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 .
This is in response to the Amendment dated July 13, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 2 (method), 6 (species) and 16 (method) drawn to an invention nonelected with traverse in the reply filed on January 14, 2026.
Claim Objections
Claims 3 and 9-10 have been objected to because of minor informalities.
The objection of claims 3 and 9-10 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 9 and 13 have been 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.
The objection of claims 9 and 13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ),
second paragraph, has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 103
I. Claim(s) 1, 3-5, 8, 10-12, 15 and 17 stand rejected under 35 U.S.C. 103 as being
unpatentable over Teamey et al. (US Patent Application Publication No. 2013/0140187 A1) in view of Ouda et al. (“Poly (Oxymethylene) Dimethyl Ether Synthesis - A Combined Chemical Equilibrium Investigation Towards an Increasingly Efficient and Potentially Sustainable Synthetic Route,” Reaction Chemistry & Engineering (2017), Vol. 2, No. 1, pp. 50-59).
Regarding claim 1, Teamey teaches a method of producing oxymethylene dimethyl ether1, comprising:
• preparing via paired electrosynthesis, paired electrosynthesis meaning that both anodic and cathodic reactions (= electrochemical reduction of carbon dioxide with co-oxidation of an alcohol) [page 1, [0004]] form one or more selected from the group consisting of oxymethylene dimethyl ether and at least one intermediate compound to formation of
oxymethylene dimethyl ether (= formaldehyde 212) [page 3, [0030]; and Fig. 2],
wherein the paired electrosynthesis comprises:
- a cathodic reaction of electrochemically reducing one or more selected from the group consisting of carbon monoxide and carbon dioxide (= electrochemical reduction of carbon
dioxide) [page 1, [0004]]; and
- an anodic reaction of electrochemically oxidising methanol (= co-oxidation of an alcohol) [page 1, [0004]; and page 3, [0030]]; and
wherein the at least one intermediate compound comprises formaldehyde (=
formaldehyde 212) [page 3, [0030]; and Fig. 2].
Teamey does not explicitly teach wherein oxymethylene dimethyl ether is prepared.
Teamey teaches that:
Electrochemical cell 102 is generally operational to reduce carbon dioxide in the first region 116 to a first product 113 recoverable from the first region 116 while producing a second product 115 recoverable from the second region 118. Cathode 122 may reduce the carbon dioxide into a first product 113 that may include one or more compounds. Examples of the first product 113 recoverable from the first region 116 by first product extractor 110 may include carbon monoxide, formic acid, formaldehyde, methanol, oxalate, oxalic acid, glyoxylic acid, glycolic acid, glyoxal, glycolaldehyde, ethylene glycol, acetic acid, acetaldehyde, ethanol, ethylene, methane, ethane, lactic acid, propanoic acid, acetone, isopropanol, 1-propanol, 1,2-propylene glycol, propane, 1-butanol, and 2-butanol (page 2, [0022]).
Ouda teaches that:
There have been a number of recent reports describing the conversion CO2 typically with H2 (e.g. via thermo- or electrochemical routes), followed by upgrading if necessary, to produce high purity “clean” fuels and platform chemicals.3–7 These products, typically oxygenates including methanol, dimethyl ether and more recently members of the poly(oxymethylene) dimethyl ether family (denoted hereon as MeOH, DME and OME respectively) are characterised by interesting intrinsic combustion properties (e.g. significantly reduced soot and particulate matter production), when employed in pure form or blended with conventional fuels.8–10 (page 50, right column, lines 7-18).
Synthetic routes to polyoxymethylene dimethyl ethers (OME) based on the synthesis of
CH3OH from recycled CO2 and sustainable H2 via aqueous or anhydrous routes are shown in Fig. 1:
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408
582
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Greyscale
(page 51).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Teamey with wherein oxymethylene dimethyl ether is prepared. The person with ordinary skill in the art
would have been motivated to make this modification because Teamey teaches that the cathode reduces carbon dioxide into formaldehyde in [0022] where formaldehyde is an intermediate compound to the formation of OME (oxymethylene dimethyl ether) as shown by Ouda in Fig. 1, which is a “clean” fuel and platform chemical as taught by Ouda on page 50, right column, lines 7-13, and which is used as a substitute for diesel as by Ouda on page 50, abstract.
