CTNF 17/998,934 CTNF 100717 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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. Continued Examination Under 37 CFR 1.114 07-42-04 AIA 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 30 January 2026 has been entered. Information Disclosure Statement The Information Disclosure Statement filed on 30 January 2026 has been received and considered by the Examiner. Amendments Applicant’s amendments to the claims and specification filed 30 January 2026 have been received and considered for this action. These amendments overcome all previous objections and rejections, which are withdrawn. 07-30-03-h AIA Claim Interpretation The claim interpretations set forth in the prior Office action mailed 2 May 2025 were acknowledged by Applicant in the reply filed 2 October 2025 and continue to be used. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 12-14, 16-19, and 22 rejected under 35 U.S.C. 103 as being unpatentable over Paek et al. (US 10,093,597 B1) in view of Dakka et al. (WO 2015/112252 A1), as evidenced by Cook et al. ( Energy & Fuels 1997 , 11 , 61-75) . Regarding claim 12, Paek teaches a process for purifying an aromatic liquid compound (dimethylbiphenyl mixtures, column 9, lines 49-51), said process comprising the following steps: providing an aromatic liquid (3,4’-dimethylbiphenyl) containing at least one impurity (4,4’-dimethylbiphenyl; column 9, lines 53-57), contacting said aromatic liquid with at least one zeolitic adsorbent material (ZSM-5, columns 10-11), and recovering said aromatic liquid comprising said at least one impurity at a concentration by weight of less than 50% by weight relative to the level of impurity present in the liquid (column 10, lines 46-59, column 11 lines 6-15, and Fig 7; fractions collected at 2 min-5 min using the conditions of Fig. 7 contain essentially 0% of the impurity relative to the 20% of the initial mixture), wherein the aromatic liquid compound is dimethylbiphenyl (C 14 H 14 ), which is an isomer diphenylethane (C 14 H 14 ). Paek does not disclose the impurity being one of the degradation products recited in the instant claim. However, Paek directs us to Dakka (col. 1, line 34) for a method to produce the dimethyl-substituted biphenyl compounds that Paek teaches how to separate (3,4’- and 4,4’dimethylbiphenyl; abstract). Dakka teaches that the raw dimethylbiphenyl (DMBP) stream provided by their method contains a toluene impurity, which can be removed via distillation ([0085]-[0086]). Toluene can be considered a degradation product of dimethylbiphenyl as it can be generated by cleavage of the aryl-aryl bond during hydrogenolysis, as evidenced by Cook (Table 12 and Fig. 15). It is noted that the difference in boiling points between toluene (110 °C) and the 3,4’- and 4,4’-dimethylbiphenyls of Paek (>285°C; Table 1), would make the separation of nearly all the toluene by distillation possible, as supported by Paek, who notes that even boiling point differences of ~20 °C among dimethylbiphenyl isomers makes their separation by this technique possible (col. 1, line 65-col. 2, line 6 and Table 1). It is additionally noted that the open claim language of the instant claim does not require that the degradation byproduct be removed by contact with the zeolitic adsorbent. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to synthesize the dimethylbiphenyl mixture used in the method of Paek by the method of Dakka, which would provide the aromatic liquid of 3,4’-dimethylbiphenyl containing an additional impurity of toluene, which is a degradation byproduct of dimethylbiphenyl. It would have also been obvious to recover the aromatic liquid comprising the toluene at a concentration by weight of less than 50% by weight relative to the level of toluene present in the compound from step a by removing it via distillation, as taught by Dakka. One of ordinary skill in the art would have been motivated to provide the aromatic liquid with a toluene impurity because Paek directs us to a method of producing their aromatic liquid raw material that generates the aromatic liquid containing this impurity. One of ordinary skill in the art would have been motivated to remove the toluene to a level of less than 50% of its starting concentration because doing so would afford the most pure products and such separation would be possible by the distillation technique taught by Dakka and Paek for removing low-boiling impurities. It is also noted that the courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed level of impurity removal merely represents an obvious variant and/or routine optimization of the teaching in the cited prior art to remove the impurity and the general desire to remove impurities to the greatest extent possible. Regarding claim 13 , Paek discloses the process of claim 12 where said aromatic liquid comprises at least one aromatic ring, in the