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 .
Summary
This is the initial Office action based on application 18876278 filed 12/18/24.
Claims 23-42 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 6/9/26, 4/15/26, 12/17/25 and 1/16/25 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
Drawings
The Drawings filed on 12/18/24 are acknowledged and accepted by the examiner.
Specification
The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 24, 25, 26, 27, 28, 29, 31, 33, 37, 41 and all dependent claims 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..
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 24, 25, 26, 27, 28, 29, 31, 33, 37, 41 and all dependent claims recite the broad recitation (see respective claims), and the claim also recites the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The Examiner has taken the position that only one is present.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 23-42 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 26-45 of co-pending Application No. 18876229. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application and co-pending application claims are disclosed throughout the specification with overlapping components that define the process for producing at least one liquid transportation fuel. Applicants are reminded that those 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 an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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 of this title, 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 23-42 are rejected under 35 U.S.C. 103 as being unpatentable over SUNTIO ET AL. (US PG PUB 20220098500), and as evidence by BROSIUS (US PG PUB 20210348070) and REINER ET AL. (CA3030553; 1/18/2018 – using WO2018013295; 1/18/2018 as ENGLISH TRANSLATION) in their entirety. Hereby referred to as SUNTIO, BROSIUS and REINER.
Regarding claims 23-42:
SUNTIO teaches in para [0056] The process involves flowing a hydrotreatment entry stream to a first hydrotreatment reactor (101) comprising at least one catalytic zone (105). The hydrotreatment entry stream comprise the oxygenated hydrocarbon feedstock (104), which can be selected as described above, e.g. plant oils, animal fat or mixtures thereof containing 300 wppm nitrogen or more, such as 500-1500 wppm nitrogen. The hydrotreatment entry stream may optionally contain a hydrocarbon diluting agent (126). The hydrocarbon diluting agent may be product recycle (126) or a hydrocarbon of either fossil or renewable origin. A product recycle, may be added to the oxygenated hydrocarbon feedstock, in order to control the exothermic character of the hydrotreatment reactions. If a hydrocarbon diluting agent is added, it will typically be added in amounts ranging from 1:1 to 4:1 (total hydrocarbon diluting agent:total oxygenated feedstock). As mentioned, the hydrocarbon diluting agent may be of fossil or renewable origin. Some hydrocarbon feeds of fossil origin can contain a high amount of nitrogen impurities. These hydrocarbon feeds of fossil origin may also be part of the hydrocarbon diluting agent, alone or in admixture with other hydrocarbon diluting agent(s), such as product recycle. For example the hydrocarbon diluting agent may be a mixture of product recycle and fossil hydrocarbons.
SUNTIO teaches in para [0061] The hydrogen-rich gas (120) is necessary to perform i.e. the hydrodeoxygenation (HDO) and hydrodenitrification (HDN) reactions in the first hydrotreatment reactor (101). The hydrogen-rich gas may for example be excess hydrogen from the process (123, 131, 118) that has been purified by one or more purification steps (122), such as for example separation (122) into a gaseous fraction (123) comprising water, ammonia and other lights followed by amine scrubbing and/or membrane separation. The purity of the hydrogen-rich gas used in the first hydrotreatment reactor is not as important as the purity of the hydrogen-rich gas used for the second hydrotreatment reactor (102), used for stripping before the isomerization reactor (114) or used in the isomerization reactor (103), which suitably does not contain any reactive nitrogen, such as ammonia, such as less than 0.3 w-ppm nitrogen, measured as elemental nitrogen. Typically, it is acceptable that the hydrogen-rich gas used for the first hydrotreating reactor has a purity of 95 mol % or higher, but it is also possible that it has a hydrogen purity that is lower than 95 mol %. Make-up hydrogen can also be mixed to form the hydrogen-rich gas, or the hydrogen-rich gas can be entirely made up of make-up gas.
SUNTIO teaches in para [0105] The second hydrotreatment reactor (102) may be operated at a WHSV in the range from 0.5-3 h−1, such as 0.5-1.5 h−1 and a H2 flow of 350-2100 NI H2/I feed, such as 500-1500 NI H2/I feed.
SUNTIO teaches in para [0126] The catalytic zones of the first isomerization reactor may comprise one or more catalyst(s) comprising a Group VIII metal on a support, where the support may be selected from silica, alumina, clays, titanium oxide, boron oxide, zirconia, which can be used alone or as a mixture. For example, the support may be silica and/or alumina. The Group VIII metal may for example be Pd or Pt. Additionally, the one or more catalyst(s) may further comprise a molecular sieve, such as a zeolite.
