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 .
Drawings
The drawings were received on May 30, 2025. These drawings are acceptable.
Claim Objections
Claims 2, 4, 6-8 and 10 are objected to because of the following informalities:
Claim 2
line 2, please insert the word -- the -- before the word “4-amino-3,5,6-trichloropicolinic”.
This is an instance where the article should be added to ensure proper antecedent basis for the claim terminology.
line 4, please amend the word “it” (first occurrence) to the words -- the mixture --.
line 4, please amend the word “it” (second occurrence) to the words -- the clear solution --.
Claim 4
line 5, please insert the word -- the -- before the word “4-amino-3,5,6-trichloropicolinic”.
This is an instance where the article should be added to ensure proper antecedent basis for the claim terminology.
Claim 6
line 11, please amend the word “it” to the word -- the silver electrode --.
Claim 7
line 2, please amend the word “electrolysis” to the word -- electrolytic --.
This is an instance where the article should be changed to ensure the consistency of the claim terminology.
Claim 8
line 2, please amend the word “electrolysis” to the word -- electrolytic --.
This is an instance where the article should be changed to ensure the consistency of the claim terminology.
Claim 10
line 3, please amend the word “it” to the words -- the catholyte --.
line 4, please amend the word “them” to the words -- the precipitated crystals --.
line 5, please amend the word “them” to the words -- the precipitated crystals --.
line 5, please insert the word -- the -- before the word “4-amino-3,6-dichloropicolinic”.
This is an instance where the article should be added to ensure proper antecedent basis for the claim terminology.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 2-4, 7-8 and 10 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 2
lines 1-2, “the preparation method” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
line 3, “the mixture” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
Claim 7
line 1, “the current density” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
Claim 8
line 2, “the current control method” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
line 2, “the initial stage” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
line 3, “the intermediate stage” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
line 4, “the final stage” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
Clam 10
lines 1-2, “the separation and purification method” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent
mention of an element is to be modified by the definite article “the”, “said” or “the said,”
thereby making the latter mention(s) of the element unequivocally referable to its earlier
recitation.
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 (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 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.
I. Claim(s) 1, 5, 7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110438522 (‘522).
Regarding claim 1, CN ‘522 teaches a method for improving efficiency of electrolytic
synthesis of 4-amino-3,6-dichloropicolinic acid (= preparing 4-amino-3,6-dichloropyridinecarboxylic acid1 by electrochemical selective dechlorination) [ρ [0002]], characterized in that the method comprising:
• employing a diaphragm electrolytic cell (= using a diaphragm electrolytic cell) [ρ [0009]], using an aqueous solution containing 4-amino-3,5,6-trichloropicolinic acid as a catholyte (= using an aqueous solution of 4-amino-3,5,6-trichloropyridinecarboxylic acid (I)2 salt prepared with electronic-grade ultrapure water as the cathode liquid) [ρ [0009]], an aqueous solution containing an alkali metal hydroxide as an anolyte (= using an aqueous solution of alkali metal hydroxide prepared with electronic-grade ultrapure water as the anolyte) [ρ [0009]], silver as a cathode (= using silver with a purity of 99.95%-99.99% as the cathode) [ρ [0009]], and a nickel-based material as an anode (= using a nickel-based material as the anode) [ρ [0009]] for electrolytic reaction (= for the electrochemical selective dechlorination preparation of 4-amino-3,6-dichloropyridinecarboxylic acid) [ρ [0009]],
• after the electrolytic reaction is completed, subjecting the catholyte to separation and purification, thereby obtaining 4-amino-3,6-dichloropicolinic acid (= after the electrolysis reaction is complete, the cathode solution is separated and purified to obtain 4-amino-3,6-dichloropyridinecarboxylic acid (II)) [ρ [0009]].
CN ‘522 does not explicitly teach 0.8 to 2.0 mol/L of 4-amino-3,5,6-trichloropicolinic
acid.
