UNITED STATES PATENT AND TRADEMARK OFFICE
`
`7 ,
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.usplo.gov
`
`10/708,420
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`03/02/Z004
`
`Mark O. Scales
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`l0437.0073.NPUS01
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`2419
`
`HOWREY LLP
`c/o IP DOCKETING DEPARTMENT
`2941 FAIRVIEW PARK DRIVE, SUITE 200
`FALLS CHURCH, VA 22042-7195
`
`VALENROD, YEVGENY
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`.
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`1621
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`DATE MAILEDZ 11/21/2006
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. I0/03)
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`CE Ex. 2007
`Daicel v. Celanese
`|PR2015—00173
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` 1
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`

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`Office Action Summary
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`Examine,
`
`YevgenyValenrod
`
`‘
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`Application No.
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`App|icant(s)
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`10/708,420
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`SCATES ET AL.
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`_
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`Art Unit
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`1621 -
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS.
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event, however. may a reply be timely filed
`.
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may,reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)[Z Responsive to communication(s) filed on 20 September 2006.
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`2a)E] This action is FINAL.
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`2b)EI This action is non-final.
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`3)E] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)E] Claim(s')1_-41_1is/are pending in the application.
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`4a) Of the above c|aim(s) 1 is/are withdrawn from consideration.
`5)lj Claim(s) __ is/are allowed.
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`6) Claim(s) 1-4 6-8 10-12 14-20 22-27 29-31 33-37 and 39-41 is/are rejected.
`7)IZ Claim(s) 5 9 13 21 28 32 and 38 is/are objected to.
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`8)E] Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`9)D The specification is objected to by the Examiner.
`10)|:] The drawing(s) filed on __ is/are: a)EI accepted or b)E] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11)['_-I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)EI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`_a)EI All b)[j Some * c)I:] None of:
`1.[] Certified copies of the priority documents have been received.
`2.l:] Certified copies of the priority documents have been received in Application No.
`3.l:] Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`vAttachment(s)
`4) D Interview Summary (PTO-413)
`1) E] Notice of References Cited (PTO-892)
`Papet N0(5)/Ma" D3‘e- __ -
`2) [:1 Notice of Draflsperson's Patent Drawing Review (PTO-948)
`5) D Notice Of '"f°"“a' F’3le'" APP"°a“°"
`3) [:1 Information Disclosure Statement(s) (PTO/SB/O8)
`6) C] Other:
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`r
`Paper No(s)/Mail Date
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`U.S. Patent and Tradenark Office
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`PTO’-'325 (ReV- 08-05)
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`Part of Paper No./Mail Date 20061002
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`Office Action Summary -
`2
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` 2
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`

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`Application/Control Number: 10/708,420
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`Page 2 4
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`Art Unit: 1621
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`DETALED ACTION
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`The Terminal Disclaimer filed on 9/8/06 overcomes the provisional obviousness-type
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`double patenting rejection of claims 1-41.
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`Amendments to claims 16, 26 and. 31 overcome the rejection of the said claims as being
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`indefinite under 35 USC 112. Rejection of claims 16, 26 and 31 under 35 USC 112 is
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`withdrawn.
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`Rejection of claims 1-4, 2-8, 10-12, 14-20, 22-27, 29-31, 39-41 under 35 USC 103(a) '
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`made over Singh et al (US 6,143,930) in view of Allison (Organic Chemistry Laboratory
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`A
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`ll. Chemistry 3712/3612, spring 2003 Edition, University of Arkansas) is maintained and
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`is made final. The text of the 35 USC 103(a) rejection is quoted below.
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`Rejection 35 USC 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as
`set forth in section 102 of this title, 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 negatived by the manner in which the invention
`‘ was made.
`4
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`Claims 1-4, 6-8, 10-12, 14-20, 22-26, 27, 29-31, 33-37, 39-41 are rejected under
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`35 U.S.C. 103(a) as being unpatentable over Singh et al. (US 6,143,930) in view of
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` 3
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`

