DETAILED ACTION
This detailed action is in response to the amendments and arguments filed on 02/28/2025, and any subsequent filings.
Notations “C_”, “L_” and “Pr_” are used to mean “column_”, “line_” and “paragraph_”.
Claim 3 is cancelled. Claims 1-2, 7-8, 15, 17, 24-25, 32-33, 35, 37-39, 46, 48, 56-57, 64-66 and 70-71 are pending.
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 .
Response to Arguments
Claim Rejections - 35 USC § 102
Applicant's arguments filed 02/28/2025 have been fully considered and they are persuasive.
Claims 1-3, 8, 15, 17, 25, 32, 65-66 and 70-71
The Applicant argues that Jessop fails to teach complex compositions comprising an amine or ammonium salt containing compound and a carboxylic acid or an alkylsulfonic acid containing compound, as well as a solvent comprising an enolisable carbonyl, an amine containing compound, and water (pgs. 14-15). This is persuasive. The rejections of Claims 1-3, 8, 15, 17, 25, 32, 65-66 and 70-71 have been removed.
Claims 33, 37, 39 and 46
The Applicant argues that reference Baniel relates to acid extraction (pgs. 16-17). This is persuasive.
Claim Rejections - 35 USC § 103
Applicant's arguments filed 02/28/2025 have been fully considered and they are persuasive.
Claim 7
The Applicant argues against the reference Glazer because Glazer teaches an imidate ester rather than an anime or ammonium compound (pgs. 17-20) and because Glazer is not analogous to the claimed invention of the instant application (pgs. 17-20). This is persuasive.
Claim 24
The Applicant argues against reference Resendes because Resendes does not teach drying solvents by removal of water (pgs. 20-22). This is unpersuasive as the composition of Resendes dries as a result of water evaporation (Resendes, [0148]), which is being interpreted as a type of solvent drying by water removal.
Claims 35 and 56-57
The Applicant argues that the ketone of Baniel may include ketones which are not enolisable and Baniel is silent on the feature of an enolisable carbonyl (pg. 23). This is unpersuasive because Baniel does not specify the non-enolisability of the ketone, so the ketone of Baniel is being interpreted to include enolisable and non-enolisable ketones.
The Applicant argues that Baniel involves to acid extraction from aqueous solutions (pg. 23). This is persuasive.
Claim 38
The Applicant argues that Baniel relates to acid extraction (pgs. 23-24). This is persuasive.
Claim 48
The Applicant argues that Baniel and Mariansky relates to recovery of organic acids rather than water recovery (pgs. 24-25). This is persuasive.
Claim 64
The Applicant’s arguments, see remarks, filed 02/28/2025, with respect to claim 64 have been fully considered and are persuasive. The rejection of Claim 64 has been withdrawn.
Response to Amendment
Specification
Due to the Applicant’s amendments, the previous specification objection has been removed.
Claim Objections
Due to the Applicant’s amendments, the previous claim objections have been removed.
However, due to the Applicant’s amendments, new claim objections are submitted below.
Claim 33 is objected to because item (ii) reads “…acetic acid, citric acid glycolic acid, or a combination thereof” which may have intended to read “…acetic acid, citric acid, glycolic acid, or a combination thereof”.
Claim 46 is objected to because Claim 46 reads “the least one amine” which may have intended to read “the at least one amine”.
Claim Rejections - 35 USC § 112
Due to the Applicant’s amendments, the previous 35 USC § 112 rejection has been removed.
However, due to the Applicant’s amendments, new 35 USC § 112 rejections are submitted below.
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.
Claims 1-2, 7-8, 15, 17, 24-25, 32, 35, 56-57, 65-66, and 70-71 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 35 recite the broad recitation -C3-C7 monocyclic, and the claims also recite phenyl which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 8, 15, 17, 24-25, 32, 65-66 and 70-71 are rejected under 35 U.S.C. 103 as being obvious over International Publication WO 2018/067019 A2 (‘Briggs 2’) in view of U.S. Publication US20140076810A1 (‘Jessop’).
