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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 November 2025 has been entered.
Status of the Claims
Claims 16 and 18-31 are pending.
Claim 16 is currently amended.
Claim 31 is new.
Claim 17 is currently cancelled.
Claims 1-15 are previously cancelled.
Claims 16 and 18-31 are herein examined on the merits.
Response to Amendments
Applicant’s amendments filed 25 November 2025 are acknowledged.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 16 adding claim 17 drawn to the location of the density measurement to claim 16 is not sufficient to overcome the rejection of:
Claims 16-27, 29, and 30 under 35 U.S.C. 103 as being unpatentable over Papp et al. (US20150141702, cited by applicants 14 October 2022, hereinafter Papp ‘702) in view of Junya et al. (JP2014125533, see machine translation, hereinafter Junya); and,
Claim 28 under 35 U.S.C. 103 as being unpatentable over Papp et al. (US20150141702, cited by applicants 14 October 2022, hereinafter Papp ‘702) in view of Junya et al. (JP2014125533, see machine translation, hereinafter Junya), as applied to claims 16-27, 29, and 30 in the 35 USC 103 rejection above, in further view of Min et al. (CN102323748, see machine translation, hereinafter Min).
Due to applicant’s persuasive arguments throughout the remarks filed on 25 November 2025 with respect to Junya rendered moot, see the response to arguments below, the cancellation of claim 17, and newly added claim 31, the rejections are withdrawn. A new ground(s) of rejection is/are provided below.
Double Patenting Rejections
Applicant’s amendment to claim 16 adding claim 17 drawn to the location of the density measurement to claim 16 is not sufficient to overcome the rejection of:
Claims 16-27 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7, and 10 of U.S. Patent No. 9,115,069 B2 to Papp et al. (hereinafter Papp ‘069) in view of Junya et al. (JP2014125533, see machine translation, hereinafter Junya);
Claim 28 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,115,069 B2 to Papp et al. (hereinafter Papp ‘069) in view of Junya et al. (JP2014125533, see machine translation, hereinafter Junya) and Min et al. (CN102323748, see machine translation, hereinafter Min); and,
Claims 29 and 30 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,115,069 B2 to Papp et al. (hereinafter Papp ‘069) in view of Junya et al. (JP2014125533, see machine translation, hereinafter Junya) and Grenacher et al. (US6723884, cited by applicants 14 October 2022, hereinafter Grenacher).
Due to applicant’s arguments throughout the remarks filed on 25 November 2025 with respect to Junya rendered moot, see the response to arguments below, the cancellation of claim 17, and newly added claim 31, the double patenting rejections are withdrawn. A new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 25 November 2025 have been fully considered but some are not persuasive and the others are rendered moot.
Applicant’s argue that Papp ‘702, Junya, and Min do not disclose the limitations as recited in amended claim 16; however, most of applicant’s arguments throughout the remarks filed on 25 November 2025 are specifically directed to Junya.
The arguments with respect to Junya have been considered but are moot because the new ground of rejection does not rely on the Junya reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s request for clarity and arguments on pages 5-6 of the remarks filed on 25 November 2025 that “it is unclear where in the pending rejection the Examiner addressed this limitation” in claim 17, and “Papp discloses only the measurement of the temperature, and says nothing about measuring the density”. Patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123.
As stated on page 8 of the previous office action dated 27 August 2025 (hereinafter POA), Papp ‘702 teaches “controlling the flow rate of the second stream in accordance with a temperature which is measured at a point in the bottom of the reactor or in a line leading out of the bottom of the reactor by thermocouple 8, see Abstract, Claims 1, 2, and Paras. [0016];[0021]-[0022];[0043];[0053], where the temperature is measured in the bottom of the reactor, the measurement can be carried out at a point at which the aqueous phase, being the phase of higher specific density, collects, see Paras. [0022];[0054]-[0055] and Fig. 1”. To clarify, Papp ‘702 teaches the temperature is measured by thermocouple 8 “in a line leading out of the bottom of the reactor”, see Fig. 1; Para. [0021]; Claims 1 and 2. Papp ‘702 also teaches the temperature measurement is related to the density of the phases and other control variables can be captured for input into the control process, see Paras. [0021]-[0022], such as the mass flow of the cobalt(II) aqueous salt solution is the same as the “mass flow” of the organic output from a reactor, see Para. [0043], suggesting another parameter for measurement besides temperature is density. Therefore, applicant’s above argument regarding Papp ‘702 saying nothing relating to measuring the density is not persuasive.