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`Application/Control Number: 10/708,420
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`Page 3
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`Art Unit: 1621
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`Allison (Organic Chemistry Laboratory ll, Chemistry 3712/3612, spring 2003 Edition,
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`department of Chemistry and Biochemistry University of Arkansas, pages 1-35)
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`The instant application claims a method of removal of permanganate reducing
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`compounds (PRC) from methanol carbonylation process stream. Limitations recited in
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`the claims include: multiple extractions, removal of acetaldehyde and a step of forming
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`dimethyl ether in the last distillation column.
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`Scope of prior an‘
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`«Singh et al teach a method of removing permanganate reducing compounds from
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`a carbonylation process stream.
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`In their process, acetaldehyde and other PRCs are
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`removed from the process stream (column 11, lines 46-48 for acetaldehyde). Singh et
`al. also teach subjecting the process stream from the top of the last distillation column to
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`a condensation followed by an extraction (column 11, line 45).
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`Ascertaining the difference between prior art and the instant claims
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`Singh et al teach directing the iodide rich stream to the extractor for further
`purification. However, they do not specifically mention performing two consecutive
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`extraction steps as applicant claims in independent claims 1, 17 and 30. They also do
`not teach forming dimethyl ether in the last distillation column.
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`Secondary reference
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`Allison teaches that multiple extractions give more product or purer product or
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`both, when compared to a single extraction (see middle of page 28).
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`Application/Control Number: 10/708,420
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`Page 4
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`Art Unit: 1621
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`Obviousness
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`A person of ordinary skill in the art wishing to improve the separation of methyl
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`iodide from acetaldehyde would be motivated to repeat the extraction taught by Singh et
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`al. Extracting multiple times is very common in the art, as shown by Allison, and the
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`person attempting to «do so would have a reasonable expectation _of succeeding in
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`improving the separation by performing additional extractions.
`According to the applicant dimethyl ether is formed when water is added to the
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`distillation column (page 33 lines 10-11 of the specification). Singh et al. teach that
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`water is already present in the said distillation (column 9 lines 48-50) therefore one of
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`ordinary skill in the art would expect dimethyl etherto be formed in theprocess
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`described by Singh et al and the said process would provide dimethyl ether to the
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`second overhead and subsequently to the extractors, thereby increasing the amount of
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`methyl iodide removed from the aqueous streams.
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`Response to Applicants Remarks
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`In Remarks filed on 9/18/06, the applicant argues that adding the second
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`distillation to the process taught by Singh et al. is not obvious. On page 8, lines 8-9,
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`applicant alleges that combining Allison and Singh lacks motivation. Multiple
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`extractions are common in the art and are well recognized as an effective technique of
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`performing purification. Allison is used here as a reference which teaches that the
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`multiple extraction yields better results when compared to a single extraction, which is
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`the motivation for performing the multiple extraction.
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` 5
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`Application/Control Number: 10/708,420
`Art Unit: 1621
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`'
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`Page 5
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`Applicant argues that multiple extraction require additional solvent, equipment
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`and energy expenditures (page 8, lines 10-11). - Once again, according to Allison and as
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`well known in the art, multiple extractions furnish better results. Additional expenditures
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`the applicant refers to provide additional profit by increasing the efficiency of the
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`process described by Singh and are therefore not considered as a valid argument to
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`show non—obviousness.. By applicants’ own admission, the concentration of methyl
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`iodide in the process of Singh is higher (2%) than in the process where an additional
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`4
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`extraction is performed (1.8%, without the addition of dimethyl ether) (page 8, lines 13-
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`15).
`3
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`Applicant also argues that presence of dimethyl ether (DME) improves theyield
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`of the desired compound. While numerous methods of introducing additional dimethyl
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`ether to the process are described in the specification, none of the said methods or the
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`dimethyl ether itself is included as limitations in the independent claims. Since this
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`argument does not address the limitations of the rejected claims, it not considered.
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`In light of the above argument, rejection under 35 USC 103(a) of claims 1-4, 6-8,
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`10-12, 14-20, 22-27, 29-31, 33-37 and 39-41 is maintained and is made final.
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`Claim Objections
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`Claims '5, 9, 13, 21, 28, 32 and 38 are objected to as being dependent upon a
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`rejected base claim, but would be allowable if rewritten in independent form including _‘all
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`of the limitations of the base claim and any intervening claims.
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` 6
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`

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`Application/Control Number: 10/708,420
`Art Unit: 1621
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`A
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`Page 6
`-
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`Conclusion
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`-Claims 1-41 are pending.
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`-Claims 1-4, 6-8, 10-12, 14-20, 22-27, 29-31, 33-37 and 39-41 are rejected.
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`-Claims 5, 9, 13, 21, 28, 32 and 38 are objected to.
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`THIS ACTION IS MADE FINAL. Applicant isreminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action." In the event a first reply is filed within
`TWO MONTHS of the mailing date of this final’ action and the advisory action is not
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`mailed ‘until after the end of the THREE—MONTH shortened statutory period, then the
`shortened statutory period will expireon the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Yevgeny Valenrod whose telephone number is 571-272-
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`9049. The examiner can normally be reached on 8:30am-5:00pm M-F.
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`A
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Thurman Page can be reached on 571-272-0602.‘ The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 10/708,420
`Art Unit: 1621
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`I
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`Page 7
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`Formore information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`"
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`.
`
`Yevgeny Valenrod
`Patent Examiner
`Technology Center 1600
`
`,
`Tl-IURMAN K. PAGE
`z SUPERVISORY P
`““”E
`
`
`Thurman Pag
`Supervisory Patent Examiner
`Technology Center 1600
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`R
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`T
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`L
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