CN ‘522 teaches that the concentration of 4-amino-3,5,6-trichloropyridinecarboxylic acid in the catholyte is 0.2-0.8 M (ρ [0011]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the concentration of 4-amino-3,5,6-trichloropyridinecarboxylic acid taught by CN ‘522 to 0.8 to 2.0 mol/L of 4-amino-3,5,6-trichloropicolinic acid. The person with ordinary skill in the art would have been motivated to make this modification because the concentration of 4-amino-3,5,6-trichloropyridinecarboxylic acid as taught by CN ‘522 in [0011]] overlaps with the claimed concentration range. Hence, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Regarding claim 5, CN ‘522 teaches wherein the alkali metal hydroxide in the anolyte is NaOH or KOH (= the alkali metal hydroxide in the anolyte is NaOH or KOH), and the concentration of the alkali metal hydroxide in the anolyte is 0.5-10 mol/L (= the concentration of alkali metal hydroxide in the anolyte is 1.0–2.0 M) [ρ [0011]].
Regarding claim 7, CN ‘522 teaches wherein the current density for the electrolysis reaction is 2.2~20A/dm2, and the temperature for the electrolysis reaction is 30~80°C (= the current is direct current, with a preferred current density of 5-10 A/dm2 and a preferred reaction temperature of 35-50℃) [ρ [0013]].
Regarding claim 9, CN ‘522 teaches wherein the diaphragm is a cation exchange membrane or a porous diaphragm (= the diaphragm is a cation exchange membrane) [ρ
[0012]].
Regarding claim 10, CN ‘522 teaches wherein the separation and purification method for the catholyte comprises: adjusting the pH of the catholyte to 1 using 36% mass concentrated hydrochloric acid at 85-90°C, and allowing it to cool naturally overnight for crystallization; filtering the precipitated crystals, washing them with water, and drying them at 80°C to obtain snow-white crystals, which are 4-amino-3,6-dichloropicolinic acid (= first, the pH of the catholyte was adjusted to 1 using 36% hydrochloric acid at 85-90°C, and allowed to cool and crystallize overnight. Then, the precipitated crystals were filtered, washed with deionized water, and dried at 80°C to obtain snow-white crystals. Finally, the purity of 4-amino-3,6-dichloropyridinecarboxylic acid in the white crystals was determined to be 98.6% by high-performance liquid chromatography) [ρ [0034]].
II. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110438522 (‘522) as applied to claims 1, 5, 7 and 9-10 above, and further in view of WO 2008/042429 (‘429).
Regarding claim 6, CN ‘522 teaches the method of at least claims 1, 5, 7 and 9-10 as applied above. CN ‘522 also teaches wherein the cathode is an activated silver (= the cathode is activated silver) [ρ [0014]] mesh (= more preferably, the silver in step (1) is a new silver mesh or a used silver mesh, with a silver content of ≥99.95wt%, preferably ≥99.99wt%) [ρ [0015]], and the activation method for the silver mesh comprises: in an H-type electrolytic cell with a Nafion 117 cation membrane as a diaphragm (= in an H-type electrolytic cell (as shown in Figure 1) with Nafion 117 cation membrane as diaphragm), using the silver mesh as a working
electrode (= the silver soaked in step (1) is used as the working electrode), silver/silver chloride
as a reference electrode (= silver/silver chloride is used as the reference electrode) [ρ [0014]], a 0.5 mol/L NaCl and 0.5 mol/L NaOH aqueous solution as a working electrode solution (= the aqueous solution containing chloride or bromide ions in step (2) is an aqueous solution of 0.1-1.0 M NaCl + 0-1.0 M NaOH) [ρ [0015]], and a 1.0 mol/L NaOH aqueous solution as a counter electrode solution (= 1M NaOH aqueous solution is used as the counter electrode solution) [ρ [0014]], controlling the temperature of the working electrode solution at 20-25 °C (= temperature of 0-50℃ (preferably 20-25℃)), first applying an anodic oxidation current of 0.3 A/dm2 to the silver mesh (= oxidation is carried out under the conditions of current density of 0.1-5A/dm2) until the electrode potential reaches +0.7 vs. SHE (= preferably the electrode potential reaches +0.5 vs Ag/AgCl)3, then reversing the current direction and applying a cathodic reduction current of 0.3 A/dm2 to the silver mesh (= with other conditions the same)
[ρ [0014]]; finally, removing the silver electrode and immersing it in deionized water to obtain the activated silver mesh (= remove the silver mesh to obtain the silver electrode, and place it in deionized water for later use) [ρ [0025]].
