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 18984600 filed 12/17/24.
Claims 1-20 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 2/16/26 and 5/5/25 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
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 § 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over MUNDAY ET AL. (GB820271A; 9/16/1959) in their entirety. Hereby referred to as MUNDAY.
Regarding claims 1-20:
MUNDAY teaches a method of separating an acidic or a neutral nonhydrocarbon organic material from a liquid hydrocarbon in which it is dissolved, which comprises intimately contacting the liquid hydrocarbon containing the dissolved non-hydrocarbon organic material with an anion-exchange resin impregnated with an auxiliary organic liquid, and separating the hydrocarbon liquid from the said impregnated resin (see claim 1 ). The auxiliary organic liquid is an alcohol of less than five carbon atoms, nitromethane, mono ethyl ether of diethylene glycol mononitrate or an amino alcohol (see claim 6), preferably those capable of dissolving water (page 2, right-hand column, lines 104-110). The liquid hydrocarbon is a petroleum distillate, or a synthetic benzene, toluene or xylene (see claim 3), and the acidic non-hydrocarbon organic material is a naphthenic acid, sulphonic acid, phenol, alkylated phenol, naphthasulphonic acid, thio phenol, alkyl thiophenol or fatty acid (see claim 2). Exemplarily, anion exchange resins such as the hydroxide form of Amberlite IRA 400 - i.e. macroporous, strong basic anion exchange resin having a styrene/divinylbenzene matrix and quaternary ammonium functional groups, or the hydroxide form of Duolite A 101 - polystyrene matrix with quaternary ammonium groups - have been pretreated with methanol, monoethanolamine or mixtures thereof with other solvents and used to remove various components such as naphthenic acids, decanoic acid, naphtha sulphonic acids - via the usage of the resin ion exchange centers - from liquid hydrocarbons such as benzene, fuel oil distillate, gasoline fraction, or kerosene (examples II, Ill, V, VI, VIII, IX, XI, XII, XIV). Contacting the hydrocarbon liquid with the impregnated resin may be carried out as a batch process, the liquid flowing through a column or over a fixed bed of resin until the efficiency or base-exchange capacity of the resin is depreciated to a predetermined extent (page 2, right-hand column, lines 123-128). Although not explicitly mentioned in MUNDAY, it is considered that a microporous ion exchange resin includes pores with a diameter between 1,000 and 500,000 Angstroms, as well as a pore volume of at least about 0.1 ml/g. Finally, ion exchange resins comprising the monomer units styrene, divinylbenzene and 4-vinylbenzyl trialkyl ammonium are well known in the ion exchange field, being available commercially under the denominations AmberChrom TM 1 X2, AmberChrom TM 1 X4, Dowex® 1 X4, or Purolite A-500. Using this type of strong anionic resin is merely one of several straightforward possibilities from which the skilled person would select, in accordance with circumstances, without the exercise of inventive skill, in order to solve the problem posed.
Therefore, from the teachings of the references it is apparent that one of ordinary skill 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 test 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.”).
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 applicant has 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771
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