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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 9, 2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yates (US 4,443,638) and Weber et al. (US 5,481,044) in combination.
Yates teaches a process wherein a branched olefin, 7-tetradecene, is hydroformylated to produce a reaction product comprising branched pentadecanal. Yates teaches that the branched products produced include 2-methyl branched aldehydes at 19.5 wt.% (abstract; table 3).
Weber et al. teach a process, wherein terminal olefins are first isomerized to produce internal olefins that are hydroformylated to produce the corresponding aldehydes. The reference teaches the preparation of isomeric tridecanals, including 2-methyldodecanal at 23.3 wt.% (example 1).
The difference between the instant claims and the cited references is that the instant claim recite a product having greater than 25 wt.% of 2-methyl branched aldehydes. Yates and Weber et al. teach 19.5 wt.% and 23.3 wt.% of 2-methyl branched aldehydes, respectively.
The examiner, however, finds that a person having ordinary skill in the art would have been able to optimize the isomerization process taught by Weber et al. to increase the content of internal olefins in the isomerization mixture, in order to increase the concentration of 2-methyl branched aldehyde products resulting from the hydroformylation of the isomerized mixture. Therefore, the instant claims are rendered obvious by the combined reference teachings.
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 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,993,565. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘565 patent are drawn to a process, wherein a linear C4-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The claims of the ‘565 patent recite that a branched tridecanal and a branched pentadecanal are among the branched aldehydes made by the process. These compounds render the instant claims obvious. The fact that the process steps, i.e., isomerization and hydroformylation are the same in both sets of claims means that it is reasonable to expect that the branched products are 40 to 100 wt.% branched, as recited in the instant claims.
Claims 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 8-11 of U.S. Patent No. 11,680,032. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘032 patent are drawn to a process, wherein a linear C4-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The claims of the ‘032 patent recite that a branched undecanal, tridecanal and a branched pentadecanal are among the branched aldehydes made by the process. These compounds render the instant claims obvious. The fact that the process steps, i.e., isomerization and hydroformylation are the same in both sets of claims means that it is reasonable to expect that the branched products are 40 to 100 wt.% branched, as recited in the instant claims.
Claims 19 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 8-12 of copending Application No. 18/198,809 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application are drawn to a process, wherein a linear C4-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The claims of the reference application recite that a branched undecanal, tridecanal and a branched pentadecanal are among the branched aldehydes made by the process. These compounds render the instant claims obvious. The fact that the process steps, i.e., isomerization and hydroformylation are the same in both sets of claims means that it is reasonable to expect that the branched products are 40 to 100 wt.% branched, as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 19 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-18 of copending Application No. 18/655,285 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application are drawn to a process, wherein a linear C8-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The claims of the reference application recite that a branched tridecanal and a branched pentadecanal are among the branched aldehydes made by the process. These compounds render the instant claims obvious. The fact that the process steps, i.e., isomerization and hydroformylation are the same in both sets of claims means that it is reasonable to expect that the branched products are 40 to 100 wt.% branched, as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 19 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-12 of copending Application No. 17/921,098 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application are drawn to a process, wherein a linear C4-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The claims of the reference application recite that a branched undecanal, tridecanal and a branched pentadecanal are among the branched aldehydes made by the process. These compounds render the instant claims obvious. The fact that the process steps, i.e., isomerization and hydroformylation are the same in both sets of claims means that it is reasonable to expect that the branched products are 40 to 100 wt.% branched, as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 19 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/755,473 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application are drawn to a process, wherein a linear C4-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The claims of the reference application recite that a branched tridecanal and a branched pentadecanal are among the branched aldehydes made by the process. These compounds render the instant claims obvious. The fact that the process steps, i.e., isomerization and hydroformylation are the same in both sets of claims means that it is reasonable to expect that the branched products are 40 to 100 wt.% branched, as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The examiner acknowledges that applicants filed terminal disclaimers along with the request for continued examination; however, until such time that said terminal disclaimers are approved by the Office, the non-statutory double patenting rejections of record will stand.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692