CN ‘522 does not explicitly teach the following:
a. Graphite as a counter electrode.
CN ‘522 teaches a platinum sheet of the same area is used as the counter electrode (ρ [0014]].
WO ‘429, like CN ‘522, teaches the selective electrochemical reduction of halogenated 4-aminopicolinic acid (page 1, lines 3-5). The anode can be any chemically inert material
including, for example, platinum, graphite, carbon, metal oxides such as silver oxide on silver, or alloys such as Hastelloy C, with graphite, carbon and Hastelloy C being preferred (page 5, lines 9-12).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the counter electrode taught by CN ‘522 with graphite as a counter electrode. The person with ordinary skill in the art would have been motivated to make this modification because using graphite as an anode is suitable for the electrochemical reduction reaction as disclosed by WO ‘429 on page 5, lines 9-10, where the substitution of art recognized equivalents as taught by WO ‘429 on page 5, lines 9-12, is within the level of ordinary skill in the art. In addition, the substitution of one counter electrode for another is likely to be obvious when it does no more than yield predictable results.
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
b. Until the electrode potential reaches -0.4 vs. SHE.
CN ‘522 teaches preferably the potential reaches -0.5 vs Ag/Ag/Cl (= -0.303 V vs. SHE)4 [ρ [0014]].
WO ‘429 teaches that:
The activation procedure involves increasing the potential from an initial value of zero volts to a final value of at least +0.3 volts and preferably +0.7 volts. Reduction of the oxide deposit requires negative polarization of the cathode. The cathode potential is gradually reduced from the value of +0.3 to +0.7 volts attained during the oxidation step, to a value of -0.5 volts or less (page 5, line 26 to page 6, line 4).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the electrode potential taught by CN
‘522 with until the electrode potential reaches -0.4 vs. SHE. The person with ordinary skill in the art would have been motivated to make this modification because the electrode potential of -0.5 vs Ag/Ag/Cl (= -0.303 V vs. SHE) as taught by CN ‘522 in [0014] is deemed close to the claimed electrode potential where that one skilled in the art would have expected them to have
the same properties.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges
do not overlap but are close enough that one skilled in the art would have expected them to
have the same properties. See MPEP 2144.05(I).
Furthermore, the person with ordinary skill in the art would have been motivated to make this modification because using an electrode potential of a value of -0.5 volts or less5
reduces the oxide deposit as taught by WO ‘429 on page 6, lines 1-4, for preparing activated silver.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 2-4 define over the prior art of record because the prior art does not contain any
language that teaches or suggests the method according to claim 1, wherein the preparation method for the catholyte comprises: adding 4-amino-3,5,6-trichloropicolinic acid to an aqueous solution of an alkali metal hydroxide or alkali metal carbonate, subjecting the mixture to stirring
at 50-100°C until it becomes a clear solution, and then cooling it down to 30-75°C to obtain a clear catholyte. Therefore, a person skilled in the art would not have been motivated to adopt
the above conditions, and a prima facie case of obviousness cannot be established.
Claim 8 defines over the prior art of record because the prior art does not contain any language that teaches or suggests the method according to claim 1, wherein the current control method is as follows: during the initial stage of the electrolysis reaction, a current density of 8~20 A/dm2 is used; during the intermediate stage, a current density of 4.5~11.2 A/dm2 is used; and during the final stage, a current density of 2.2~5.5A/dm2 is used. Therefore, a person skilled in the art would not have been motivated to adopt the above conditions, and a prima facie case of obviousness cannot be established.
Claims 2-4 and 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to
include all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The
examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 4-amino-3,6-dichloropyridinecarboxylic acid is the same as 4-amino-3,6-dichloropyridinecarboxylic acid.
2 4-amino-3,5,6-trichloropyridinecarboxylic acid is the same as 4-amino-3,5,6-trichloropicolinic acid.
3 +0.70 V vs. SHE (ESHE = EAg/AgCl (sat) + 0.197 V).
4 ESHE = EAg/AgCl (sat) + 0.197 V
5 A value of -0.5 volts or less includes -0.4 V.