DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Interpretation
Percentages represented in the claims are by weight, as defined in [0054].
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 107, 113-117, 119 and 122-126 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Nowack et al (US 4,570,025).
Regarding claims 107 and 113-117, Nowack discloses a composition comprising a monoolefin as the major component in a mixture of hydrogenated reaction products. A feed stream comprising at least one hydrocarbon selected from alkadienes (diolefins) having from 4 to 12 carbon atoms per molecule and alkatrienes (triolefins) having from 6 to 12 carbon atoms per molecule is hydrogenated in the presence of a catalyst under conditions which result in a reaction product comprising a monoolefin as the major component, wherein the number of carbon atoms per molecule of alkadiene and alkatriene is the same (i.e., a C10 alkadiene or alkatriene produces a C10 monoolefin) (see col. 1, lines 40-53). The feed stream may be a substantially pure diolefin or triolefin or a mixture of diolefins/triolefins and conversion to the olefin exceeds 50% (see col. 3, lines 33-37; col. 5, lines 11-14).
In other words, Nowack discloses a composition comprising at least 50% mono-olefinic species in a mixture of hydrogenated reaction products, as claimed, anticipating the claimed product composition.
The office notes that the claim(s) include limitations with respect to the manner of making the claimed composition. However, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 119, Nowack discloses the composition is a C10 mono-olefin (see col. 4, lines 15-20, wherein feed hydrocarbon may be 1,3-decadiene, 1,3,5-decatriene, 1,4,7-decatriene, e.g., thus resulting in a C10 mono-olefin, as claimed).
Regarding claims 122-126, the claims are directed to an intended use of the claimed composition (i.e., applying it to an oligomerization or polymerization process to form a product) and do not compositionally limit the claimed mono-olefin product itself. MPEP 2114.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 108-112, 118, 120 and 121 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nowack, as applied to the claims above.
Regarding claims 108-112 and 118, Nowack discloses hydrogenation conversion of the di-olefin(s) and/or tri-olefin(s) to the respective mono-olefin(s) of greater than 50%, as discussed above (see col. 5, lines 11-14), thus teaching concentrations of the claimed species at the very least overlapping the claimed ranges. Furthermore, based on the teachings in Nowack, a person of ordinary skill in the art would readily optimize the hydrogenation conditions in order to achieve the desired purity of mono-olefinic species.
Regarding claims 120 and 121, Nowack makes no mention of sulfur and/or aromatic species in the starting feed or the corresponding hydrogenated product mixture. Their presence is therefore implied to be absent and expected to be within the claimed range. Furthermore, as noted above, a person of ordinary skill in the art would readily optimize the hydrogenation conditions in order to achieve the desired purity of the mono-olefinic product. Absent a showing of compelling evidence to the contrary, the composition taught in Nowack is considered to fully teach and or suggest the claimed composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RENEE ROBINSON whose telephone number is (571)270-7371. The examiner can normally be reached Monday - Thursday 8:00a-5:00p and Friday 8:00a-2:00p.
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, In Suk Bullock can be reached at (571)272-5954. 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.
/Renee Robinson/Primary Examiner, Art Unit 1772
Prosecution Insights