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 .
Claim Objections
Claims 2-14 are objected to because of the following informalities: the word “Claim” should not be capitalized in the claims. Appropriate correction is required.
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 3 and 7 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.
Claim 3 contains the trademark/trade name for the static mixer. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a static mixer and, accordingly, the identification/description is indefinite.
Claim 7 is indefinite because the claim has a broad range and a narrow range within the same claim. The claim may be better understood as a separate dependent claim.
Claim Rejections - 35 USC § 102/103
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.
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 1-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang et al., Chinese Publication No. CN107774257A (hereinafter referred to as Wang).
Regarding claims 1-15, Wang discloses a process for the hydrogenation of phthalate diesters using a hydrogenation reactor and mixing the liquid stream with a static mixer. Various static mixers are disclosed in Wang. A rhodium or ruthenium catalyst is used in a fixed-bed reactor. Temperatures between 35 and 100°C and pressures between 0.4 and 9 MPa are employed (see Claims 1-23, see Examples 1-11, and Para. [0081] and [0108]).
In a method of Wang, hydrogen gas can be mixed with a raw material liquid containing phthalic acid diester using conventional methods to obtain the raw material mixture. For example, hydrogen gas can be mixed with a feed liquid containing phthalate diester in a mixer, which can be one or a combination of two or more of dynamic mixers and static mixers. The static mixer achieves uniform mixing of gas and liquid by changing the flow state of the fluid. Specifically, it can be one or more of the following: SV type static mixer, SK type static mixer, SX type static mixer, SH type static mixer and SL type static mixer. The dynamic mixer can be any mixing device that achieves uniform mixing of gas and liquid through the movement of moving parts, such as common components with stirring functions (Para. [0067]).
Claim Rejections - 35 USC § 102/103
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang et al., Chinese Publication No. CN1065544278A (hereinafter referred to as Wang ‘278).
Regarding claims 1-5, Wang ‘278 discloses a process of hydrogenation for preparing cyclohexane-1,2-dibasic diformate, and discloses a preparing method for cyclohexane-1,2-dioctyl phthalate dibasic ester. The method comprises the steps that firstly, hydrogenation raw materials containing phthalic acid dibasic ester and H2 are subjected to first contact in a main hydrogenation reactor in the presence of a first catalyst, and first gas-liquid mixing fluid is obtained; secondly, the first gas-liquid mixing fluid is subjected to gas-liquid separation; thirdly, hydrogen is injected into main hydrogenation reaction liquid through holes with the average hole diameter being the nanometer size, the main hydrogenation reaction liquid is separated out in the second step, and second gas-liquid mixed fluid is obtained; fourthly, the second gas-liquid mixed fluid is subjected to second contact in a rear hydrogenation reactor in the presence of a second catalyst, and third gas-liquid mixed fluid is obtained; and fifthly, the third gas-liquid mixed fluid is subjected to gas-liquid separation.
In example 1 and paragraph 0048, Wang ‘278 discloses a process for the hydrogenation of phthalate diesters using a fixed-bed hydrogenation reactor and mixing the liquid stream with a static SV mixer. A rhodium-samarium-on-carbon catalyst is used. A temperature of 58°C and a pressure of 6.2 MPa are employed.
Claim Rejections - 35 USC § 103
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Grund et al., US Patent Application Publication No. 2005/0256281 (hereinafter referred to as Grund) in view of De Munck et al., US Patent Application Publication No. 2019/0185404 (hereinafter referred to as De Munck).
Regarding claims 1-15, Grund discloses a reactor, which is capable of accommodating a reaction in which at least three phases are present and at least one gaseous starting material and at least one liquid starting material are reacted in cocurrent over a fixed-bed catalyst from the 8th group of the periodic table, to give one or more product(s), contains at least one first zone in which a catalyst is present as a fixed bed; and at least one second zone whose size corresponds to a reactor cross section and which is separated from the at least one first zone by a distributor plate provided with at least one hole and in which at least one liquid and at least one gaseous starting material enter the reactor. The distributor plate is provided with at least one static mixer which is located in the at least one hole on at least one side of the distributor plate (see Abstract and Para. [0067]).
Grund further discloses in Example 2, claims 1-13 and paragraph [0039] an apparatus comprising a hydrogenation reactor and a Kenics-type static mixer wherein two streams that are mixed and fed to the hydrogenation unit. The apparatus is suitable for the hydrogenation of aromatic compounds to the corresponding alicyclic compound.
Grund discloses all the limitations discussed above but does not explicitly disclose the two streams including aromatic compounds and hydrogenation gas respectively as recited in claim 1.
De Munck discloses a process for ring hydrogenation of a benzenepolycarboxylic acid or derivative thereof, which process comprises contacting a feed stream comprising said acid or derivative thereof with a hydrogen-containing gas in the presence of a catalyst under hydrogenation conditions to produce a hydrogenated product, wherein said catalyst comprises a Group VIII metal, a support material and a halogen, and wherein the halogen is present in an amount of from 0.02 to 0.60% by weight, based on the total weight of the catalyst (see Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to use the streams of De Munck in the reaction apparatus of Grund as it is combining prior art elements according to known methods to yield predictable results.
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 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of co-pending application No. 19/021,357. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '357 application discloses the same limitations as does the instant application except the static mixer limitation of the instant claims. The static mixer would have been obvious in light of the references discussed above and incorporated herein by reference.
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.
Double Patenting II
Claims 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of co-pending application No. 19/022,100. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '100 application discloses the same limitations as does the instant application except the static mixer limitation of the instant claims. The static mixer would have been obvious in light of the references discussed above and incorporated herein by reference.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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