SUNTIO teaches in para [0127] The isomerization reactor (103) may be operated at a WHSV in the range from 0.5-3 h−1; and a H2 flow of 150-800 NI H2/I feed, for example 0.5-1 h−1; and a H2 flow of 300-500 NI H2/I feed.
SUNTIO teaches in para [0137] The first isomerized effluent (116) or the first isomerized liquid (119) may be subjected to a distillation stage to produce one or more product fractions. Such fractional distillation is well-known in the art.
SUNTIO teaches in para [0138] In particular, the process of the present invention is beneficial because it was surprisingly found that the specific conditions resulted in a large fraction of high quality aviation fuel, see example 1. The aviation fuel fraction contained the C8-C16 hydrocarbons, in particular a major part of the aviation fuel contained the C9-C12 hydrocarbons. The aviation fuel fraction may also be characterized by the distillation range, for example as having a distillation range between 150−250° C.
SUNTIO teaches in para [0140]-FIG. 1 describes feeding oxygenated hydrocarbon feedstock (104) mixed with hydrogen-rich gas (120) and hydrocarbon diluting agent (126) in the form of product recycle to a first hydrotreatment reactor (101) comprising at least one catalytic zone (105). The first hydrotreated effluent (106) is separated into a gaseous fraction (121) and a first hydrotreated liquid (108) in separator (107). Gaseous fraction (121) may be flashed again at a lower temperature into gaseous fraction (123), water rich fraction (125), and hydrocarbon rich fraction (124) in separator (122). The first hydrotreated liquid (108) is mixed with hydrogen-rich gas (120) to form the feed (110) for the second hydrotreating reactor (102) comprising at least one catalytic zone, where hydrodeoxygenation and hydrodenitrification is caused to obtain a second hydrotreating effluent (130), which is separated into a gaseous fraction (113) and a second hydrotreating liquid (112) in separator (111). The second hydrotreating liquid (112) is stripped with hydrogen-rich gas (120) in stripper (114) to form a stripped hydrotreated liquid (115), which is mixed with hydrogen-rich gas (120) and fed to a first isomerization reactor (103) comprising at least one catalytic zone, where the stripped hydrotreated liquid (115) is isomerized to obtain a first isomerized effluent (116), which is separated into a gaseous fraction (118) and a first isomerized liquid (119) in separator (117).
SUNTIO teaches in para [0141]-FIG. 2 is a comparative reactor setup referred to in comparative example 1 and in table 7. It is similar to FIG. 1 but omits the second hydrotreating reactor. FIG. 2 describes feeding oxygenated hydrocarbon feedstock (204) mixed with hydrogen-rich gas (220) and hydrocarbon diluting agent (226) to a first hydrotreatment reactor (201) comprising at least one catalytic zone (205). The first hydrotreated effluent (206) is separated into a gaseous fraction (221) and a first hydrotreated liquid (208) in separator (207). Gaseous fraction (221) may be flashed again at a lower temperature into gaseous fraction (223), water rich fraction (225), and hydrocarbon rich fraction (224) in separator (222). The first hydrotreated liquid (208) is stripped with hydrogen-rich gas (220) in stripper (214) to form a stripped hydrotreated liquid (215), which is mixed with hydrogen-rich gas (220) and fed to a first isomerization reactor (203) comprising at least one catalytic zone, where the stripped hydrotreated liquid (215) is isomerized to obtain a first isomerized effluent (216), which is separated into a gaseous fraction (218) and a first isomerized liquid (219) in separator (217).
SUNTIO teaches in para [0142]-FIG. 3 is a comparative reactor setup referred to in comparative example 2 and in table 7. It is similar to FIG. 1 but does not include a separation step between the first and second hydrotreating reactor. FIG. 3 describes feeding oxygenated hydrocarbon feedstock (304) mixed with hydrogen-rich gas (320) and hydrocarbon diluting agent (326) in the form of product recycle to a first hydrotreatment reactor (301) comprising at least one catalytic zone (305). The first hydrotreated effluent (306) is mixed with hydrogen-rich gas (320) to form the feed for the second hydrotreating reactor (302) comprising at least one catalytic zone, where hydrodeoxygenation and hydrodenitrification is caused to obtain a second hydrotreating effluent (330), which is separated into a gaseous fraction (321) and a second hydrotreating liquid (312) in separator (307). Gaseous fraction (321) may be flashed again at a lower temperature into gaseous fraction (323), water rich fraction (325), and hydrocarbon rich fraction (324) in separator (322). The second hydrotreating liquid (312) is stripped with hydrogen-rich gas (320) in stripper (314) to form a stripped hydrotreated liquid (315), which is mixed with hydrogen-rich gas (320) and fed to a first isomerization reactor (303) comprising at least one catalytic zone, where the stripped hydrotreated liquid (315) is isomerized to obtain a first isomerized effluent (316), which is separated into a gaseous fraction (318) and a first isomerized liquid (319) in separator (317).