Regarding claim 3, Teamey teaches electrochemically reducing carbon dioxide (= electrochemical reduction of carbon dioxide) [page 1, [0004]]; and wherein the at least one
intermediate compound further comprises formic acid (= formic acid) [page 2, [0022]].
Regarding claim 4, Teamey teaches wherein
- the paired electrosynthesis is carried out in an electrolyte (= catholyte electrolytes (page 5, [0059]); and alkaline or hydroxide electrolytes (page 6, [0065])) or
- the electrochemically reducing one or more selected from the group consisting of carbon monoxide and carbon dioxide is carried out in a catholyte (= a catholyte) [page 2, [0021]]; or
- the electrochemically oxidising methanol is carried out in an anolyte (= an anolyte) [page 2, [0021]].
Regarding claim 5, Teamey teaches wherein
- the electrolyte comprises methanol; or
- the catholyte comprises methanol; or
- the anolyte comprises methanol (= a preferred embodiment of the present disclosure is the use of a methanol feed to both the anode and the cathode) [page 3, [0030]].
Regarding claim 8, Teamey teaches that the method is performed in an electrochemical reactor (= electrochemical cell 102) [page 2, [0021]], wherein
- the one or more selected from the group consisting of carbon monoxide and carbon dioxide is electrochemically reduced in a compartment, comprising a cathode (= first region 116 may include a cathode 122) [page 2, [0021]], said cathode comprising one or more selected from the group of the groups consisting of metals, carbon-doped materials, and carbon-based
materials (page 5, [0058]); or
- the methanol is electrochemically oxidised in a compartment, comprising an anode (=
second region 118 may include an anode 124) [page 2, [0021]], said anode comprising one or
more metals (page 3, [0042]).
Regarding claim 10, Teamey does not explicitly teach wherein oxymethylene dimethyl ether is formed in one or more selected from the group consisting of the compartment comprising the anode and the compartment comprising the cathode.
The subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention because Teamey teaches formaldehyde in the first region 116 (page 2, [0022]) and formaldehyde in the second region (page 3, [0031]) where oxymethylene dimethyl ether is synthesized from formaldehyde as taught by Ouda (page 51, Fig. 1).
Regarding claim 11, Teamey does not explicitly teach wherein said compartments are
the same compartment.
Teamey teaches that electrochemical cell 102 may be implemented as a divided cell (page 2, [0021]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the said compartments taught by Teamey with wherein said compartments are the same compartment. The person with ordinary skill in the art would have been motivated to make this modification because Teamey teaches that the electrochemical cell may be implemented as a divided cell on page 2, [0021]. Hence, an
undivided cell would have been suitable to use.
The disclosure of reference must be considered for what it fairly teaches one of ordinary skill in the art, pertinence of non-preferred disclosure must be reviewed in such light. In re
Meinhardt 157 USPQ 270; and MPEP § 2123 and § 2141.02(VI).
Regarding claim 12, Teamey teaches wherein the paired electrosynthesis is carried out
at:
- atmospheric pressure or higher (= for example, the electrochemical cell may operate at higher pressures, such as pressures above atmospheric pressure) [page 4, [0053]]; or
- a temperature of 0 °C or higher (= the anolyte operating temperatures may be in the same ranges as the ranges for the catholyte, and may be in a range of 0o C. to 95o C) [page 5, [0063]].
Regarding claim 15, Ouda teaches wherein the oxymethylene dimethyl ether comprises one or more compounds represented by general formula CH3O(CH2O)nCH3, wherein “n” is an
integer of 1 or more (=
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180
162
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) [page 51, Fig. 1].
Regarding claim 17, Teamey teaches wherein
- the electrolyte comprises 10 % or less of water, based on total weight of the electrolyte; or
- the anolyte comprises 10 % or less of water, based on total weight of the anolyte; or
- the catholyte comprises 10 % or less of water, based on total weight of the catholyte (=
an aqueous solvent comprises at least 5% water. A non-aqueous solvent comprises less than 5%
water) [page 6, [0067]].
II. Claim(s) 7, 9 and 13-14 stand rejected under 35 U.S.C. 103 as being unpatentable over Teamey et al. (US Patent Application Publication No. 2013/0140187 A1) in view of Ouda et al. (“Poly (Oxymethylene) Dimethyl Ether Synthesis - A Combined Chemical Equilibrium
Investigation Towards an Increasingly Efficient and Potentially Sustainable Synthetic Route,” Reaction Chemistry & Engineering (2017), Vol. 2, No. 1, pp. 50-59) as applied to claims 1, 3-5, 8, 10-12, 15 and 17 above, and further in view of Flanders et al. (US Patent Application Publication No. 2022/0136119 A1).
