT to obtain a solid content of more than 90 wt.%, based on the total weight of the DIOPAT. Malisz is silent on the bulk density of the obtained DIOPAT but otherwise teaches a substantially identical process as claimed. As such, it is reasonable to presume that the resulting bulk density of DIOPAT is inherently 0.40-1.20 g/mL. The burden is on Applicant(s) to show that this property is different from those taught by the prior art and to establish patentable differences. See MPEP 2112.
§ 103 Rejection over Malisz in view of Rathoure
Claims 23-24 and 27 are rejected under 35 U.S.C. 103 as being obvious over J. Malisz et al. (WO 2020016366, 01/23/2020, “Malisz” cited in the IDS dated 07/24/2024) as applied above to claims 17-22, 26 and 29-32, in view of A. Rathoure, et al. (International Journal of Environmental Chemistry. 2019; 5(2): 11–29p, “Rathoure” cited in the PTO-892).
The disclosures set forth above in the 103 rejection over the same Malisz et al. reference are herein incorporated by reference.
Malisz, while teaching drying the concentrate obtained, wherein drying may be performed by any method known in the art such as spray drying, evaporation, air drying, under vacuum, filtration, centrifugation, freeze drying, or mixtures thereof, preferably spray drying, wherein suitable spray drier are jet or disc spray drier, [page 12, line 23-25], does not teach the drying is conducted by an agitated contact dryer, thin film evaporator, or slow rotating linear dryer.
However, Rathoure teaches the importance of unit operation in chemical industries including evaporation and drying. [Abstract, whole document]. Rathoure teaches Agitated thin film evaporator as one of the important operation in chemistry, pharmaceutical and food science, which involves a vertical steam-jacketed cylinder, with main advantage is that rotating blades permits handling of extremely viscous solutions. [page 16, col. 2, 3rd para.]. Rathoure teaches agitated contact dryer, Agitated nutsche filter, as one of the important operator for separate solid and liquid by filtration under pressure or vacuum. [page 17, col. 1 last para. - col. 2]. Rathoure teaches rotary vacuum filter drum which consists of a drum rotating in a tube of liquid to be filtered. “Rotary vacuum drum filters are certainly used the best part of solid liquid separation process. The removal of solid particles from the fluid by passing fluid through the filtering medium on which solids are deposited is said to be filters. [page 18, last para. - col. 1, 1st para.].
In view of Rathoure, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to utilize Rathoure unit operation for Malisz’s concentrating, evaporating and drying steps. One of ordinary skill in the art would have been motivate to do so with reasonable expectation of success because Malisz teaches that the concentration and drying process performed by any method known in the art, and Rathoure teaches the important unit operation known in the art. Rathoure teaches agitated thin film evaporator as one of the important unit operation in chemistry with ability to handle extremely viscous solutions, agitated contact dryer, Agitated nutsche filter, as one of the important operator for separate solid and liquid by filtration under pressure or vacuum; and rotary vacuum filter drum as a best method of separating solid from liquid. Thus, the combination of Malisz and Rathoure’s agitated thin film evaporator meet the limitations of claims 23 and 24, agitated contact dryer, and Agitated nutsche filter meet the limitations of claim 27.
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.
Double Patenting Rejection over US Patent No. 12,304,891 B2
Claims 17-22, 26 and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of US Patent No. 12,304,891 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 17-32 recite “a process for isolating 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1,3,5- triazine (DIOPAT) from a DIOPAT containing aqueous mixture N comprising the steps of a) concentrating the aqueous mixture N to obtain a DIOPAT-containing aqueous suspension S1 having a solid content of 3 to 30 wt.-%, based on the total weight of the aqueous suspension S1; b) evaporating solvent from the aqueous suspension S1 by means of an agitated contact dryer; and c) drying the DIOPAT to obtain a solid content of more than 90 wt.-%; wherein the term "solvent" in this context encompasses any type of solvent present in the aqueous suspension S1, including water, wherein the aqueous mixture N has a pH 6 to 14, wherein concentrating in step a) is conducted by means of filtration, wherein concentrating in step a) is conducted by means of dynamic crossflow filtration, wherein the aqueous mixture N is concentrated in step a) by means of dynamic crossflow filtration comprising a membrane, wherein the membrane has a pore size from 0.01 to 50 pm and/or the membrane material is selected from the group consisting of ceramic materials; and metal sieves, wherein concentrating in step a) is conducted by means of an agitated contact dryer, a thin film evaporator, step c) is dried by means of an agitated contact dryer or disc dryer, wherein the temperature in step c) is from 70-120, wherein the process is a continuous process, wherein the solid content is 0 to less than 10 wt.-%, based on the total weight of the aqueous mixture N , wherein DIOPAT having a bulk density determined by DIN ISO 697:1984 of 0.40 to 1.20 g/mL.