SUNTIO teaches in para [0153] The very low nitrogen content of all the experiments led to products with excellent cold properties. After isomerization and separation by distillation an aviation fuel cut was obtained having a T10 (° C.) cut-off temperature from 185 to 205, a T90 (° C.) cut-off temperature from 270 to 295° C. and final boiling point (° C.) from 275 to 300° C., fulfilling the ASTM D7566 (2016), Annex A2 specification, having a density of less than 772 kg/m.sup.3 (measured according to ASTM 4052 (2018)) and a freezing point of less than −40° C. (measured according to IP529). The obtained aviation fuel component further has a turbidity point lower than −30° C. (determined according to ASTM D5771 (2017)) with an excellent yield of about 60 wt-%. SUNTIO’s para [0153] thereby meeting the limitation of monitoring.
SUNTIO teaches in para [0158] A reaction set-up as depicted by FIG. 3, otherwise similar to example 1 with the exceptions that two HDO reactors in series were used and that there was no gas removal after the first HDO reactor before entering the feed (306) into the second HDO reactor (302) downstream of the first HDO reactor (301). A catalyst bed similar to the polishing reactor catalyst bed of FIG. 1 was installed inside the second HDO reactor (302). The liquid paraffinic effluent (306) from the first HDO reactor was directed directly to the second HDO reactor i.e. without removal of the gaseous by-products including nitrogen containing compounds after the first HDO reactor before entering the liquid paraffinic effluent into the second HDO reactor. The final liquid paraffinic effluent stream (312) obtained after the second HDO reactor (302) was directed to the stripper (314) for removal of the gaseous impurities, and subsequently into the isomerization reactor. The catalysts and reaction conditions were the same as for example 1.
SUNTIO teaches in para [0080] In the separation stage (107), the first hydrotreated effluent (106) is separated into a gaseous fraction (121) and a first hydrotreated liquid (108). The gaseous fraction (121) will comprise excess hydrogen, water vapour produced from HDO, CO and CO.sub.2 produced from decarboxylation/decarbonylation of carboxylic acids in the oxygenated hydrocarbon feed as well as H.sub.2S. Finally, NH.sub.3 will be produced from the HDN reaction. The first hydrotreated liquid (108) will contain ≥90 wt % hydrocarbons, the remainder being heteroatom-containing hydrocarbons, such as unreacted oxygenated hydrocarbons. It is desirable that the hydrotreatment is as complete as possible, i.e. that the first hydrotreated liquid (108) contains ≥95 wt % hydrocarbons, such as ≥98 wt % hydrocarbons. However, it is not always feasible or possible to completely hydrotreat the hydrotreatment entry stream completely without increasing the severity of the reaction conditions, which could cause coking of the catalyst, and other undesirable side effects. Accordingly, the conversion may be such that the first hydrotreated liquid (108) also contains ≤99 wt % hydrocarbons, i.e. the hydrotreatment entry stream is hydrotreated to an extent that the first hydrotreated liquid (108) contains between 95 and 99 wt % hydrocarbons.
SUNTIO teaches the paraffin as disclosed above; however SUNTIO does not explicitly disclose the weight percent of paraffin, but it is within the scope of SUNTIO as evident by BROSIUS. BROSIUS teaches in para [0059] In another embodiment, the zeolite is a large pore zeolite FAU, loaded with 1 wt. % platinum, the H2/hydrocarbon volumetric feed ratio is between 1,000 vol./vol. and 10,000 vol./vol. and the liquid hourly space velocity of the process is 0.1 h−1. A middle distillate yield of 70% by weight at atmospheric pressure is provided with the middle distillate consisting of more than 95% branched paraffin and less than 5% linear paraffin having a cloud point that is lower than −40° C.
SUNTIO teaches various hydrotreating catalysts as disclosed above; however it is known in the art to use other catalysts for the same hydrotreating processes as evident by REINER.