As stated on pages 10-11 of the POA, Papp ‘702 does not specifically teach measuring the density. Junya is applied to teach “processing and separating hydrocarbons by mass flow, density, and temperature measurement, see Abstract; Fig. 1; Paras. [0011]-[0013]” and “it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the temperature flow control parameter of Papp ‘702 with the density mass flow control parameter of Junya with a reasonable predictability of success for the purpose of controlling the reaction rate by measuring a flow parameter within the system, such as the closely related parameters of density and temperature, in order to measure the concentrations of the components in the process stream and to adjust the flow rate of the process stream based on the measurement of the concentrations of the components in the process stream, see Junya, Paras. [0068]-[0071]”. Therefore, pages 8 and 10-11 of the POA detail the combination of Papp ‘702 and Junya teaching the claim 17 limitations of “wherein the density of the second stream is measured in the line leading out of the bottom of the reactor”. Therefore, the POA addressed the limitations in previous instant application claim 17.
Interview Request
In response to applicant’s interview request on page 8 of the remarks filed on 25 November 2025, due to USPTO examiner response times, an interview could not be scheduled prior to the mailing of this office action. The examiner invites the applicant to request an interview using the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Double Patenting Rejections
As stated above, due to applicant’s arguments throughout the remarks filed on 25 November 2025 with respect to Junya rendered moot, see the response to arguments above, the cancellation of claim 17, and newly added claim 31, the double patenting rejections are withdrawn. A new ground(s) of rejection is/are provided below.
New Rejections Based on the RCE filed on 25 November 2025
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.
Claims 21-23 and 26-30 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 21 and 22 recite the limitation “the measured density of the second stream” and depend from cancelled claim 17. There is insufficient antecedent basis for these limitations in the claims and the claims depend from a cancelled claim. Claims 21 and 22 are interpreted to depend from claim 16.
Claim 26 recites in line 4 “the second stream”. There is insufficient antecedent basis for this limitation in the claim. Claim 26 depends from claim 25, Claim 25 states “an aqueous phase-containing second stream is withdrawn from the bottom of the post- reactor”. Claim 25 depends from claim 24. Claim 24 states “the second stream”. Claim 24 depends from claim 16. Claim 16 states “an aqueous phase-containing second stream is withdrawn from the bottom of the reactor”. It is unclear as to which second stream claim 26 refers, the claim 16 bottom of the reactor stream or the claim 25 bottom of the post-reactor stream. The claim 26 recitation of “the second stream” in line 4 is interpreted as “the second stream withdrawn from the bottom of the post-reactor”.
If the language of the claim is such that a person of ordinary skill in the art could
not interpret the metes and bounds of the claim so as to understand how to avoid
infringement, a rejection of the claim under 35 USC 112(b) is appropriate, see MPEP
2173.02.
In this case claims 27-30 recite “a post-reactor”. Claims 27-30 depend from claim 16. Claim 16 makes no mention of a post-reactor. The process involving the post-reactor in which claims 27-30 refer is unclear. For example, does the post-reactor accept only the first stream, only the second stream, both streams, the cobalt catalyst, and/or unreacted olefin of claim 16. Claims 27-30 are interpreted to depend from claim 24.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 23 depends from claim 16 and states “wherein the density of the second stream is measured at least one point in the line leading out of the bottom of the reactor”. Newly amended claim 16 states “the density of the second stream is measured in the line leading out of the bottom of the reactor”. The claim 16 limitation is also drawn to a density measurement in at least one point in the line leading out of the bottom of the reactor. Therefore, claim 23 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
In the Spirit of Compact Prosecution
While the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
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 16, 18-27, and 29-31 are newly rejected under 35 U.S.C. 103 as being unpatentable over Papp et al. (US20150141702, published 21 May 2015, hereinafter Papp ‘702) in view of Henry (US20120137754, published 07 June 2012).
Papp ‘702 is in the known prior art field of hydroformylation of olefins having 6 to 20 carbon atoms in the presence of a cobalt catalyst in the presence of an aqueous phase with thorough mixing in a reactor, see Abstract, where the reaction is carried out in a controlled manner in order to increase the yield of the crude hydroformylation product as a result of stable sustained operation by controlling the computer-based process or manual process of the withdrawal of the aqueous phase from the bottom space of the reactor in order to maintain the desired concentration of catalyst in the reaction zone, see Paras. [0006]-[0007];[0013]-[0017];[0021]; Fig. 1.