US Patent No. 12,304,891 B2 recites in claims 1-17, “a process for isolating 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1,3,5-triazine (DIOPAT) from an aqueous alkaline mixture M comprising (i) the DIOPAT (ii) 2,4-dihydroxybenzophenone; and (iii) aluminum salts; wherein the process comprises the steps of a) precipitating the DIOPAT by acidifying the mixture M to a pH<1; b) heating the acidified mixture M to a temperature in the range of from 80° C. to 95° C.; c) separating the precipitated DIOPAT from the dissolved 2,4-dihydroxybenzophenone and the dissolved aluminum salts with a ceramic membrane by means of diafiltration with water, wherein the separation step c) provides the precipitated DIOPAT in the form of an aqueous suspension in the retentate, and the dissolved 2,4-dihydroxybenzophenone and the dissolved aluminum salts in the form of an aqueous solution in the permeate, wherein the ceramic membrane has a pore size in the range of from 20 to 500 nm, wherein the separation step c) involves continuous washing of the suspension in the retentate with water, and removing of the permeate, wherein the process further comprises the step of d) neutralizing the aqueous suspension of the retentate obtained in step c) to obtain a pH of from 6 to 8, and optionally simultaneously concentrating the aqueous suspension, wherein neutralizing in step d) is performed with sodium hydroxide or sodium carbonate, wherein the process further comprises the step of e) concentrating the neutralized aqueous suspension obtained in step d) by filtration, optionally after washing the neutralized aqueous suspension with water, wherein the process further comprises the step of f) drying the concentrate obtained in step e).
US Patent No. 12,304,891 B2 steps a)- e) include preparing the mixture of DIOPAT suspension, neutralize the aqueous suspension with NaOH, concentrate the suspension and removing solvent, and step f includes drying the concentrate. Thus, steps a-e reads on claim 1 steps of a-c, and the water in the aqueous suspension reads on the term solvent.
Respecting the amount of solid content of DIOPAT-containing suspension of 3-30 wt.% and the amount of DIOPAT obtained of more than 90 wt.%, while reliance on specification of a potentially conflicting patent or application is generally prohibited, limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. "[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent" (MPEP § 804). The MPEP further notes: The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because only "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.") Dependent claims also overlap. For example, compare instant claim 17 with the claims 1-17 steps a-f, further in the context of disclosure at column 14 of US Patent No. 12304891B2. See explanation of the obviousness rationale above, page 8-9.
Claims 23-24 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of US Patent No. 12,304,891 B2 as applied above to claims 17-22, 26 and 29-32 in view of A. Rathoure, et al. International Journal of Environmental Chemistry. 2019; 5(2): 11–29p, “Rathoure” cited in the PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
US Patent No. 12,304,891 B2 recites drying the concentrate obtained, wherein drying may be performed by any method known in the art such as spray drying, evaporation, air drying, under vacuum, filtration, centrifugation, freeze drying, or mixtures thereof, does not teach the drying is conducted by an agitated contact dryer, thin film evaporator; slow rotating linear dryer; or a disc dryer.
Rathoure teaches as discussed above, page 11-12.
The obviousness rationale is same as the obviousness rationale of the 103 rejection above, page 12.