REINER teaches in para [0084] that the catalysts used for hydrotreatment can include conventional hydrotreatment catalysts, such as those that comprise at least one Group VIII non-noble metal (Columns 8-10 of IUPAC periodic table), preferably Fe, Co, and/or Ni, such as Co and/or Ni; and at least one Group VI metal (Column 6 of IUPAC periodic table), preferably Mo and/or W. Such hydrotreatment catalysts can optionally include transition metal sulfides impregnated and/or dispersed on a refractory support or carrier such as alumina and/or silica. Substantially carrier or support-free catalysts, commonly referred to as bulk catalysts, generally have higher volumetric activities than their supported counterparts. Para [0085] The catalysts can either be in bulk form or in supported form. In addition to alumina and/or silica, other suitable support/carrier materials can include, but are not limited to, zirconia, titania, zirconia-alumina, silica-irconia, silica-titania, and titania-alumina. Suitable aluminas are porous aluminas such as gamma or beta having average pore sizes. Suitable catalysts can include 10-member ring pore zeolites, such as EU-1, ZSM-35 (or ferrierite), ZSM-11, ZSM-57, NU-87, SAPO-11, ZSM-22, and the like, and combinations thereof. Exemplary materials can comprise EU-2, EU-11, ZBM-30, ZSM-48, and/or ZSM-23, particularly comprising at least ZSM-48. Note that a zeolite having the ZSM-23 structure with a silica to alumina (para [0073]). The metal is about 30 wt% or greater based on catalyst (para [0103].
Para [0062] Suitable catalysts can include molecular sieves (both aluminosilicate zeolites and silicoaluminophosphates), metalloaluminophosphates, amorphous aluminosilicates, cationic acidic clays, and other solid acid catalysts or mixtures thereof. Examples of acid catalysts can include but are not limited to large pore zeolites (e.g., Faujasite, Beta, MWW family, etc.), medium (10-ring) to small (8-ring) pore zeolites (e.g., MFI, CHA, MOR, etc.) with small particle sizes, acidic mixed metal oxides (W0x/Zr02, Mo0x/Zr02), alumina, silica-alumina, and acidic clays, or mixtures thereof. Para [0063] More generally, examples of the molecular sieves can be of the large (>12-ring pore opening), medium (10-ring opening) or small (<8-ring pore opening) pore type. The molecular sieves structure types can be defined using three letter codes. Non-limiting examples of small pore molecular sieves can include AEI, AFT, ANA, APC, ATN, ATT, ATV, AWW, BIK,CAS, CHA, CHI, DAC, DDR, EDT, ERI, GIS, GOO, KFI, LEV, LOV, LTA, MER, MON, PAU, PHI, RHO, ROG, SOD, THO, and substituted forms thereof Non-limiting examples of medium pore molecular sieves can include AFO, AEL, EUO, HEU, FER, MEL, MFI, MTW, MTT, MWW, TON, and substituted forms thereof. Non-limiting examples of large pore molecular sieves can include BEA, CFI, CLO, DNO, EMT, FAU, LTL, MOR and substituted forms thereof.
Although BROSIUS and REINER are not modifying references, both references clearly show that a process to produce transportation fuel would motivate the skilled artisan to seek a process with overlapping wt. percentages and properties of the paraffin as claimed, which is also disclosed in BROSIUS; and to seek additional optional catalysts as disclosed in REINER, as the catalyst overlap with SUNTIO to give an exhausted list of possibilities. In addition, SUNTIO teaches in para [0143] that when describing the embodiments of the present invention, the combinations and permutations of all possible embodiments have not been explicitly described. Nevertheless, the mere fact that certain measures are recited in mutually different dependent claims or described in different embodiments does not indicate that a combination of these measures cannot be used to advantage. The present invention envisages all possible combinations and permutations of the described embodiments.
Therefore, from the teachings of the references it is apparent that one of ordinary skilled in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
Furthermore, "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417.
In addition, one of ordinary skilled in the art would recognize that performing specific tests or recognizing additional instrumentation for analysis or additional analysis would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the claim limitations would merely have been expected to have the same functional properties as the prior art product.
Further, the claimed changes in the sequence of performing steps is considered to be prima facie obvious because the time at which a particular step is performed is simply a matter of operator preference, especially since the same result is obtained regardless of when the step occurs. See Ex parte RUBIN, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). With regard to any differences in the claimed conversion amounts, the skilled artisan would have found it obvious to modify the process conditions in order to obtain the desired conversions. Additionally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33 (CCPA 1937). In re Russel, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971)
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical product, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see in re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”).
Still, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Additionally, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). In In re Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable
In conclusion, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicants have 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).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
Again, BROSIUS and REINER are considered teaching references, not modifying references. See MPEP 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771
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