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 .
The previous prior art rejection under Berthe et al (US 20160185705), Berthe in view of Tang et al (CN 103804209), and Double Patenting rejection over U.S. Patent No. 10590058 maintained and therefore it is proper to make this rejection FINAL.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. 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.
Claims 1-7, 9-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Berthe et al (US 20160185705), cited in the previous Office Action
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Berthe et al as applied to claims 1-7, 9-12 and 14-15 above, and further in view of Tang et al (CN 103804209), cited in cited in the previous Office Action and IDS.
Amendments to claims 1 and 2 are noted. They include limitations of Injecting HBr, in the gaseous form and in stoichiometric excess, into a reaction mixture comprising a compound of formula (1) CH2=CH-(CH2)n-COOR, a radical initiator, and at least one solvent, where the ratio of the molar flow rate of HBr injected in stage (a) to the molar flow rate of the compound of formula (1) injected in stage (a) is from 1.2 to 3.
Amendment to claim 2 tightens HBr to compound (1) ratio as 1.2 to 2.2.
Berthe teaches the ratio between hydrobromic acid and undecylenic acid is 2 (i.e., 50ml/min vs 25 ml/min, see 0069), meeting the limitations of amended claims 1 and 2.
Regarding the limitation, requiring injection of HBr in gaseous state, Berthe teaches that the solvent is optional (see Abstract and claim 1).
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.
Claim 1-7, 9-12 and 14-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-10 and 17 of U.S. Patent No. 10590058.
U.S. 10590058 teaches the ratio between hydrobromic acid and undecylenic acid is 2 (i.e., 50ml/min vs 25 ml/min, see 8:25), meeting the limitations of amended claims 1 and 2.
Regarding the limitation, requiring injection of HBr in gaseous state, U.S. 10590058 teaches that the solvent is optional (see and claim 1)
The rejection can be found in the NON-FINAL office action mailed 7/22/2025 and is herein incorporated by reference
Response to Arguments
Applicant's arguments filed 10/16/2025 have been fully considered but they are not persuasive.
Applicant argues that Berthe does not teach that (1) HBr is injected in gaseous form and (2) the
stoichiometric excess is 1.2 to 3.0 and injection of HBr in gaseous state. .
Examiner disagrees. Berthe teaches the ratio between hydrobromic acid and undecylenic acid is 2 (i.e., 50ml/min vs 25 ml/min, see 0069).
Regarding the limitation, requiring injection of HBr in gaseous state, Berthe teaches that the solvent is optional (see Abstract and claim 1)
Rejection under 35 U.S.C. 102(a)(1) over Ashton et al (Addition of Hydrogen Bromide to Double Bonds. Undecenoic Acid., Journal of Chemical Society, January 1, 1934, pp.434-440) is withdrawn in view of claim 1 amendment and Applicant’s arguments.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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