Regarding instant application claims 16 and 23, Papp ‘702 teaches “a continuous process for hydroformylation of olefins having 6 to 20 carbon atoms in the presence of a cobalt catalyst in the presence of an aqueous phase with thorough mixing in a reactor wherein a hydroformylation products-containing first stream is withdrawn at the top of the reactor and an aqueous phase-containing second stream is withdrawn from the bottom of the reactor, which process comprises controlling the flow rate of the second stream in accordance with a temperature which is measured at a point in the bottom of the reactor or in a line leading out of the bottom of the reactor”, see Para. [0016], Claim 1; Fig. 1 and Paras. [0047]-[0052], meeting:
The hydroformylation of C6-C20 olefins, cobalt catalyst, aqueous phase, mixing, reactor, top first stream, bottom second stream, and controlling a flow parameter of the second stream in instant application claim 16; and,
Measuring a flow parameter of the second stream at a point in the line leading out of the bottom of the reactor in instant application claim 16 and in instant application claim 23.
Papp ‘702 teaches the temperature measurement is a control variable related to the density of the phases and other control variables can be captured for input into the control process, see Paras. [0021]-[0022], such as the mass flow of the cobalt(II) aqueous salt solution is the same as the “mass flow” of the organic output from a reactor, see Para. [0043], suggesting another control variable/parameter for measurement besides temperature is density.
Regarding instant application claim 19, Papp ‘702 teaches controlling the flow rate of the second stream in accordance with one or more control variables/parameters, such as variables associated with temperature, by measuring one or more control variables/parameters in the line leading out of the bottom of the reactor for input into a control process for the flow rate of the second stream, where the influence of the change in a correcting variable/reference/threshold value on one or more control variables can be stored as a mathematical model or algorithm and are used to determine the correcting interventions/actuating signals for regulating the quantity of the control variable, see Paras. [0021];[0024]-[0026], meeting the controlling variables, reference values, controlling quantities, actuating signals, and controlling the flow parameters in instant application claim 19.
Regarding instant application claims 21 and 22, Papp ‘702 teaches the second stream is withdrawn from the bottom of the reactor by passing it out of the bottom of the reactor through a controllable apparatus, where the controllable apparatus is preferably a valve, the valve is opened as soon as the first threshold value is exceeded, and the valve is closed as soon as the control variables/parameters, such as variables associated with temperature, fall below the second threshold value, and the control unit calculates the control variable difference as compared to the threshold values and transmits a signal to the valve to open/increased mass flow or close/decreased mass flow dependent on the difference, see Paras. [0021];[0024]-[0026]. The second stream is the aqueous phase with a higher specific density, see Paras. [0016];[0022], which will inherently have a mass as it flows, see MPEP 2112, meeting the controlling the flow parameters based on a measured value compared with a predefined reference and increasing or decreasing the mass flow of the second stream based on the control variable difference as compared to the threshold values in instant application claim 21 and in instant application claim 22.
Regarding instant application claims 24 and 25, Papp ‘702 teaches “the first stream and the second stream are passed into a post-reactor”, where “a hydroformylation products-containing first stream is withdrawn at the top of the post-reactor and an aqueous phase-containing second stream is withdrawn from the bottom of the post-reactor”, see claims 5 and 6; Paras. [0039];[0041], meeting the post reactor top stream and bottom stream in instant application claim 24 and in instant application claim 25.
Regarding instant application claim 26, Papp ‘702 teaches wherein the flow rate of the second stream withdrawn from the bottom of the post-reactor is controlled in accordance with control variables/parameters, such as variables associated with temperature, measured in a line leading out of the bottom of the post-reactor, see Claim 7; Paras. [0021];[0024]-[0026];[0041]. The second stream is the aqueous phase with a higher specific density, see Paras. [0016];[0022];[0041], which will inherently have a mass as it flows, see MPEP 2112, meeting the parameter in line measurement of the second stream from the bottom of the post reactor in instant application claim 26.