nonhydrogenated form thereof (dimethylbiphenyl has two rings in the non-hydrogenated form). Regarding claim 14 , Paek discloses the process of claim 12 where the aromatic liquid compound corresponds to the formula (A-X)n-B, where A and B are aromatic benzene rings, each substituted with a hydrocarbon chain of 1 carbon (methyl) and X is a single bond. Regarding claim 16 , Paek discloses the process of claim 12 where the zeolitic adsorbent material is a material comprising an adsorbent exhibiting one zeolite in the form of crystals (ZSM-5 zeolite having a crystallite size; column 10, lines 2-5) Regarding claim 17 , Paek discloses the process of claim 12 where the zeolitic adsorbent material is a natural or synthetic zeolite (both natural and synthetic zeolite may be used; column 8, lines 4-5). Regarding claim 18 , Paek discloses the process of claim 12 where the zeolitic adsorbent material comprises at least one cation selected from the group consisting of alkaline earth metals (column 8, lines 16-25). Regarding claims 19 and 22 , Paek discloses the process of claim 12 wherein the zeolitic adsorbent material comprises a zeolite of type MFI having an atomic ratio of Si/Al of between 8 and 500 (ZSM-5 is MFI type per instant specification page 9 lines 29-33; the Si/Al ratio used by Paek was 220, column 10, line 5), thereby meeting the limitations of both claims . 07-22-aia AIA Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Paek et al. (US 10,093,597 B1) in view of Dakka et al. (WO 2015/112252 A1), as evidenced by Cook et al. ( Energy & Fuels 1997 , 11 , 61-75) , as applied to claim 12 above, and further in view of Henn et al. (US 2008/0139857 A1) . Regarding claim 20, Paek teaches the use of FAU type zeolites to purify aromatic liquid compounds (column 1 lines 7-13 and column 3 lines 61-64), but does not specifically teach the FAU type zeolites comprising any of the cations recited in claim 20, thought they do reference general zeolite structure containing alkali and alkaline earth metal cations (col. 8, lines 23-25), which includes Na, K, Ba, Ca, Mg, Li, and Sr of the instant claim. However, Henn teaches also teaches the use of FAU type zeolites to purify aromatic liquid compounds, and also teaches a specific FAU type zeolite that contains sodium cations (paragraph 20). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the specific zeolite of Henn with the general method of Paek. One of ordinary skill in the art would be motivated to do so because Henn teaches that such zeolites are particularly preferred varieties of FAU type zeolites (paragraph 20) . Double Patenting 08-33 AIA 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. 08-35 AIA Claim s 12-14, 19 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 9, 10, and 12-16 of copending Application No. 17/998,938 in view of Paek et al. (US Pat. No. 10,093,597 B1) . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the co-pending application teach the purification of aromatic liquids having the instantly claimed structures using zeolites. Claim 12 of the cited ’938 application teaches using zeolites to filter (purify) an aromatic liquid and claim 14 teaches the aromatic liquid being the same as those of instant claim 12. The ‘938 application does not teach the specifics of the zeolites to be used. However, Paek teaches the specific zeolites that meet the limitations of instant claims 16-19 and 22, and that they can be used to purify aromatic liquids, including specifically isomers of diphenylethane, as analyzed above. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the specifics zeolites taught by Paek to purify the aromatic liquids recited in the general method described in the ‘938 application. One of ordinary skill in the art would have been motivated to do so because Paek teaches their method is advantageous for separating mixtures of hydrocarbons with similar physical properties (column 2 lines 26-28 and column 7 lines 32-35) . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 10, and 12-16 of copending Application No. 17/998,938 in view of Paek et al. (US Pat. No. 10,093,597 B1), as applied to instant claim 12 above, and further in view of Henn (US 2008/0139857 A1). Modified claim 12 of the ‘938 application teaches the method of instant claim 20, where Paek also teaches the use of FAU zeolites (column 1 lines 7-13 and column 3 lines 61-64). Neither the ‘938 application nor Paek specifically teach FAU zeolites that comprises one of the cations listed in claim 20. However, Henn teaches also teaches the use of FAU type zeolites to purify aromatic liquid compounds, and also teaches a specific FAU type zeolite that contains sodium cations (paragraph 20). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the specifics FAU type zeolite taught by Henn to the general method described in the cited application. One of ordinary skill in the art would have been motivated to do so because Henn teaches their process as being improved for purifying aromatics, particularly when used in catalytic reactions (paragraph 43). