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 is a 371 of PCT/EP2023/065712 (06/13/2023)
and claims foreign priority to EP 22178819.3 (06/14/2022).
Claim Rejections - 35 USC § 112
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 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1 has the language “comprising the steps of: a) oxidizing feed comprising …” which is unclear as to whether there is a typo ( “oxidizing a feed comprising”) or if “oxidizing feed” is the claimed active step. Claim 1 also has unclear language with respect to whether the language of “comprising 2,5-furandicarboxylic acid in the presence of acetic acid and a catalyst” is a product of the oxidizing step or if it is a required component for oxidizing the feed. Claim 1 has the unclear language of “the alkoxy group comprises of from 1 to 3 carbon atoms” because it is unclear whether the claim intends for the alkoxy group to include more than 3 carbon atoms. Clarification/correction required.
Claim 5 has the language “further comprises modifying acid selected from …” which is unclear as to whether “modifying acid” is an active step or component in step a), and if a component, what part of a) – i.e., feed, gas, catalyst system, crude product, etc. In addition, claim 5 uses the “preferably” language which is unclear as to whether it limits the claim - see MPEP 2173.05(d).
Claim 6 has the language of “weight amount of solvent acid present” which lacks a clear antecedent basis.
Claims 7-8, and 10 use “preferably” language which is unclear as to whether it limits the claim - see MPEP 2173.05(d).
Thus, the claims and those that depend therefrom are rejected as indefinite.
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.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US9321744) in view of Mazoyer et al. (US20160024039).
Hsu teaches a process for producing 2,5-fuandicarboxylic acid (“FDCA”) from a feed comprising a first compound and a second compound (5-methylfurfual (“MF”; Formula 4) and alkoxylmethylfurfural (Formula 3), and combinations thereof) using oxygen and a Co/Mn/Br catalyst at 150C in the presence of acetic acid (claims 1-16; Examples). Hsu teaches examples of forming FDCA from oxidation of individual starting compounds 5-methylfurfual (“MF”) (Formula 18, col 16):
PNG
media_image1.png
181
417
media_image1.png
Greyscale
and ethoxylmethylfurfural (Formula 15, col. 14):
PNG
media_image2.png
181
417
media_image2.png
Greyscale
.
Regarding claim 1, although Hsu teaches oxidation of combinations thereof where MF and ethoxymethylfurfual are the second starting compound, Hsu does not specifically teach an embodiment. Hsu teaches isolation of products as solids in preparation examples 1-3, but does not specifically teach FDCA isolated as a solid.
Mazoyer teaches preparation of FDCA from 5-methoxymethylfurfural via oxidation in acetic acid with a catalyst (Abstract, claim 1), including isolating FDCA as a solid via crystallization ([0030]).
One of ordinary skill in the art following the teaching of Hsu would have considered performing an oxidation reaction of MF and ethoxymethylfurfual to produce FDCA because Hsu teaches such combinations within the scope of Hsu’s claims. Hsu also provides examples of each of the oxidation reactions functioning individually, thus the combination would also be expected to be successful. One of ordinary skill in the art would have also considered the well-known technique of crystallization for isolation as taught by Mazoyer on the same product.
Regarding claim 2, Hsu teaches alkoxymethyfurfural in claim 1, Formula 3, and Mazoyer teaches methoxymethyfurfural such that one of ordinary skill in the art would have considered the same reaction.
Regarding claim 3, Hsu teaches a range of ratio of compounds among the reactants (col 4, claim 16) which one of ordinary skill in the art routinely considers as a results effective variable in optimization to improve yield and purity.
Regarding claim 4 defining the feed with “consists of”, one of ordinary skill in the art would have had a reasonable expectation that combining two known oxidation reactions that were successful individually would also be successful together.
Regarding claim 5, Hsu teaches the use of the mono-carboxylic acid acetic acid.
Regarding claim 6, one of ordinary skill in the art would have considered optimization of the ratio of components in the reaction to improve yield and purity in amounts similar to what was taught by Hsu and arrive at the claimed invention with a reasonable expectation of success.
Regarding claim 7, Hsu teaches a washing step in related preparation examples as does Mazoyer ([0030]).
Regarding claim 8, Hsu teaches a range of catalyst formulations (col 4) as does Mazoyer ([0026]) such that one of ordinary skill in the art would have considered the same range as in the instant claim.
Regarding claim 9, Mazoyer teaches separation and recycling to the reactor (claim 25; [0030]).
One of ordinary skill in the art would have considered optimization of a synthetic scheme as routine in the art as suggested by Hsu and would have been predictable. “[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); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”); MPEP 2144.05.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US9321744) in view of Mazoyer et al. (US20160024039) as applied to claims 1-9 above and further in view of Shaikh et al. (US20130345451).
Regarding claim 10, Hsu and Mazoyer do not teach hydrogenation for purification.
Shaikh teaches purification of crude FDCA via hydrogenation of a solution of cFDCA (claims 1, 28; [0049]-[0050]). One of ordinary skill in the art would have considered combining the preparation process of Hsu, Mazoyer, and Shaikh for the same compound to optimize yield and purity and arrived at the claimed invention.
With each of the claims, the level of skill in the art is very high such that one of ordinary skill in the art would consider routine the combination of elements from the teaching of the art. One of ordinary skill in the art would have recognized that the results of the combination would be predictable due to the well-known nature and optimizations routinely performed in the art. Thus, one of ordinary skill in the art would have arrived at the invention as claimed before the effective filing date with a reasonable expectation of success.
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.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12281090 in view of Hsu et al. (US9321744), Mazoyer et al. (US20160024039) and Shaikh et al. (US20130345451). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a similar process for making the same FDCA which anticipates or renders obvious the instant claims as detailed in the above 35 USC 103 rejections supra.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 9643945 in view of Hsu et al. (US9321744), Mazoyer et al. (US20160024039) and Shaikh et al. (US20130345451). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a similar process for making the same FDCA which anticipates or renders obvious the instant claims as detailed in the above 35 USC 103 rejections supra.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 8865921 in view of Hsu et al. (US9321744), Mazoyer et al. (US20160024039) and Shaikh et al. (US20130345451). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a similar process for making the same FDCA which anticipates or renders obvious the instant claims as detailed in the above 35 USC 103 rejections supra.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of copending Application No. 19110145 (reference application) in view of Hsu et al. (US9321744), Mazoyer et al. (US20160024039) and Shaikh et al. (US20130345451). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims a similar process for making the same FDCA which anticipates or renders obvious the instant claims as detailed in the above 35 USC 103 rejections supra.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H HAVLIN whose telephone number is (571)272-9066. The examiner can normally be reached 9am - 6pm.
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, Kortney Klinkel can be reached at (571) 270-5293. 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.
/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
Prosecution Insights