The Applicant’s claims are directed towards a composition.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding Claims 1-2, 8, 15, 17, 24-25, 32, 65-66 and 70-71, Briggs 2 teaches a solvent drying composition ([0013-0014], separating one or more solvents, where a solvent can be water [0061]), the composition comprising of:
a) at least one amine or ammonium salt containing compound or a combination thereof ([0093], multiple amines), in a solvent comprising
b) at least one amine containing compound, at least one enolisable carbonyl compound of
Formula II, or a combination thereof ([0054]), and water ([0061]),
c) wherein the enolisable carbonyl compound of Formula II or a combination of enolisable carbonyl compounds of Formula II is
d)
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([0054]), and
i) R1 is independently selected from: a -C1-C7 alkyl, a -C3-C7 monocyclic, and phenyl,
and R2 is independently selected from: a -C2-C7 alkyl, a -C3-C7 monocyclic, and a phenyl ([0054]); or
ii) one of R1 or R2 is a -O-(C1-C7 alkyl) and the other is a -C1-C7 alkyl ([0054]); or
iii) R1 and R2 together with the carbonyl of Formula II form a 3-15 membered monocyclic ketone, a 3-15 membered monocyclic heterocyclic ketone, or acetophenone ([0054]); and
wherein if R1 is -C1-C7 alkyl, R1 may be optionally substituted with substituents selected from: -OH, -C1-C7 alkyl, -(C1-C7 alkyl)-OH, -NH2, -NH(C1-C7 alkyl), -N(C1-C7 alkyl)2, -C(O)OH; -C(O)-H, and -C(O)-(C1-C7 alkyl) ([0038]); and
wherein in use water in the solvent is released to form an immiscible aqueous layer with the solvent drying composition ([0063], thermo-responsive solution becomes immiscible with the one or more solvents, where a solvent can be water ([0061])).
However, Briggs 2 does not teach a complex of at least one amine of ammonium salt containing compound or a combination thereof, and at least one carboxylic acid containing compound or an alkylsulfonic acid, or a combination thereof.
Jessop also relates to a solvent drying composition ([0336] and [0367]), including a complex of at least one amine of ammonium salt containing compound or a combination thereof, and at least one carboxylic acid containing compound ([0703]) or an alkylsulfonic acid, or a combination thereof.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the complex of Jessop with in the composition of Briggs 2 in order to increase the ionic strength and force solvents from aqueous solution (Jessop, [0368-0369]).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Additional Disclosures Included:
Claim 2: the carboxylic acid containing compound is selected from one or more of the following:
a) compound of Formula I,
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i. wherein R * is selected from: -C1-C7 alkyl-OH, -C1-C7 alkyl, -C1-C7 alkyl-NH2, -C1-C7 alkyl-NHR3 and -C1-C7 alkyl NR3R4, wherein each R3 and R4 are selected from: -H, -OH, -halo, -C1-C7 alkyl, -C1-C7 alkyl-OH, -C(O)OH, -C(O)-H,or -C(O)-(C1-C7 alkyl); or
ii. wherein the compound of Formula I is acetic acid, citric acid, glycolic acid and a combination thereof;
b) a polymer containing one or more carboxylic acid groups (Jessop, [0703], (Polyacrylic Acid), 3-(Dimethylamino)-1-Propylammonium Salt).
Claim 8: the complex has a molar ratio of (i) the at least one amine or ammonium salt containing compound or a combination thereof, to (ii) the at least one carboxylic acid containing compound or an alkylsulfonic acid or a combination thereof, and wherein the molar ratio is selected from:
(a) about 1:99 or 99:1;
(b) about 1:50 or 50:1;
(c) about 1:10 or 10:1;
(d) about 1 :5 or 5: l;
(e) about 1:3 or 3:1;
(f) about 1:2 or 2:1; and
(g) about 1:1 ((Polyacrylic Acid), 3-(Dimethylamino)-1-Propylammonium Salt prepared by reacting 13.88 mmol of polyacrylic acid and 13.91 mmol of 3 -(dimethylamino)-1- propylamine (Jessop, [0703-0704])).
Claim 15: the at least amine containing compound of the solvent, may be the same or different (Briggs 2, [0049]) from the amine containing compound in the complex.
Claim 17: the at least one amine containing compound is selected from the following:
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(Briggs 2, [0049]).