Regarding instant application claim 27, Papp ‘702 teaches “wherein the first stream and second stream, withdrawn from the reactor or post-reactor, are subjected in the presence of aqueous cobalt(II) salt solution to oxygen treatment wherein the cobalt catalyst decomposes to form cobalt(II) salts which are extracted into the aqueous phase and the phases are then separated”, see Claim 10; Para. [0043], meeting the streams, cobalt treatment, and separation in instant application claim 27.
Regarding instant application claims 29-31, Papp ‘702 teaches the temperature in the reactor and post-reactor are generally 100 to 250° C., the prevailing pressure in the reactor and post-reactor are preferably in the region from 100 to 400 bar, see Paras. [0028];[0040], and the reactors are generally customary reactors for gas-liquid reactions such as e.g. tubular reactors, stirred tanks, gas circulation reactors, bubble columns, loop reactors etc., see Para. [0027], meeting:
Within the temperature range in instant application claim 29;
Within the pressure range in instant application claim 30; and,
The specific reactor type in instant application claim 31.
Papp ‘702 does not specifically teach:
The instant application claim 16 limitations of measuring the mass flow parameter in accordance with density;
The controlled variable is density in instant application claims 19, 21, 22, and 26;
and,
The limitations of instant application claims 18 and 20.
As stated above, Papp ‘702 teaches the temperature measurement is a control variable related to the density of the phases and other control variables can be captured for input into the control process, see Paras. [0021]-[0022], such as the mass flow of the cobalt(II) aqueous salt solution is the same as the “mass flow” of the organic output from a reactor, see Para. [0043]. The second stream is the aqueous phase with a higher specific density, see Paras. [0016];[0022];[0041], which will inherently have a mass as it flows, see MPEP 2112. Papp ‘702 suggests another control variable/parameter for measurement besides temperature is density.
Henry is in the known prior art field of systems and methods for determining concentrations of components of a multiphase fluid by using mass flow, density, and temperature measurements throughout the system, see Abstract; Paras. [0007];[0014]-[0016];[0046]; Figs. 1-3.
Regarding instant application claims 16, 18, 19, 21, 22, and 26, Henry teaches flowmeters for measuring mass flow and density of the fluids within the pipes/lines of reaction processes, such as an alkylation process reaction of isobutane and C4 olefins to form octane or “alkylate”, in order to control the process by knowing the concentration of the components of the mixture, such as the catalyst and the water, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3. The system measures density, mass flowrate, temperature, and other parameters as compared to reference examples to control the concentration of the individual fluids in the lines by opening or closing the desired valve configuration enabling a rapid, dynamic response to changes in the proportion of the individual fluids in the pipes/lines from both top and bottom streams, see Paras. [0006]-[0007];[0014]-[0016];[0020]-[0024];[0038];[0046]; Figs. 1-3, meeting:
Measuring the mass flow parameter in accordance with density in a bottom stream and the controlled variable is density in instant application claim 16, in instant application claim 18, in instant application claim 19, in instant application claim 21, in instant application claim 22, and in instant application claim 26.
Regarding instant application claim 20, Henry teaches the flowmeters can be a Coriolis flowmeter using a bent tube or a Coriolis flowmeter using a straight flowtube, see Para. [0016], meeting the specific flow meter in instant application claim 20.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the measurement of Papp ‘702 to capture mass flow parameters related to density for input into the control process as taught by Henry with a reasonable predictability of success for the purpose of efficiently measuring mass flow and density of the fluids within the pipes/lines of the reaction processes in order to control the process by knowing the concentration of the components of the mixture, such as the catalyst and the water, to increase efficiency of the process and decrease corrosiveness of the catalyst, Henry, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and both Papp ‘702 and Henry teach measuring parameters in the pipes/lines of reaction processes to determine the concentration of the mixed fluids therein, a person of ordinary skill in the art has good reason to modify Papp ‘702 by relying upon Henry before the effective filing date of the claimed invention for knowledge generally available within the process line concentration measurement art regarding the concentration of the mixed fluids therein by measuring the density of the fluid within the pipes/lines, see MPEP 2143 B & G and 2141, for the benefit of efficiently measuring mass flow and density of the fluids within the pipes/lines of the reaction processes in order to control the process by knowing the concentration of the components of the mixture, such as the catalyst and the water, to increase efficiency of the process and decrease corrosiveness of the catalyst, Henry, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3 and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as measuring mass flow density instead of temperature, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Claims 16 and 18-31 are newly rejected under 35 U.S.C. 103 as being unpatentable over Papp et al. (US20150141702, published 21 May 2015, hereinafter Papp ‘702) in view of Henry (US20120137754, published 07 June 2012), as applied in the 35 USC 103 rejection of claims 16, 18-27, and 29-31 above, in further view of Min et al. (CN102323748, published 18 January 2012, see machine translation, hereinafter Min).
