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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-8 and 11-13) in the reply filed on 04/27/2026 is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. CN202211293519.4, filed on 10/21/2022.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 11 is rejected under 35 U.S.C. 101 because "Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 ").
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.
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.
Claim6 is 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 6 recites “wherein in d1)” which is not present in claim 3 upon which claim 6 depends. It seems that the claim was intended to be dependent on claim 5 instead. 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 11 is 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.
The claim is indefinite because the claim recites only “use” without any particular steps of using.
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.
Claim(s) 1, 2, 12 and 13 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Schreier et al. (US 20220178033 A1).
Considering claims 1, 2, 12 and 13, Schreier discloses a method for converting hydrocarbon raw materials, comprising: 1) reacting a gaseous hydrocarbon raw material (ethene or propane) with a halogen (Br-) to produce a haloalkane and a hydrogen halide (the solution has Br- and H+) ([0123]-[0126] and Fig. 4A);
2) reacting the haloalkane provided in step 1) with an active metal (catalyst such as silver) [0163] to produce a first unsaturated hydrocarbon and a first metal halide (Br- and the metal of the salt as a source of bromide) ([0017] and [0136]); and
3) reacting the hydrogen halide (H+) provided in step 1) with an active metal (cathode) to produce a second metal halide and hydrogen (Fig. 1).
Schreier does not explicitly disclose a metal bromide in embodiment of the synthesis of olefines, however Schreier discloses using NaCl in the Chlorohydrin Synthesis [0158].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the metal halide used in the synthesis of unsaturated hydrocarbon, because it is alkali metal halides are well known sources of halide ions in electrolytes, as evidenced by the composition of electrolyte for synthesis of chlorohydrin in the alternative embodiment in Schreier.
Note that metal element in claim 12 is not the same as elemental metal, only the latter one indicates neutral form.
Claim(s) 1-3, 5-8, 11 and 13 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Claridge et al. (Catalysis Letters 21 ‘1993’ 123-131).
Considering claims 1-3, 5-8, 11 and 13, Claridge discloses a method for converting hydrocarbon raw materials, comprising: heating methane in molten salt electrolyzer comprising molten salt CoCl2/NaVO3 and electrolyzing at 750 °C to produce C2H4 (abstract and table 1, page 126). Claridge teaches that the selectivity towards C2H4 increases when concentration of CoCl2 is increased (Fig. 2, page 126). Claridge also admits that the mechanism of this reaction is not clear.
Claridge does not disclose the steps:
1) reacting a gaseous hydrocarbon raw material with a halogen to produce a haloalkane and a hydrogen halide; (2) reacting the haloalkane provided in step 1) with an active metal to produce a first unsaturated hydrocarbon and a first metal halide; and
3) reacting the hydrogen halide provided in step 1) with an active metal to produce a second metal halide and hydrogen.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the mechanism of the reaction would follow the steps of the claim, even though Claridge does not disclose any particular steps, because the molten salt electrolysis of Claridge is very similar to the claimed molten salt electrolysis, there one would have expected substantially similar mechanism. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." (MPEP 2112 I.).
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art (Claridge et al. Catalysis Letters 21 ‘1993’ 123-131) discloses the molten metal salt comprising CoCl2, MnCl2, NiCl2, MoCl4 and CuCl2. However, claim 4 requires the metal chloride is one or more of LiCl, NaCl, KCl, RbCl, CsCl, MgCl2, CaCl2, SrCl2, BaCl2, and ZnCl2; the metal bromide is one or more of LiBr, NaBr, KBr, RbBr, CsBr, MgBr2, CaBr2, SrBr2, BaBr2, and ZnBr2; the metal iodide is one or more of LiI, NaI, KI, RbI, CsI, MgI2, CaI2, SrI2, BaI2, and ZnI2.
The prior art of record does not disclose nor suggest to use the halogens selected from the claimed groups for the same process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/Examiner, Art Unit 1794
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