Claim 24: the enolisable carbonyl compound of Formula II is 2-butanone (Briggs 2, [0055]).
Claim 25: the solvent has a molar ratio of (i) the at least one amine containing compound, or a combination thereof to (ii) the one or more enolisable carbonyls of Formula II or combination thereof, and wherein the molar ratio is selected from:
(a) about 1:99 or 99:1;
(b) about 1:50 or 50:1;
(c) about 1:10 or 10:1;
(d) about 1 :5 or 5: l;
(e) about 1:3 or 3:1;
(f) about 1:2 or 2:1; and
(g) about 1:1 (Briggs 2, [0060]).
Claim 32: the complex is irreversibly protonated ((Polyacrylic Acid), 3-(Dimethylamino)-1-Propylammonium Salt (Jessop, [0703-0704]) includes primary amine, which unsuccessfully switch back to the non-ionized form (Jessop, [0590])).
Claim 65: A method of releasing water from a solvent, the method including the steps of:
a) preparation of the solvent drying composition of claim 1 (see analysis of Claim 1), or
b) contacting the solvent with a complex composition as claimed in claim 33 (see analysis of Claim 33); and
c) allowing the migration of the solvent drying composition or the complex composition through the solvent, whereupon the water is released from the solvent forming an immiscible aqueous layer with the solvent (Briggs 2, [0067-0071]).
Claim 66: the step of separating the immiscible aqueous layer and the solvent (Briggs 2, [00103]).
Claim 70: the step of contacting the solvent with one or more solvent drying compositions or one or more complex compositions, iteratively, to iteratively release water therefrom (Briggs 2, [00103]).
Claim 71: the solvent is contacted with one or more solvent drying compositions or one or more complex compositions iteratively in a counter-current process (Jessop, [0336-0339]).
Claim 7 is rejected under 35 U.S.C. 103 as being obvious over International Publication WO 2018/067019 A2 (‘Briggs 2’) in view of U.S. Publication US20140076810A1 (‘Jessop’) as applied to claim 1 above, and further in view of U.S. Publication US20180008933A1 (‘Hu’).
The Applicant’s claim is directed towards a composition.
Regarding Claim 7, the combination of Briggs 2 and Jessop teaches the composition of Claim 1.
However, the combination of Briggs 2 and Jessop does not teach that the alkylsulfonic acid is isethionic acid.
Hu also realtes to a composition (abstract), where the alkylsulfonic acid is isethionic acid ([0067], the anion may be alkylsulfate functionalized by an OH group).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the alkylsulfonic acid of the combination of Briggs 2 and Jessop to be isethionic acid, as demonstrated by Hu, to recover water (Hu, [0057]).
Claims 33, 35, 39, 46, 48, 56-57 are rejected under 35 U.S.C. 103 as being obvious over International Publication WO 2018/067019 A2 (‘Briggs 2’) in view of U.S. Publication US20140158621A1 (‘Lee’).
The Applicant’s claims are directed towards a composition.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding Claims 33, 35, 39, 46, 48, 56-57, Briggs 2 teaches a complex composition ([0054]) comprising:
a. at least one amine or ammonium salt containing compound or a secondary or tertiary amine containing compound or a combination thereof ([0093], multiple amines); and
the complex being suitable for use in recovering water from a solvent, wherein water is released from the solvent upon migration of the complex composition through the solvent, the released water forming an immiscible aqueous layer with the solvent and wherein the solvent comprises ([0013-0014], separating one or more solvents, where a solvent can be water [0061]):
a) at least one amine containing compound or at least one secondary or tertiary amine containing compound ([0054]),
b) at least one enolisable carbonyl ([0054]), and
c) water ([0061]).
