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 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.
Claim 1 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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, 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.
Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Underwood et al (US 5,397,582) in view of Meyers et al (WO 2012/115754).
The instant claim is drawn to a process for the thermolytic fragmentation of a sugar into a C1-C3 oxygenate through a series of steps.
Underwood et al teach a process wherein a sugar, e.g. glucose, sucrose, dextrose, starch, etc. is pyrolyzed at a temperature of at least 400° C to form hydroxyacetaldehyde. The pyrolysis occurs in a fluidized bed reactor vessel with an upwards flow of vapors, wherein a particulate heat transfer medium, e.g. sand is employed. The stream comprising the heat transfer medium and pyrolysis vapor is sent with upflow from the reactor to a primary cyclone separator wherein the heat transfer medium is removed from the raw product vapor and recycled to the reactor. The resulting stream of hot vaporous pyrolysis product is directed to a secondary cyclone separator through a conduit that feeds the product comprising condensable and noncondensable vapors to a first condenser where the pyrolysis product is immediately quenched using the pyrolysis liquid as a quenching medium. The condensed pyrolysis is fed to a pump and sent to a heat exchanger indirectly cooled by water (col. 9, line 29 to col. 12, line 30).
The primary difference between Underwood et al and the instant process is that Underwood et al do not teach that particles separated from the product are reheated and then recirculated back to the pyrolysis reactor. However, Myers et al teach pyrolysis methods for decomposing biomass using a solid heat carrier, e.g. sand, wherein the pyrolysis reaction mixture is, like the process taught by Underwood et al, operated with the flow of the reaction mixture in an upward direction using a transport gas containing little or no oxygen. The pyrolysis effluent, solid heat carrier, and products are removed from the upper section of the reactor. Condensables and noncondensables may be recovered after separation of solids, including char and the heat carrier. Cooling to promote condensation, and possibly further separation steps are used to provided one or more liquid pyrolysis products, e.g. raw pyrolysis oil which contains oxygenates such as hydroxyaldehydes, hydroxyketones, sugars, acids, etc. Importantly, the separated solids-enriched portion of the pyrolysis product is reheated in a reheater and recycled back to the pyrolysis reactor (0010-0012; 0018-0023; 0027).
As such, the instant claim is rendered obvious by the combined reference teachings, since Meyers et al teach that in a similar pyrolysis process as taught by Underwood et al, separated solid particles (which includes heat carrier) may be reheated and returned to the pyrolysis reactor in order to better control heating the of the pyrolysis reactor, as well as better control of heat removal from the system.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 2 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 13 of prior U.S. Patent No. 10,570,078. This is a statutory double patenting rejection.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of U.S. Patent No. 10,570,078. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a process for thermolytic fragmentation of sugars into C1-C3 oxygenates by the same process steps. The difference is that instant step (f), which recites separation of a fraction of particles to produce a particle lean fragmentation product does not comprise the particulars of the particle separator that are recited in step (f) of the ‘078 patent. However, the instant claims is rendered obvious by the recited claims of the ‘078 patent since the system recited in claim 13 of the ‘078 patent for conducting the process taught therein includes the particulars of the particle separator, and as such, as person having ordinary skill in the art would have found it obvious that step (f) of the present invention would have been conducted using the particular particle separator recited by the ‘078 patent to conduct the process of the present invention, since the actual process steps are the same as those set forth in the patent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached on M-F 9am-9pm IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandon Fetterolf can be reached on 571-272-2919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1622
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