Regarding claim 7, Teamey in view of Ouda teaches the method of at least claims 1, 3-5, 8, 10-12, 15 and 17 as applied above. The references do not explicitly teach wherein one or more selected from the group consisting of at least part of the carbon monoxide and at least part of the carbon dioxide originates from one or more selected from the group consisting of a pre-combustion process, a combustion process, a natural gas stream, a biogas stream, synthesis gas, water, and air.
Teamey teaches a carbon dioxide source 106 (page 2, [0020]).
Flanders teaches that:
A system may optionally include an upstream source of carbon dioxide input, connected to an input of a carbon dioxide reactor of the disclosure, including one or more of: a biogas production system; an ethanol fermentation system such as corn ethanol production system, a beer production system, a wine production system; a natural gas processing system; a cement production system; a blast furnace system, for example a steel blast furnace system, capable of producing blast furnace gas; a coke gas production system; power plant systems, such as petroleum power plant systems, natural gas power plant systems, coal power plant systems; petroleum refinery systems; ethylene production systems; ammonia production systems;
hydrogen production systems, such as water-gas shift systems; natural gas processing plants (e.g., Benfield processing); ethylene oxide production systems; aluminum smelting systems; liquified natural gas (LNG) production systems; solid feedstock gasifiers (e.g., municipal solid waste, biomass, or coal feedstocks); reformers (e.g., steam methane reformers, autothermal reformers); systems performing Boudouard reactions; direct air capture (DAC) of carbon dioxide process; atmospheres of planets or moons (e.g., the Martian atmosphere), soil of moons (e.g., the soil of the earth's moon), and/or any other system capable of producing carbon dioxide. An upstream source of carbon dioxide may be connected directly to an input of a carbon dioxide reactor of the disclosure (e.g., serves as the input, such as connected to the reduction catalyst via the cathode flow field and/or gas diffusion layer, etc.) or alternatively the upstream source may be connected to a purification system; a gas compression system; or both a purification system and a gas compression system, in either order; which then connect to an input of a carbon dioxide system of the disclosure. Multiple purification and/or gas compression systems (e.g., scrubbers, etc.) may be employed (page 4, [0070]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify at least part of the carbon monoxide and at least part of the carbon dioxide taught by Teamey with wherein one or more selected from the group consisting of at least part of the carbon monoxide and at least part of the carbon
dioxide originates from one or more selected from the group consisting of a pre-combustion process, a combustion process, a natural gas stream, a biogas stream, synthesis gas, water, and air. The person with ordinary skill in the art would have been motivated to make this modification because Teamey teaches a carbon dioxide source broadly where using a natural gas stream, a biogas stream and air would have provided a carbon dioxide source.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
Regarding claim 9, Teamey teaches:
- feeding a non-aqueous mixture (= a catholyte may comprise a non-aqueous solvent) [page 6, [0067]] comprising one or more selected from the group consisting of carbon monoxide, carbon dioxide, and methanol to the compartment (= the use of a methanol feed to the cathode) [page 3, [0030]],
- feeding a non-aqueous mixture (= a anolyte may comprise a non-aqueous solvent) [page 6, [0067]] comprising methanol to the compartment (= the use of a methanol feed to the anode) [page 3, [0030]], wherein the anode comprises platinum (= examples of catalysts may include the metal and metal oxides of transition metals and their alloys and mixtures, including those of W, Mo, V, Fe, Ru, Ir, Au, and Pt) [page 3, [0042]].
Teamey in view of Ouda teaches the method of at least claims 1, 3-5, 8, 10-12, 15 and
17 as applied above. The references do not explicitly teach the following:
a. Wherein the cathode comprises boron doped diamond (BDD).