b. at least an alkylsulfonic acid; or at least one carboxylic acid containing compound of
Formula I, or a combination thereof;
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(i) wherein R * is selected from: -C1-C7 alkyl-OH, -C1-C7 alkyl, -C1-C7 alkyl-NH2, -C1-C7 alkyl-NHR3 and -C1-C7 alkyl NR3R4, wherein each R3 and R4 are selected from -H, -OH, -halo, -C1-C7 alkyl, -C1-C7 alkyl-OH, -C(O)OH, -C(O)-H, and -C(O)-(C1-C7 alkyl); or
(ii) wherein the compound of Formula I is acetic acid, citric acid, glycolic acid, or a combination thereof;
However, Briggs 2 does not teach b. at least an alkylsulfonic acid; or at least one carboxylic acid containing compound of
Formula I, or a combination thereof;
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(i) wherein R * is selected from: -C1-C7 alkyl-OH, -C1-C7 alkyl, -C1-C7 alkyl-NH2, -C1-C7 alkyl-NHR3 and -C1-C7 alkyl NR3R4, wherein each R3 and R4 are selected from -H, -OH, -halo, -C1-C7 alkyl, -C1-C7 alkyl-OH, -C(O)OH, -C(O)-H, and -C(O)-(C1-C7 alkyl); or
(ii) wherein the compound of Formula I is acetic acid, citric acid, glycolic acid, or a combination thereof.
Lee also relates to a composition (abstract), including:
b. at least an alkylsulfonic acid; or at least one carboxylic acid containing compound of
Formula I, or a combination thereof;
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([0015] and [0032])
(i) wherein R * is selected from: -C1-C7 alkyl-OH, -C1-C7 alkyl, -C1-C7 alkyl-NH2, -C1-C7 alkyl-NHR3 and -C1-C7 alkyl NR3R4, wherein each R3 and R4 are selected from -H, -OH, -halo, -C1-C7 alkyl, -C1-C7 alkyl-OH, -C(O)OH, -C(O)-H, and -C(O)-(C1-C7 alkyl); or
(ii) wherein the compound of Formula I is acetic acid, citric acid, glycolic acid, or a combination thereof.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the carboxylic acid of Formula I of Lee in the complex composition of Briggs 2 to separate water from an unpurified water (Lee, [0058]. Note that both Briggs 2 and Lee involve treating unpurified waters including seawater and industrial wastewater (Briggs 2, [0065] and Lee, [0063])).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Additional Disclosures Included:
Claim 35: the at least one enolisable carbonyl is of Formula II
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(Briggs 2, [0054])
wherein
a) R1 is independently selected from: a -C1-C7 alkyl, a -C3-C7 monocyclic, and a phenyl and R2 is independently selected from a -C2-C7 alkyl, a -C3-C7 monocyclic, and a phenyl; or
b) one of R1 or R2 is selected from: a -O-(C1-C7 alkyl) and the other is selected from a -C1-C7 alkyl, or
c) R1 and R2 together, with the carbonyl of Formula I, form a 3-15 membered monocyclic ketone or a 3-15 membered monocyclic heterocyclic ketone or acetophenone;
wherein if R1 is -Cl-C7 alkyl, R1 may be optionally substituted with one or more substituents selected from -OH, -Cl-C7 alkyl, -(Cl-C7 alkyl)-OH, -NH2, -NH(Cl-C7 alkyl),-N(Cl-C7 alkyl)2, -C(O)OH, -C(O)-H, and -C(O)-(C l-C7 alkyl).
Claim 39: having a molar ratio of (i) the at least one amine or ammonium salt containing compound, or a combination thereof to (ii) the at least one carboxylic acid containing compound or an alkylsulfonic acid, or a combination thereof, and wherein the molar ratio is selected from:
(a) about 1:99 or 99:1;
(b) about 1:50 or 50:1;
(c) about 1:10 or 10:1;
(d) about 1:5 or 5: l;
(e) about 1:3 or 3:1;
(f) about 1:2 or 2:1; and
(g) about 1:1 ((Polyacrylic Acid), 3-(Dimethylamino)-1-Propylammonium Salt prepared by reacting 13.88 mmol of polyacrylic acid and 13.91 mmol of 3 -(dimethylamino)-1- propylamine (Jessop, [0703-0704])).
Claim 46: the least one amine containing compound of the solvent, may be the same or different from the at least one amine containing compound in the complex, and wherein the amine is a tertiary amine containing compound (Briggs 2, [0093]).
Claim 48: the tertiary amine containing compound is selected from the following:
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(Briggs 2, [0049]).
Claim 56: the enolisable carbonyl compound of Formula II is 2-butanone (Briggs 2, [0055]).
