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 .
DETAILED ACTION
This action is FINAL.
Status of Claims
Claims 1-18 are pending. Claims 1 and 18 stand amended.
Priority
Instant application 18005593, filed 01/13/2023 claims benefit as follows:
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Information Disclosure Statement
All references from the IDS received 01/30/2023 have been considered unless marked with a strikethrough.
Response to Applicant Amendment/Argument
In view of Applicant amendment and arguments with respect to claim 1 and 17-18, the 103 rejection over US-20060065574 (“the ‘574 publication”, made of record on the IDS) in view of CN-110437867 (“the ‘867 publication”, document and machine translation attached herewith) is withdrawn.
With respect to the double patenting rejection, Applicant requested that the double patenting rejections be held in abeyance. The rejections are maintained. It should be noted that the application for double patenting (see interview summary 09/26/2025) has move forward to issue, so the double patenting rejection is no long a provisional rejection. The rejection is changed to reflect the change in status of the application. See rejection below.
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 1-4, 6-7, 9, 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US Patent 12516008 (“the ‘008 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘008 patent recite a method of producing MTBE using isobutylene and methanol, and a parallel arrangement. Further, the claims of the ‘008 patent recite high purity, recycling for cooling efficiency, resin catalysts, removing water, distillation columns, adiabatic fixed bed reactors.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US Patent 12516008 (“the ‘008 patent”) in view of US-20060065574 (“the ‘574 publication”).
The claim of the ‘008 patent are discussed above and at least those recitations are incorporated by reference herein.
The claims of the ‘008 patent fail to recite temperatures, pressures, concentrations, and down flow reactors.
However, the ‘574 publication teaches as disclosed above in the same field of endeavor and at least those teachings are incorporated by refence herein. (See 103 rejection above.)
With respect to the reactor type, applying KSR prong (B) one could substitute one known reactor for another and would expect success since both references are taught for the same reaction process.
With respect to the arguments relating to purity, concentrations, temperatures and pressures the arguments and teachings of these limitations are discussed above from the ‘574 publication and are incorporated by reference herein.
It would have been prima facie obvious to optimize pressure, concentration, temperatures and pressures for example because such variables are routine for a skilled chemist to optimize. See MPEP 2144.05 incorporated by reference herein.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLINTON A BROOKS whose telephone number is (571)270-7682. The examiner can normally be reached M-F 8-5 with flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at 571-272-1424. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621