Teamey teaches that:
The cathode may comprise a number of high surface area materials to include copper, stainless steels, carbon, and silicon, which may be further coated with a layer of material which may be a conductive metal or semiconductor. A very thin plastic screen may be incorporated against the cathode side of the membrane to prevent the membrane from touching the high surface area cathode structure. The high surface area cathode structure may be mechanically pressed against the cathode current distributor backplate, which may be composed of material that has the same surface composition as the high surface area cathode. For electrochemical reductions, the cathode electrode may be a suitable conductive electrode, such as Al, Au, Ag, Bi, C, Cd, Co,
Cr, Cu, Cu alloys (e.g., brass and bronze), Ga, Hg, In, Mo, Nb, Ni, NiCo2O4, Ni alloys (e.g., Ni 625, NiHX), Ni-Fe alloys, Pb, Pd alloys (e.g., PdAg), Pt, Pt alloys (e.g., PtRh), Rh, Sn, Sn alloys (e.g., SnAg, SnPb, SnSb), Ti, V, W, Zn, stainless steel (SS) (e.g., SS 2205, SS 304, SS 316, SS 321), austenitic steel, ferritic steel, duplex steel, martensitic steel, Nichrome (e.g., NiCr 60:16 (with
Fe)), elgiloy (e.g., Co-Ni-Cr), degenerately doped n-Si, degenerately doped n-Si:As, degenerately doped n-Si:B, degenerately doped n-Si, degenerately doped n-Si:As, and degenerately doped n-Si:B. Other conductive electrodes may be implemented to meet the criteria of a particular application. For photoelectrochemical reductions, the electrode may be a p-type semiconductor, such as p-GaAs, p-GaP, p-InN, p-InP, p-CdTe, p-GalnP2 and p-Si, or an n-type semiconductor, such as n-GaAs, n-GaP, n-InN, n-InP, n-CdTe, n-GalnP2 and n-Si. Other semiconductor electrodes may be implemented to meet the criteria of a particular application including, but not limited to, CoS, MoS2, TiB, WS2, SnS, Ag2S, CoP2, Fe3P, Mn3P2, MoP, Ni2Si, MoSi2, WSi2, CoSi2, Ti4O7, SnO2, GaAs, GaSb, Ge, and CdSe (page 5, [0058]).
Flanders teaches that:
Characteristics of the catalysts (e.g., particle size, catalyst species, etc.) can additionally or alternatively be used to affect CCP and/or H2 production. For example, larger catalyst particles can result in poor carbon dioxide transport, thereby inhibiting CCP production and reducing the CCP:H2 ratio, whereas smaller catalyst particles can favor CCP production, thereby increasing the ratio. The relative number of active sites with high turnover frequency for hydrogen evolution (“hydrogen sites”) and those with high turnover frequency for carbon dioxide reduction (“carbon dioxide sites”) can additionally or alternatively be dependent on catalyst particle size: larger catalyst particles typically have a higher ratio of hydrogen sites to carbon dioxide sites, favoring H2 production, whereas smaller catalyst particles typically have a lower ratio, favoring CO production. The catalyst type (e.g., catalyst species) can additionally or
alternatively be used to control the reactor output, such as by employing a mixture of one or more catalyst materials, wherein a first set of catalyst materials (e.g., gold) favor carbon dioxide
reduction and a second set of catalyst materials (e.g., platinum) favor water reduction. In examples, a substantially pure gold catalyst can be used to achieve high CCP:H2 ratios, a substantially pure platinum catalyst can be used to achieve low CCP:H2 ratios, and gold-platinum mixtures (e.g., alloyed particles, mixtures of gold particles and platinum particles, etc.) of varying composition can be used to achieve various intermediate ratios (e.g., more gold for higher ratios, more platinum for lower ratios). The catalyst can additionally or alternatively include V, Cr, Mn, Fe, Co, Ni, Cu, Sn, Zr, Nb, Mo, Ru, Rh, Pd, Ag, Cd, Hf, Ta, W, Re, Ir, Hg, Al, Si, In, Ga, Tl, Pb, Bi, Sb, Te, Sm, Tb, Ce, Nd, and/or combinations thereof. The catalyst can additionally or alternatively be associated with (e.g., attached to, supported by, embedded in, adjacent, in contact with, etc.) one or more support structures (e.g., support particles, support matrix, etc.), which may be conductive support structures such as carbon, boron-doped diamond, and/or fluorine-doped tin oxide. However, the catalyst can additionally or alternatively include any other suitable materials (pages 8-9, [0103]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the cathode taught by Teamey with
wherein the cathode comprises boron doped diamond (BDD). The person with ordinary skill in the art would have been motivated to make this modification because the substitution of art recognized equivalents as shown by Flanders in [0103] is within the level of ordinary skill in the art. In addition the substitution of one cathode for another is likely to be obvious when it does
nothing more than yield predictable results.
b. Combining the mixtures of said compartments into one reaction mixture, wherein the reaction mixture comprises formaldehyde and methanol.