Claim 57: the solvent has a molar ratio of (i) the at least one tertiary amine containing compound, or a combination thereof to (ii) the one or more enolisable carbonyls of Formula II, and wherein the molar ratio is selected from:
(a) about 1:99 or 99:1;
(b) about 1:50 or 50:1;
(c) about 1:10 or 10:1;
(d) about 1 :5 or 5: l;
(e) about 1:3 or 3:1;
(f) about 1:2 or 2:1; and
(g) about 1:1 (Briggs 2, [0060]).
Claims 37-38 are rejected under 35 U.S.C. 103 as being obvious over International Publication WO 2018/067019 A2 (‘Briggs 2’) in view of U.S. Publication US20140158621A1 (‘Lee’) as applied to claim 33 above, and further in view of U.S. Publication US20180008933A1 (‘Hu’).
The Applicant’s claim is directed towards a composition.
Regarding Claim 37, the combination of Briggs 2 and Lee teaches the complex of Claim 33.
However, the combination of Briggs 2 and Lee does not teach that the carboxylic acid containing compound of Formula I is selected from: acetic acid, citric acid, glycolic acid and a combination thereof.
Hu also relates to a complex (abstract), wherein the carboxylic acid containing compound of Formula I (Fig. 10, [0067], anion includes conjugate base of a carboxylic acid)is selected from: acetic acid ([0067], R group in carboxylic acid of Fig. 10 can be H), citric acid, glycolic acid ([0067], R group in carboxylic acid of Fig. 10 can be OH) and a combination thereof.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the carboxylic acid containing compound of Formula I of the combination of Briggs 2 and Lee to be acetic acid or glycolic acid, as demonstrated by Hu, to recover water (Hu, [0057]).
Regarding Claim 38, the combination of Briggs 2 and Lee teaches the complex of Claim 33.
However, the combination of Briggs 2 and Lee does not teach that the alkylsulfonic acid is isethionic acid.
Hu also realtes to a complex (abstract and [0010]), where the alkylsulfonic acid is isethionic acid ([0067], the anion may be alkylsulfate functionalized by an OH group).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the alkylsulfonic acid of the combination of Briggs 2 and Lee to be isethionic acid, as demonstrated by Hu, to recover water (Hu, [0057]).
Claim 64 is rejected under 35 U.S.C. 103 as being obvious over International Publication WO 2018/067019 A2 (‘Briggs 2’) in view of U.S. Publication US20140158621A1 (‘Lee’) as applied to claim 33 above, and further in view of U.S. Publication US20140076810A1 (‘Jessop’).
The Applicant’s claim is directed towards a composition.
Regarding Claim 64, the combination of Briggs 2 and Lee teaches the complex of Claim 33.
However, the combination of Briggs 2 and Lee do not teach that the complex is irreversibly protonated.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the complex of Briggs 2 and Lee can be irreversibly protonated, as demonstrated by Jessop ((Polyacrylic Acid), 3-(Dimethylamino)-1-Propylammonium Salt (Jessop, [0703-0704]) includes primary amine, which unsuccessfully switch back to the non-ionized form (Jessop, [0590])), in applications where a single switch to the ionic form, without conversion back to the non-ionized form, is sufficient (Jessop, [0590]). Note that the (Polyacrylic Acid), 3-(Dimethylamino)-1-Propylammonium Salt (Jessop, [0703-0704]) of Jessop also possesses a tertiary amine group and Briggs 2 involves tertiary amines (Briggs 2, [0011-0012]).
Double Patenting
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.
Claims 33, 35, 37-39, 46, 48, 56-57, 64-66, and 70-71 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Application No. 18/013,852. Although the claims at issue are not identical, they are not patentably distinct from each other because Application 18/013,852 discloses a solvent drying solution, the solution comprising at least one amine, at least one carboxylic acid or an alkylsulfonic acid (claims 1-2). In Application 17/599,284, the carboxylic acid of Formula I reads on the carboxylic acid of Formula I in Application 18/013,852 (claim 2). This is a provisional nonstatutory double
patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BOI-LIEN THI NGUYEN whose telephone number is (703)756-4613. The examiner can normally be reached Monday to Friday, 8 am to 6 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, Bobby Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BOI-LIEN THI NGUYEN/Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
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