Papp ‘702 does not teach the limitations of instant application claim 28.
Regarding instant application claim 28, Henry teaches a phase separator 114 connected to bottom stream flow meter 1 aka 108 which controls water, see Fig. 1; Paras. [0025]-[0028];[0036]-[0037], by opening or closing the desired valve configuration enabling a rapid, dynamic response to changes in the proportion of the individual fluids, such as water, in the pipes/lines from the bottom stream, see Paras. [0006]-[0007]; Figs. 1-3, meeting the dynamic control of water in phase separation in instant application claim 28.
Min is in the known prior art field of a direct mass flow balancing mechanism to realize the dynamic decoupling of a water supply regulating loop, see Abstract; Para. [0017].
Regarding instant application claim 28, Min teaches dynamic decoupling controls the water content in the reactor, see Abstract and Paras. [0017]-[0018];[0030];[0053], meeting the dynamic decoupling of a water content in instant application claim 28.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the computer-based process control apparatus of Papp ‘702 with the dynamic decoupling controlling apparatus process as taught by Henry and Min with a reasonable predictability of success for the purpose of efficiently measuring mass flow and density of the fluids within the pipes/lines of the reaction processes in order to control the process by knowing the concentration of the components of the mixture, such as the water, and continuously, automatically, and efficiently controlling the water content in the system to increase efficiency of the process and decrease corrosiveness of the catalyst, Henry, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3; Min, Paras. [0037];[0053].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Papp ‘702, Henry, and Min all teach measuring parameters in the pipes/lines of reaction processes to determine the concentration of the mixed fluids therein, a person of ordinary skill in the art has good reason to modify Papp ‘702 by relying upon Henry and Min before the effective filing date of the claimed invention for knowledge generally available within the process line concentration measurement art regarding the concentration of the mixed fluids therein by measuring the density of the fluid within the pipes/lines, see MPEP 2143 B & G and 2141, for the benefit of efficiently measuring mass flow and density of the fluids within the pipes/lines of the reaction processes in order to control the process by knowing the concentration of the components of the mixture, such as the water, and continuously, automatically, and efficiently controlling the water content in the system to increase efficiency of the process and decrease corrosiveness of the catalyst, Henry, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3; Min, Paras. [0037];[0053] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as measuring mass flow density instead of temperature, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
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 16 and 18-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7, and 10 of U.S. Patent No. 9,115,069 B2 to Papp et al. (hereinafter Papp ‘069, published 25 August 2015) in view of Henry (US20120137754, published 07 June 2012).
Regarding instant application claim 16, the claims of Papp ‘069 recite a process for hydroformylation of olefins having 6 to 20 carbon atoms in the presence of a cobalt catalyst in the presence of an aqueous phase with thorough mixing in a reactor wherein a hydroformylation products-containing first stream is withdrawn at the top of the reactor and an aqueous phase-containing second stream is withdrawn from the bottom of the reactor via at least one line leading out of the bottom of the reactor, which process comprises controlling one or more flow parameters of the second stream, wherein the second stream is measured in the line leading out of the bottom of the reactor (Claim 1).
Regarding instant application claim 18, the claims of Papp ‘069 recite wherein one or more flow parameters are the flow, the flow rate or any other parameter determined on the basis of the flow and/or the flow rate (Claims 1-3 & 7, flow rate).
Regarding instant application claim 19, the claims of Papp ‘069 recite comprising measuring the second stream to determine one or more controlled variables on basis of the measured, comparing the one or more controlled variables with one or more reference values to determine one or more controlling quantities and using the one or more controlling quantities to determine one or more actuating signals to control the one or more flow parameters of the second stream (claims 1-3, reference variable is the mixing temperature, controlled variable is the bottom or in line temperature).
