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 .
Status of the Rejection
All 35 U.S.C. 103 rejections from the previous office action are withdrawn.
The non-statutory double patenting rejection rejections of claims 1-4 and 8 are maintained.
Double Patenting
Claims 1-4 and 8 of this application are patentably indistinct from claims 1,2, 11, and 15 of Application No. 17/596,027, now US Patent 12351926. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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).
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Application No. 17/596,027. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same limitations, but use different words.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Application No. 17/596,027. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same limitations, but use different words.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Application No. 17/596,027. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same limitations, but use different words.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Application No. 17/596,027. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same limitations, but use different words.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Application No. 17/596,027. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same limitations, but use different words.
Response to Arguments
Applicant's arguments in the Remarks, filed 10/29/25, with respect to the 35 U.S.C. § 103 rejections have been fully considered and are persuasive. In particular, Applicant argues that Shi et al. does not disclose hydrocarbon pyrolysis to produce hydrogen and using the hydrogen produced from pyrolysis. While Shi et al. teaches mixing carbon monoxide with hydrogen, Shi et al. is silent to carrying out pyrolysis of hydrocarbons. Applicant further argues that Fulde provides hydrogen produced from water electrolysis for combining with carbon dioxide and not pyrolytic hydrogen mixing with carbon dioxide from electrolytic production of aluminum. Applicant’s arguments are persuasive, therefore, the rejection under 103 is withdrawn.
The nonstatutory double patenting rejections are maintained because the claims at issue though not identical they are not patentably distinct from the claims of U.S. Application No. 17/596,027, now US Patent 12351926. This double patenting rejection can be overcome by filing a terminal disclaimer.
To expedite the prosecution of this application, it is suggested that the applicant delete or amend the limitation “and/or at least one other chemical of value” in claim 4. The limitation is deemed to be indefinite since a “chemical of value” is a relative term. In addition, it is suggested that the applicant cancel withdrawn claims 10-18.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE 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 mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN V VAN whose telephone number is (571)272-8521. The examiner can normally be reached Monday-Friday 8:30-5:00.
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, Patricia Mallari can be reached at (571) 272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LUAN V. VAN
Supervisory Patent Examiner
Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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