Double Patenting Rejection over US Patent No. 11,904,279 B2
Claims 17-22, 26, and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US Patent No. 11,904,279 B2 in view of J. Malisz et al. (WO 2020/016366, 01/23/2020, “Malisz” cited in the IDS dated 07/24/2024). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 17-32 recite “a process for isolating 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1,3,5- triazine (DIOPAT) from a DIOPAT containing aqueous mixture N comprising the steps of a) concentrating the aqueous mixture N to obtain a DIOPAT-containing aqueous suspension S1 having a solid content of 3 to 30 wt.-%, based on the total weight of the aqueous suspension S1; b) evaporating solvent from the aqueous suspension S1 by means of an agitated contact dryer; and c) drying the DIOPAT to obtain a solid content of more than 90 wt.-%; wherein the term "solvent" in this context encompasses any type of solvent present in the aqueous suspension S1, including water, wherein the aqueous mixture N has a pH 6 to 14, wherein concentrating in step a) is conducted by means of filtration, wherein concentrating in step a) is conducted by means of dynamic crossflow filtration, wherein the aqueous mixture N is concentrated in step a) by means of dynamic crossflow filtration comprising a membrane, wherein the membrane has a pore size from 0.01 to 50 pm and/or the membrane material is selected from the group consisting of ceramic materials; and metal sieves, wherein concentrating in step a) is conducted by means of an agitated contact dryer, a thin film evaporator, step c) is dried by means of an agitated contact dryer or disc dryer, wherein the temperature in step c) is from 70-120, wherein the process is a continuous process, wherein the solid content is 0 to less than 10 wt.-%, based on the total weight of the aqueous mixture N , wherein DIOPAT having a bulk density determined by DIN ISO 697:1984 of 0.40 to 1.20 g/mL.
US Patent No. 11,904,279 B2 recites in claims 1-19 “a process for isolating 2,4-bis-(2,4-dihydroxyphenyl)-6-(4-methoxyphenyl)-1,3,5-triazine (DIOPAT) from an aqueous alkaline mixture M having a pH of 10 or more and comprising (i) the DIOPAT; (ii) 2,4-dihydroxybenzophenone; (iii) aluminum salts; wherein the process comprises the steps of a) separating the DIOPAT from the aluminum salts and the 2,4-dihydroxybenzophenone by nanofiltration of the alkaline mixture M, wherein the DIOPAT is obtained in the form of an alkaline aqueous solution S as the retentate; b) precipitating the DIOPAT by modifying the pH of the aqueous solution S to a value of 9.5 or lower; c) separating the precipitated DIOPAT from the aqueous solution S by filtration, wherein the DIOPAT is obtained in the form of an aqueous suspension SP as the retentate, wherein the nanofiltration step a) is performed with a polymer-based nanofiltration membrane, wherein the nanofiltration step a) involves washing of the retentate with water, wherein the precipitation step b) is performed by modifying the pH of the aqueous solution S to a value of 8 or lower, wherein the filtration step c) is performed with a membrane having a pore size in the range of from 20 to 500 nm, wherein the filtration step c) is performed at a pressure of from 1 to 6 bar, and at a temperature in the range of from 20 to 95° C, wherein the filtration step c) provides the aqueous suspension SP with a dry content of DIOPAT in the range of from 2 to 10% by weight based on the total weight of the aqueous suspension SP, wherein the process further comprises the step of d) concentrating the aqueous suspension SP obtained in step c) by filtration, wherein the process further comprises the step of e) drying the concentrate obtained in step d).
US Patent No. 11,904,279 B2 steps a)- d) include preparing the mixture of DIOPAT suspension, neutralize the aqueous suspension with NaOH, concentrate the suspension and removing solvent, and step e includes drying the concentrate. Thus, steps a-e reads on claim 1 steps of a-c, and the water of the aqueous solution in the suspension reads on the term solvent.
US Patent No. 11,904,279 B2 does not recite the amount of solid content of DIOPAT-containing suspension of 3-30 wt.% and the amount of DIOPAT obtained of more than 90 wt.%.
The disclosures set forth above in the 103 rejection over the same Malisz et al. reference are herein incorporated by reference.
The obviousness rationale is similar to the obviousness rationale of the 103 rejection above, page 8-9.
Claims 23-24 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US Patent No. 11,904,279 B2in view of J. Malisz et al. (WO 2020/016366, 01/23/2020, “Malisz” cited in the IDS dated 07/24/2024) as applied above to claims 17-22, 26 and 29-32, further in view of A. Rathoure, et al. International Journal of Environmental Chemistry. 2019; 5(2): 11–29p, “Rathoure” cited in the PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
US Patent No. 11,904,279 B2 in view of Malisz teaches drying the concentrate obtained, wherein drying may be performed by any method known in the art such as spray drying, evaporation, air drying, under vacuum, filtration, centrifugation, freeze drying, or mixtures thereof, does not teach the drying is conducted by an agitated contact dryer, thin film evaporator; slow rotating linear dryer; or a disc dryer.
Rathoure teaches as discussed above, page 11-12.
The obviousness rationale is same as the obviousness rationale of the 103 rejection above, page 12.
Conclusion
Claims 17-32 are rejected. No claim is allowed.
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/M.M.A./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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