Regarding instant application claim 21, the claims of Papp ‘069 recite wherein the measured second stream is compared with a predefined reference value for the second stream and the flow and/or the flow rate of the second is increased if the measured second stream is above the predefined reference value for the second stream (claims 1-3, reference variable is the mixing temperature, controlled variable is the bottom or in line temperature).
Regarding instant application claim 22, the claims of Papp ‘069 recite wherein the measured second stream is compared with a predefined reference value for the second stream (claims 1-3, reference variable is the mixing temperature, controlled variable is the bottom or in line temperature).
Regarding instant application claim 23, the claims of Papp ‘069 recite wherein the second stream is measured at least one point in the line leading out of the bottom of the reactor (Claims 1 & 2).
Regarding instant application claim 24, the claims of Papp ‘069 recite wherein the first stream and the second stream are passed into a post-reactor (Claim 5).
Regarding instant application claim 25, the claims of Papp ‘069 recite wherein a hydroformylation products containing first stream is withdrawn at the top of the post-reactor and an aqueous phase-containing second stream is withdrawn from the bottom of the post-reactor (Claim 6).
Regarding instant application claim 26, the claims of Papp ‘069 recite wherein the one or more flow parameters of the second stream withdrawn from the bottom of the post-reactor via at least one line leading out of the bottom of the post-reactor is controlled in accordance with the second stream (Claim 7).
Regarding instant application claim 27, the claims of Papp ‘069 recite wherein the first stream and second stream, withdrawn from the reactor or in case a post-reactor is in place withdrawn from the post-reactor, are subjected in the presence of aqueous cobalt(II) salt solution to oxygen treatment wherein the cobalt catalyst decomposes to form cobalt(II) salts which are extracted into the aqueous phase and the phases are then separated (Claim 10).
The claims of Papp ‘069 do not recite:
The instant application claim 16 limitations of measuring the mass flow parameter in accordance with density;
The controlled variable is density in instant application claims 19, 21, 22, and 26;
and,
The limitations of instant application claims 18 and 20.
Henry is in the known prior art field of systems and methods for determining concentrations of components of a multiphase fluid by using mass flow, density, and temperature measurements throughout the system, see Abstract; Paras. [0007];[0014]-[0016];[0046]; Figs. 1-3.
Regarding instant application claims 16, 18, 19, 21, 22, and 26, Henry teaches flowmeters for measuring mass flow and density of the fluids within the pipes/lines of reaction processes, such as an alkylation process reaction of isobutane and C4 olefins to form octane or “alkylate”, in order to control the process by knowing the concentration of the components of the mixture, such as the catalyst and the water, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3. The system measures density, mass flowrate, temperature, and other parameters as compared to reference examples to control the concentration of the individual fluids in the lines by opening or closing the desired valve configuration enabling a rapid, dynamic response to changes in the proportion of the individual fluids in the pipes/lines from both top and bottom streams, see Paras. [0006]-[0007];[0014]-[0016];[0020]-[0024];[0039];[0046]; Figs. 1-3, meeting:
Measuring the mass flow parameter in accordance with density in a bottom stream and the controlled variable is density in instant application claim 16, in instant application claim 18, in instant application claim 19, in instant application claim 21, in instant application claim 22, and in instant application claim 26.
Regarding instant application claim 20, Henry teaches the flowmeters can be a Coriolis flowmeter using a bent tube or a Coriolis flowmeter using a straight flowtube, see Para. [0016], meeting the specific flow meter in instant application claim 20.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the measurement of the claims of Papp ‘069 to captured mass flow parameters related to density for input into the control process as taught by Henry with a reasonable predictability of success for the purpose of efficiently measuring mass flow and density of the fluids within the pipes/lines of the reaction processes in order to control the process by knowing the concentration of the components of the mixture, such as the catalyst and the water, to increase efficiency of the process and decrease corrosiveness of the catalyst, Henry, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and both the claims Papp ‘069 and Henry teach measuring parameters in the pipes/lines of reaction processes to determine the concentration of the mixed fluids therein, a person of ordinary skill in the art has good reason to modify the claims of Papp ‘069 by relying upon Henry before the effective filing date of the claimed invention for knowledge generally available within the process line concentration measurement art regarding the concentration of the mixed fluids therein by measuring the density of the fluid within the pipes/lines, see MPEP 2143 B & G and 2141, for the benefit of efficiently measuring mass flow and density of the fluids within the pipes/lines of the reaction processes in order to control the process by knowing the concentration of the components of the mixture, such as the catalyst and the water, to increase efficiency of the process and decrease corrosiveness of the catalyst, Henry, see Paras. [0003]-[0005];[0014]-[0016]; Figs. 1-3 and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as measuring mass flow density instead of temperature, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,115,069 B2 to Papp et al. (hereinafter Papp ‘069) in view of Henry (US20120137754, published 07 June 2012) and Min et al. (CN102323748, published 18 January 2012, see machine translation, hereinafter Min).
