DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 36 and 46 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 36 and 46 are not further limiting from its parent claim 27 “WHSV from about 0.5 to about 5.0”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 27, 28, 30, 31, 37, 38, 40, and 41 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Graziani et al. US Patent 4,542,252.
Regarding claim 27, Graziani teaches a process for converting C1-C5 alcohols to olefins comprising (Example 5):
a) Feeding a feed comprising isopropanol and methanol into a stacked bed (column 9 line 36) reactor comprising a first and second catalyst (column 14 line 63 – column 15 line 3);
b) The temperatures comprise values between 520 ⁰F to 700 ⁰F (271 ⁰C to 371 ⁰C), pressures of less than 100 psig (6.9 bar), and a WHSV of 0.1 to 5 (column 10 lines 28-37);
c) The first catalyst comprises alumina and the second catalyst comprises zeolite (Example 5, column 14 lines 64-66).
Regarding claim 28, Graziani teaches the stacked bed reactor can be a fixed bed reactor (column 9 line 36).
Regarding claims 30 and 31, Graziani teaches the feed can be sourced from biomass fermentation (column 1 line 36), thus not derived from petroleum.
Regarding claim 37, Graziani teaches a process for converting C1-C5 alcohols to olefins comprising (Example 5):
a) Feeding a feed comprising isopropanol and methanol into a stacked bed (column 9 line 36) reactor comprising a first and second catalyst (column 14 line 63 – column 15 line 3);
b) The temperatures comprise values between 520 ⁰F to 700 ⁰F (271 ⁰C to 371 ⁰C), pressures of less than 100 psig (6.9 bar), and a WHSV of 0.1 to 5 (column 10 lines 28-37);
c) The first catalyst comprises alumina and the second catalyst comprises zeolite (Example 5, column 14 lines 64-66).
Regarding claim 38, Graziani teaches the stacked bed reactor can be a fixed bed reactor (column 9 line 36).
Regarding claims 40 and 41, Graziani teaches the feed can be sourced from biomass fermentation (column 1 line 36), thus not derived from petroleum.
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 27-34, 37-44 and 46 are rejected under 35 U.S.C. 103 as obvious over Graziani et al. US Patent 4,542,252 in view of Minoux et al. US Patent 9,249,066.
Regarding claim 27, Graziani teaches a process for converting C1-C5 alcohols to olefins comprising (Example 5):
a) Feeding a feed comprising isopropanol and methanol into a stacked bed (column 9 line 36) reactor comprising a first and second catalyst (column 14 line 63 – column 15 line 3);
b) The temperatures comprise values between 520 ⁰F to 700 ⁰F (271 ⁰C to 371 ⁰C), pressures of less than 100 psig (6.9 bar), and a WHSV of 0.1 to 5 (column 10 lines 28-37);
c) The first catalyst comprises alumina and the second catalyst comprises zeolite (Example 5, column 14 lines 64-66).
Graziani does not teach the first alumina catalyst is doped with Zr, Ti, W, or Si. Graziani further does not explicitly teach a doped zeolite.
However, Minoux teaches a process for dehydrating alcohols to olefins and teaches an alumina catalyst that can be impregnated with Si, Zr, or Ti (column 10 line 40). The addition of these metals introduces selectivity in the reaction (column 1 lines 19-20). Minoux further dopes the zeolite catalyst with P to improve its performance and olefine yield in dehydration (column 7 lines 38-40). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to modify Graziani with the catalyst in Minoux, including the with Si, Zr, or Ti doped alumina and doped zeolite, because the modification would improve selectivity and olefin yield.
Regarding claim 28, Graziani teaches the stacked bed reactor can be a fixed bed reactor (column 9 line 36).
Regarding claim 29, Minoux teaches a single reactor that can be fixed or fluidized (column 5 lines 57-67).
Regarding claims 30 and 31, Graziani teaches the feed can be sourced from biomass fermentation (column 1 line 36), thus not derived from petroleum. Minoux further teaches biomass source for the alcohol (column 1 line 23).
Regarding claim 32, Graziani teaches the overall conversion (Table 1) is up to 87%. Under similar reaction conditions, one having ordinary skill in the art would reasonably expect a similar output of 80 wt% olefins absent any evidence to the contrary. Minoux teaches a yield of about 97.4 wt% (Table 3).
Regarding claim 33, the aforementioned do not explicitly teach aromatics in the output in the content from 2 wt% to 10 wt%. However, Minoux does teach that aromatics are a by product found in the effluent in an amount of 0.7 wt% (Table 3, column 14). One having ordinary skill in the art would understand that the reaction forming aromatic is determined by the result effective process parameters (WHSV, residence time, temperature, pressure and catalyst acid site distribution)(column 1 line 55). Thus, it would have been obvious to one having ordinary skill in the art to optimize these parameters by routine experimentation to arrive at 2 to 10 wt% aromatics.
Regarding claim 34, the products may be separated as indicated in Graziani (column 9 line 13) and Minoux (column 3 line 2).
Regarding claim 36, Graziani teaches a WHSV of 0.1 to 5 (column 10 lines 28-37).