Teamey teaches that the first product 113 recoverable from the first region 116 by first product extractor 110 may include formaldehyde and methanol (page 2, [0022]). For example, the second product may include a methanol/formaldehyde mixture (page 4, [0054]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the method taught by Teamey by combining the mixtures of said compartments into one reaction mixture. The person with ordinary skill in the art would have been motivated to make this modification because Teamey teaches that electrochemical cell may be implemented as a divided cell on page 2, [0021]. Hence, an undivided cell would have been suitable to use, and the catholyte and anolyte would have been combined.
Regarding claim 13, Ouda teaches reacting the reaction mixture to form oxymethylene dimethyl ether (= CO2 → Methanol → Formaldehyde → OME) [page 51, Fig. 1].
Regarding claim 14, Teamey teaches wherein the reaction is carried out at:
- atmospheric pressure or higher (= for example, the electrochemical cell may operate at
higher pressures, such as pressures above atmospheric pressure) [page 4, [0053]]; or
- a temperature of 0 °C or higher (= the anolyte operating temperatures may be in the same ranges as the ranges for the catholyte, and may be in a range of 0o C. to 95o C) [page 5, [0063]].
Response to Arguments
Applicant's arguments filed July 13, 2026 have been fully considered but they are not persuasive. The standing prior art rejections have been maintained for the following reasons:
• Applicant states that Claim 1 recites, as part of the body of the claim and not merely its preamble, that oxymethylene dimethyl ether or an intermediate thereof is prepared via paired electrosynthesis, meaning that both the anodic and cathodic reactions form oxymethylene dimethyl ether or such an intermediate. Claim 1 is accordingly distinguished from the preferred embodiment of Teamey, in which only the anodic reaction forms an intermediate of oxymethylene dimethyl ether (formaldehyde), while the cathodic reaction forms an unrelated product (acetic acid).
In response, all disclosures in the prior art, including non-preferred embodiments, must be considered, In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967). All disclosure in the prior art, not just specific examples, must be evaluated for what it fairly teaches those of ordinary skill in the art, In re Snow and Steinhards, 176 USPQ, 328, 329 (CCPA 1973). Non-preferred
embodiments can be indicative of obviousness, see Merck & Co. v. Biocraft Laboratories Inc. 10 USPQ2d 1843 (Fed. Cir. 1989); In re Lamberti, 192 USPQ 278 (CCPA 1976); In re Kohler, 177 USPQ 399.
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. All disclosures of the prior art, including non-preferred embodiment, must be considered. Non-preferred embodiments can be indicative of obviousness (MPEP § 2123).
Teamey teaches that the cathodic reaction produces formaldehyde (= the at least one intermediate compound) in [0022] and according to [0036],
The combined reaction of methanol with carbon dioxide to form formaldehyde and acetic acid of the embodiment of the system shown in FIG. 2 is:
4CH3OH + 2CO2 → 4 CH2O + CH3COO + H+ + 2H2O.
Thus, with methanol and carbon dioxide in the first region 116 of Teamey, the cathodic reaction forms at least one intermediate compound to formation of oxymethylene dimethyl ether (formaldehyde (CH2O)).
• Applicant states that while paragraph [0022] of Teamey discloses formaldehyde as an example of first product 113 recoverable from the first region 116, this disclosure does not concern the preparation of oxymethylene dimethyl ether.
In response, the Applicant has a different reason for, or advantage, resulting from doing what the prior art relied upon has suggested, it is noted that it is well settled that this is not demonstrative of nonobviousness. The prior art motivation or advantage may be different than
that of Applicant’s while still supporting a conclusion of obviousness (MPEP § 2144).
The fact that the Applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
• Applicant states that Teamey nowhere teaches or suggests combining formaldehyde formation at the cathode with formation of oxymethylene dimethyl ether or an intermediate thereof at the anode. The only paired embodiment Teamey actually describes, that of Figure 2, pairs anodic formaldehyde formation with cathodic acetic acid formation, not with cathodic formaldehyde formation. Teamey provides no teaching or suggestion for combining the two products it discloses only in isolation, at different locations in the reference, into a single paired system as claimed.