Regarding instant application claim 28, the claims of Papp ‘069 do not recite wherein the water content in the reactor, in case a post-reactor is used in the post-reactor and in the phase separation is controlled by means of dynamic decoupling.
Min teaches dynamic decoupling controls the water content in the reactor, see Abstract; Paras. [0017]-[0018];[0030];[0053], meeting the limitations in instant application 28.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the claims of Papp ‘069 with the dynamic decoupling controlling apparatus of Min with a reasonable predictability of success for the purpose of continuously, automatically, and efficiently controlling the water content in the system, see Min, Paras. [0037];[0053].
By applying “routine optimization” and “predictable results” to select the optimal controlling apparatus, as taught by Min, one of ordinary skill in the art would have been motivated to make these modifications because Min provides a finite number of identified, predictable solutions, and a person of ordinary skill in the art has good reason to efficiently control the water content in a system by pursuing the known options within their technical grasp, such as the use of computerized dynamic decoupling control, for the benefit of continuously, automatically, and efficiently controlling the water content in the system, see Min, Paras. [0037];[0053] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
Claims 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,115,069 B2 to Papp et al. (hereinafter Papp ‘069) in view of Henry (US20120137754, published 07 June 2012) and Grenacher et al. (US6723884, patented 20 April 2004, hereinafter Grenacher).
Regarding instant application claim 29, the claims of Papp ‘069 do not recite wherein the temperature in the reactor is from 100 to 250 0C and in case a post-reactor is used, the temperature in the post-reactor is from 100 to 250 0C.
Grenacher teaches wherein the temperature in the reactor is from 100 to 250 0C, see Col. 5, Lns. 61-64, and in case a post-reactor is used, the temperature in the post-reactor is from 100 to 250 0C, Col. 5, Lns. 61-64; Col. 9, Lns. 32-35, meeting and within the ranges in instant application claim 29.
Regarding instant application claim 30, the claims of Papp ‘069 do not recite wherein the prevailing pressure in the reactor is from 100 to 400 bar abs and in case a post-reactor is used, the prevailing pressure in the post-reactor from 100 to 400 bar abs.
Grenacher teaches wherein the prevailing pressure in the reactor is from 100 to 400 bar abs, see Col. 5, Lns. 61-64, and in case a post-reactor is used, the prevailing pressure in the post-reactor from 100 to 400 bar abs, see Col. 5, Lns. 61-64; Col. 9, Lns. 32-35, meeting and within the ranges in instant application claim 30.
Regarding instant application claim 31, the claims of Papp ‘069 do not recite wherein the reactor is a gas-liquid reactor.
Grenacher teaches wherein the reactor is a gas-liquid reactor, see Col. 4, Lns. 57-60, meeting the specific reactor in instant application claim 31.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the claims of Papp ‘069 with the temperature, pressure, and reactor teaching of Grenacher with a reasonable predictability of success for the purpose of performing a hydroformylation reaction to produce products at high yield, see Grenacher, Col. 2, Lns. 53-58 and Col. 6, Lns. 19-34.
By applying “routine optimization” and “predictable results” to select the optimal temperature and pressure, as taught by Grenacher, one of ordinary skill in the art would have been motivated to make these modifications because Grenacher provides a finite number of identified, predictable solutions, and a person of ordinary skill in the art has good reason to efficiently produce a hydroformylation product by pursuing the known options within their technical grasp for the benefit of performing a hydroformylation reaction to produce products at high yield, see Grenacher, Col. 2, Lns. 53-58 and Col. 6, Lns. 19-34 and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Y. Lynnette Kelly-O'Neill whose telephone number is (571)270-3456. The examiner can normally be reached Monday-Thursday, 8 a.m. - 6 p.m., EST, with Flex Time.
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, Scarlett Yen-Ye Goon can be reached at (571) 270-5241. 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.
/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699