Regarding claim 37, Graziani teaches a process for converting C1-C5 alcohols to olefins comprising (Example 5):
a) Feeding a feed comprising isopropanol and methanol into a stacked bed (column 9 line 36) reactor comprising a first and second catalyst (column 14 line 63 – column 15 line 3);
b) The temperatures comprise values between 520 ⁰F to 700 ⁰F (271 ⁰C to 371 ⁰C), pressures of less than 100 psig (6.9 bar), and a WHSV of 0.1 to 5 (column 10 lines 28-37);
c) The first catalyst comprises alumina and the second catalyst comprises zeolite (Example 5, column 14 lines 64-66).
Graziani does not teach the first alumina catalyst is doped with Zr, Ti, W, or Si. Graziani further does not explicitly teach a doped zeolite.
However, Minoux teaches a process for dehydrating alcohols to olefins and teaches an alumina catalyst that can be impregnated with Si, Zr, or Ti (column 10 line 40). The addition of these metals introduces selectivity in the reaction (column 1 lines 19-20). Minoux further dopes the zeolite catalyst with P to improve its performance and olefine yield in dehydration (column 7 lines 38-40). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to modify Graziani with the catalyst in Minoux, including the with Si, Zr, or Ti doped alumina and doped zeolite, because the modification would improve selectivity and olefin yield.
Regarding claim 38, Graziani teaches the stacked bed reactor can be a fixed bed reactor (column 9 line 36).
Regarding claim 39, Minoux teaches a single reactor that can be fixed or fluidized (column 5 lines 57-67).
Regarding claims 40 and 41, Graziani teaches the feed can be sourced from biomass fermentation (column 1 line 36), thus not derived from petroleum. Minoux further teaches biomass source for the alcohol (column 1 line 23).
Regarding claim 42, Graziani teaches the overall conversion (Table 1) is up to 87%. Under similar reaction conditions, one having ordinary skill in the art would reasonably expect a similar output of 80 wt% olefins absent any evidence to the contrary. Minoux teaches a yield of about 97.4 wt% (Table 3).
Regarding claim 43, the aforementioned do not explicitly teach aromatics in the output in the content from 2 wt% to 10 wt%. However, Minoux does teach that aromatics are a byproduct found in the effluent in an amount of 0.7 wt% (Table 3, column 14). One having ordinary skill in the art would understand that the reaction forming aromatic is determined by the result effective process parameters (WHSV, residence time, temperature, pressure and catalyst acid site distribution)(column 1 line 55). Thus, it would have been obvious to one having ordinary skill in the art to optimize these parameters by routine experimentation to arrive at 2 to 10 wt% aromatics.
Regarding claim 44, the products may be separated as indicated in Graziani (column 9 line 13) and Minoux (column 3 line 2).
Regarding claim 46, Graziani teaches a WHSV of 0.1 to 5 (column 10 lines 28-37).
Claims 35 and 45 are rejected under 35 U.S.C. 103 as obvious over Graziani et al. and Minoux and in view of Hoelderich et al. US Patent 4,616,098.
Regarding claims 35 and 45, Graziani teaches temperatures of 271 ⁰C to 371 ⁰C (column 10 lines 28-37) and Minoux teaches temperatures of up to 500 ⁰C (column 6 line 20). However, the aforementioned do not teach temperatures from 550 ⁰C to 750 ⁰C.
Hoelderich teaches an alcohol conversion to olefins process at elevated temperatures with a zeolite catalyst to promote cracking reactions and thereby produce more olefins (column 2 line 25). The temperatures are from about 300 ⁰C to 700 ⁰C (column 2 line 33).
Thus, it would have been obvious to one having ordinary skill in the art to use elevated temperatures in order to promote cracking and produce more olefins.
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 27-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,091,373. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent teaches a process for converting one or more C1-C5 linear or branched alcohols to one or more C2-C5 olefins, the process comprising: contacting an input stream comprising the one or more C1-C5 linear or branched alcohols with a catalyst in a reactor to form an output stream with greater than about 75 wt % carbon yield, the output stream comprising the one or more C2-C5 olefins, the catalyst consisting essentially of zeolite doped with boron and phosphor; wherein the reactor is at a temperature from about 300° C. to about 600° C., a gauge pressure from 0 to about 30 bar, and a weight hourly space velocity (WHSV) from about 0.25 to about 10; and wherein boron is present in the catalyst in an amount from about 0.05 wt. % to about 5 wt. %, and wherein phosphor is present in the catalyst in an amount from about 0.2 wt. % to about 7 wt. %.
Claims 27-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,043,587. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘587 teaches a process for converting one or more C2-C5 linear or branched alcohols to one or more C2-C7 olefins, the process comprising: contacting a first stream comprising the C2-C5 linear or branched alcohols with a first catalyst in a first reactor at a temperature from about 200° C. to about 500° C., gauge pressure from 0 to about 30 bar, and a weight hourly space velocity (WHSV) of at least 0.5 to form a second stream, wherein the first catalyst comprises an alumina catalyst including, in neutral or ionic form, one or more of silicon (Si), zirconium (Zr), titanium (Ti), niobium (Nb), tungsten (W), or fluorine (F); and contacting the second stream with a second catalyst in a second reactor at a temperature from about 200°C. to about 500°C., gauge pressure from 0 to about 30 bar, and a WHSV of at least 0.5, wherein the second catalyst comprises a doped or undoped zeolite catalyst, thereby forming the one or more C2-C7 olefins in a mass yield of at least 65%.
Conclusion
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/SHARON PREGLER/Primary Examiner, Art Unit 1772
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