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 .
Claim Status
Claims 1-11 were filed 1/18/2023. Claims 1, 2, and 4-8 were amended in a preliminary amendment filed on the same day. Claims 1-11 are pending.
Priority
The instant application was filed 1/18/2023 and claims the benefit of the following priority applications:
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See filing receipt dated 6/13/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because the text is blurry and difficult to read.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 11 is objected to because of the following informalities: in line 6, the limitation “trimellitate” should be deleted and replaced by –trimellitic--. Appropriate correction is required.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of co-pending Application No. 18/015640 (‘640) in view of De Munck (US 2010/0130767, published on 5/27/2010).
This is a provisional nonstatutory double patenting rejection. Though the claims of ‘640 have been indicated as being allowable in the OA dated 11/7/2025 and the issue fee was paid on 12/9/2025, the claims have not yet been patented and an RCE was filed on 12/24/2025. The ‘640 application and the instant application have the same patent term filing date (9/17/2021). Also see MPEP 804(I)(B)(1)(b)(ii).
Claim 1 of ‘640 teaches carrying out the instantly claimed process “in a batch reactor”. Claim 8 of ‘640 further teaches the use of a separation unit. The claims of ‘640 do not explicitly teach instant step S2 which comprises sequentially putting the reaction mixture into each of N (3 or greater) batch reactors connected in parallel to perform a reaction and sequentially completing the reaction in the N batch reactors to semi-continuously produce reaction products which are fed semi-continuously to the separation unit of instant step S3. De Munck is directed to a batchwise process for the esterification of an acid or an anhydride with an excess of an alcohol to produce an ester. See abstract, claims, and [0018-0019]. De Munck teaches that the alcohol is preferably pre-heated before being fed to the esterification reaction vessel. De Munchk teaches that “it is easier if the alcohol pre-heating step can be performed in one or more vessels separate from the reactor, so that it can be performed at a convenient moment. It is also easier to operate if several batch esterification reactors operate in parallel but in a staggered sequence (sequential) mode, so that heat from a reactor batch being terminated is available for another reactor batch that is starting”. See [0025]. Thus, De Munck is describing semi-continuous operation of parallel batch reactors.
It would have been prima facie obvious for one of ordinary skill in the art to combine the claims of ‘640 with the teachings of De Munck to arrive at the instantly claimed invention with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to swap the single batch reactor claimed in ‘640 with the parallel arrangement of reactors in sequential operation instantly claimed because De Munck teaches that such an arrangement is equivalent to a single batch reactor and is more energy efficient. Also see MPEP 2143(I)(B).
The limitations of instant claims 2-6, 10, and 11 are explicitly taught in the claims of ‘640. Regarding claims 7-9, De Munck teaches a two-stage esterification reaction which is carried out in the temperature range of 150-280°C, which overlaps with the claimed ranges. Also see MPEP 2144.05. De Munck further teaches that titanium alkoxides or alcoholates, including tetraalkyl titanates can be used as a catalyst for the second stage of the esterification. See [0058-0059]. Therefore, the claimed temperature and catalyst are known and routine for esterification reactions and it would be predictable to employ them in the process of the claims of ‘640 to arrive at the claimed process.
Allowable Subject Matter
Claims 1-11 appear to be free from the prior art. The following is a statement of reasons for the indication of allowable subject matter: the closet prior art to the claimed invention are the teachings of US 2020/0317600 (‘600), US 2010/0137631 (‘631), and and US 2010/0130767 (‘767).
The ‘600 publication shares an assignee and several inventors with the instant application but would qualify as prior art under 35 USC 102(a)(2). The ‘600 patent teaches instant steps S1-S3. See claims, abstract, and Figures and discussion thereof in [0064-0078]. The ‘600 publication is silent regarding reaction pressures and conversions.
The ‘631 publication is directed toward catalyzed batch esterification reactions. ‘631 teaches that the efficiency of the reaction may be significantly improved by the use of a particular temperature and pressure profile during the reaction. See abstract, [0013], and claims. ‘631 teaches carrying out a two-step esterification comprising (i) providing a mixture of an acid or acid anhydride (including polyhydric, see 0044-10045) with a monohydric alcohol at an initial temperature in a reaction vessel; (ii) raising the temperature of the mixture to a desired esterification reaction temperature to effect esterification, and (iii) boiling off water by-produce produced in the esterification reaction, wherein the pressure in the reaction vessel is elevated as the temperature of the mixture is raised during at least the initial phase (early stage) of raising the temperature of the mixture, thereby reducing reactant vaporization, and the esterification catalyst is introduced into the mixture at a predetermined mixture temperature that is below the desired esterification reaction temperature and above the initial temperature of the mixture. See [0014] and claims. ‘631 teaches that “increasing the pressure in this manner ensures that the heat supplied to the reaction mixture is used for heating the reactants, rather than for vaporization of the reactants”. See [0020]. ‘631 teaches that the initial reaction pressure is close to atmospheric pressure, for example 1 to 2 bar, and moves through a maximum when the desired esterification reaction temperature (180-220C) is reached, of for example 1.5 to 2.5 bar. The pressure then reduces toward an increasing vacuum as the reaction proceeds. The final reaction pressure ranges from 2 to 0.133 bar. See [0050].
‘631 teaches that after a water-sensitive titanate catalyst is added to the system, the pressure is reduced rapidly, preferably to atmospheric pressure, and more preferably to blow atmospheric, to cause water to vaporize whilst the reaction temperature is maintained at the desired esterification reaction temperature. See [0022-0029]. ‘631 teaches that the pressure is reduced within 100 minutes of the addition of the catalyst to within a range of 30-180 kPa (0.3 – 1.8 bar), which overlaps with both of the claimed ranges. See [0031]. Exemplary pressure profiles over time are shown in Figs. 2-3 and discussed in [0075].
The ’767 publication was discussed in the above provisional non-statutory double patenting rejection and teaches that batch esterification reactions can be carried out in parallel batch reactors operated sequentially to be more energy efficient. ‘767 teaches the same pressure reduction as ‘631. See [0020, 0059, 0096].
None of the references teach that “pressures of the N batch reactors are each independently configured such that the pressure at an early stage is 0.3 barg to 1.0barg and the pressure at a latter stage is 0 bag to 0.5 barg, the pressure at the early stage is greater than the pressure at the latter stage, and the early and latter stages are divided based on any one of the time points wherein reaction conversion rate is 30-90%”. Nor is this limitation taught in any other prior art.
‘600 is silent regarding pressure and conversions. ‘631 and ‘767 teach a two-step esterification wherein the first pressure is superatmospheric and after a desired esterification temperature is reached, the pressure is rapidly decreased to atmospheric or below atmospheric pressure. ‘631 and ‘767 are silent regarding the conversion in the reactors when the pressures are changed. The references also appear to teach different esterification conditions (temperatures, reaction times, and batch reactor arrangements) than those of the inventive examples such that it is not apparent that the examples in ‘631 and ‘767 meet the claimed pressure and conversion limitations. Nor would it be obvious to modify any of the prior art references to arrive at those claimed. Therefore, the instantly claimed process appears to be free from the prior art.
It is also noted that the examples in p. 38-51 of the specification as filed provide evidence that when an esterification reaction possesses all of the components of the process of claim 1, that the process produces superior results as compared against other processes lacking one of the claimed elements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692