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Response to Arguments Applicant’s arguments, pages 6-7 of the reply filed 30 January 2026, with respect to the rejection of claims 12-20 and 22 have been fully considered and are persuasive in that the previously applied prior art does not teach all the limitations of the amended claims. In particular, Paek does not teach the impurities recited in the amended claim. Therefore, the prior rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made over Paek et al. (US 10,093,597 B1) in view of Dakka et al. (US 2015/0080545 A1), as analyzed above. Applicants remaining arguments with respect to the teaching of Paek have been fully considered but are not persuasive. First, while it is true that Paek does not disclose purifying any of the aromatic liquids recited by name in amended claim 12, the scope of claim 12 specifically includes “diphenylethane (DPE) and isomers thereof ” (emphasis added). Diphenylethane and dimethylbiphenyl both have the chemical formula C 14 H 14 , and therefore dimethylbiphenyl is an isomer of diphenylethane. Furthermore, the argument that Paek fails to disclose any purification of aromatic liquids in their dehydrogenated, partially hydrogenated, or fully hydrogenated forms (p. 7, ¶ 2) is not persuasive. The separation of compounds is inherently a purification technique and Paek’s method is designed to maximize the purity of the individual isomers (col. 1, lines 62-63). Additionally, the aromatic liquid taught by Paek (3,4’-dimethylbiphenyl) is in its dehydrogenated (aromatic) form whether or not Paek refers to it as such (see instant specification [0015]). Applicant further argues for the allowability of claim 20 based upon the features of amended claim 12 that are missing from Paek. These features are now taught by Dakka in the rejection presented above and so these arguments are moot. Applicant’s arguments, page 8, with respect to the Double Patenting rejection over US 9,914, 109 are persuasive and these Double Patenting rejections have been withdrawn. Applicant’s arguments, page 8, with respect to the provisional nonstatutory double patenting rejection over claims 9,10, and 12-16 of co-pending Application No. 17/998,938 have been fully considered but are not persuasive. It is the claims of the ‘938 application that teach most of the features of the amended claim 12, not Paek, which is only brought in to teach features of the particular zeolites that may be used in the purifications of aromatic compounds. The prior provisional NSDP rejection is maintained. Pertinent Prior Art The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: S. Marme and K. Unger. “Studies on the Use of Synthetic Zeolites for the Purification and Isolation of Value-Added Chemicals,” Proceedings of the 2nd Polish-German Zeolite Colloquium, Torun, Poland, Apr. 20-22, 1995. Pp. 243-252. Marme discloses a process for purifying organic compounds (title), said process comprising providing an aromatic liquid containing at least one impurity (a mixture of 1,2- and 1,4-diethylbenzene; Table 11) and contacting said aromatic liquid with at least one zeolitic adsorbent material (ZSM-5, Table 11). Marme also teaches that toluene can be adsorbed to a zeolite while the bulkier o -ethyltoluene compound is excluded (Table 5a), and that naphthalene can be adsorbed to a zeolite while the bulkier triphenylbenzene is excluded (Table 5b). Marme further teaches that other organic chemicals employed in their study span a variety of aromatic compounds including monosubstituted benzenes, disubstituted benzenes, polycyclic aromatics, and pyridine derivatives (p. 245, ¶ 2). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 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, Sally Merkling can be reached at (571) 272-6297. 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. /NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738 /PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735 Application/Control Number: 17/998,934 Page 2 Art Unit: 1738 Application/Control Number: 17/998,934 Page 3 Art Unit: 1738 Application/Control Number: 17/998,934 Page 5 Art Unit: 1738 Application/Control Number: 17/998,934 Page 6 Art Unit: 1738 Application/Control Number: 17/998,934 Page 7 Art Unit: 1738 Application/Control Number: 17/998,934 Page 9 Art Unit: 1738 Application/Control Number: 17/998,934 Page 10 Art Unit: 1738 Application/Control Number: 17/998,934 Page 11 Art Unit: 1738 Application/Control Number: 17/998,934 Page 12 Art Unit: 1738 Application/Control Number: 17/998,934 Page 13 Art Unit: 1738 Application/Control Number: 17/998,934 Page 14 Art Unit: 1738 Application/Control Number: 17/998,934 Page 15 Art Unit: 1738
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