In response, there is no requirement that the presently claimed features be expressly articulated in one or more of the references. References are evaluated by what they collectively suggest to one versed in the art, rather than by their specific disclosures. In re Simon 174 USPQ 114 (CCPA 1972); In re Richman 165 USPQ 509, 514 (CCPA 1970).
Teamey teaches that the cathodic reaction produces formaldehyde (= the at least one intermediate compound) in [0022] and according to [0036],
The combined reaction of methanol with carbon dioxide to form formaldehyde and acetic acid of the embodiment of the system shown in FIG. 2 is:
4CH3OH + 2CO2 → 4 CH2O + CH3COO + H+ + 2H2O.
Thus, with methanol and carbon dioxide in the first region 116 of Teamey, the cathodic
reaction forms at least one intermediate compound to formation of oxymethylene dimethyl ether (formaldehyde (CH2O)).
• Applicant states that for at least this reason, it would not have been obvious to a person of ordinary skill in the art to modify the process of Teamey to produce oxymethylene dimethyl ether based on the disclosure of Ouda. Oxymethylene dimethyl ether, or an intermediate thereof, could not reasonably have been expected to be produced from the cathodic side of Teamey's system as claimed.
• Applicant states that a person of ordinary skill would understand that the acetic acid formed at the cathode in the Figure 2 embodiment cannot simply be replaced with formaldehyde based on the isolated disclosure of paragraph [0022] and first product 113, without any corresponding teaching in Teamey to make that substitution. Moreover, Ouda does not disclose or suggest any
specific route connecting oxymethylene dimethyl ether synthesis with a simultaneous paired electrocatalytic process; Ouda is directed to conventional, non-paired thermochemical and electrochemical synthetic routes. Neither reference, alone or in combination, therefore teaches or
suggests a paired electrochemical system in which oxymethylene dimethyl ether is simultaneously generated
at both the anode and the cathode, as recited in claim 1.
• Applicant states that the preferred embodiment of Figure 2 uses a methanol feed to both the anode and the cathode to produce organic chemicals such as acetic acid at the cathode while simultaneously producing formaldehyde at the anode (Teamey, paragraph [0030]). Acetic acid is not a recognized precursor for oxymethylene dimethyl ether synthesis. Claim 1, from which claims 7, 9,
and 13-14 depend, is distinguished from this preferred embodiment in that an oxymethylene dimethyl ether or an intermediate thereof is prepared at the cathode, and the claimed method concerns a method for preparing oxymethylene dimethyl ether. For at least the reasons set forth above with respect to claim 1, including that Teamey does not teach how formaldehyde formation at the anode can be combined via paired synthesis with formaldehyde formation (first product 113) recoverable from the first region 116 at the cathode, and that Ouda does not disclose or suggest
any specific route connecting oxymethylene dimethyl ether synthesis with a simultaneous
paired electrocatalytic process, neither Teamey nor Ouda, alone or in combination, teaches or suggests a paired electrochemical system in which oxymethylene dimethyl ether is simultaneously generated at the anode and the cathode as recited in claim 1.
In response, formaldehyde is in the first region 116 (ρ [0022]) and second region 118 (ρ [Table 1] of Teamey.
Although Fig. 2 shows acetic acid 210 as the first product (ρ [0022]), Teamey teaches that the combined reaction of methanol with carbon dioxide to form formaldehyde and acetic acid of the embodiment of the system shown in FIG. 2 is:
4CH3OH + 2CO2 → 4CH2O + CH3COO + H+ + 2H2O
(ρ [0036]).
Thus, since Teamey teaches all of the electrosynthesis conditions in the method as presently claimed, one having ordinary skill in the art would have expected that the method disclosed by Teamey would have simultaneously generated oxymethylene dimethyl ether at both the anode and the cathode.
Similar processes can reasonably be expected to yield products which inherently have the same properties. In re Spada 911 F.2d 705, 15 USPQ 2d 1655 (CAFC 1990); In re DeBlauwe 736 F.2d 699, 222 USPQ 191 (CAFC 1984); In re Wiegand 182 F.2d 633, 86 USPQ 155 (CCPA 1950).
Ouda teaches that formaldehyde is an intermediate compound to formation of
oxymethylene dimethyl ether (OME) [page 51, Fig. 1].
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS
from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 A preamble is not necessarily accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP § 2111.02(II).
Prosecution Insights