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
Status of Claims
Claims 1-4 are pending.
Priority
Instant application 18031514, filed claims benefit as follows:
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Information Disclosure Statement
All references from the IDS received 04/12/2023, 01/27/2023, and 08/08/2025 have been considered unless marked with a strikethrough.
Response to Applicant Amendment/Argument
Applicant amendment is acknowledged.
With respect to the 103, Applicant argues that the art doesn’t recognize the problem caused by metal impurities and fails to teach or suggest specific concentrations.
This argument has been considered but is not found to be persuasive for at least the following reasons. The specification seems to imply that the metal impurities are not exogenous additions from a previous reaction, but are from the container itself. The specification teaches that stainless steel contains are one such container. Thus, the argument is that metals would be present in small amounts in the stainless steel container through leaching from the container. Evidence for this assertion is found in for example the article to Zhong (Zhong et al. Runhua Yu Mifeng, 2009, 34(10), 87-91, “Study on simultaneous determination of Pb, Cd, Cr, Ni leaching quantity from stainless steel sealed food containers by DUO-ICP-AES with automatic dilution technique”) The 103 rejection below teaches stainless steel as a potential container. Thus, the argument is that the impurity profiles would be met with the use of a stainless steel container. Room temperature is within the temperature range and one would be motivated to use room temperature in order to save energy costs.
Claim Rejection – 103
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.
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.
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.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2020132585 (“the ‘585 publication”, made of record on the IDS, published 8/31/2020) as evidenced by Zhong (see citation in PTO-892).
The ‘585 publication teaches the production of 1,1,1,2,4,4,4-heptafluoro-2-butene for use in etching glass. Further, the ‘585 publication teaches using an activated charcoal catalyst, so no metal catalyst from the list of metals is necessitated. Therefore, no metal is present in the method of making and none would necessarily be present in the product. Even though Lewis acid catalysts are also mentioned. The ‘585 publication teaches that a carbon catalyst is sufficient as one catalyst alternative in a small list:
As the catalyst used in the production method of the present disclosure, a fluorinated or non-fluorinated activated carbon catalyst, a fluorinated or non-fluorinated Lewis acid catalyst and the like are preferable.
The reactions using carbon can range from room temperature to 400 degrees C. For example:
Examples of the method for fluorinating activated carbon include a method in which the above-mentioned fluorinating agent is circulated under atmospheric pressure under a temperature condition of about room temperature (25 ° C.) to 400 ° C. to fluorinate.
In one interpretation, the flask where the reaction takes place can be viewed as a container. In this case, the reaction vessel is the container and the reaction container would not contain any metal. Further, the products in claim 2 would be present, and the temperatures are overlapping.
Further, the ‘585 publication teaches of the sets of potential catalysts fluorinated or non-fluorinated activated carbon catalysts are preferable, and non-fluorinated activated carbon catalysts are one of two more preferable catalysts:
The above-mentioned catalysts can be used alone or in combination of two or more. Among these, from the viewpoint of conversion rate, selectivity and yield, fluorinated or non-fluorinated activated carbon catalyst, fluorinated or non-fluorinated chromium oxide catalyst, fluorinated or non-fluorinated alumina catalyst and the like are preferable, and fluorinated. Alternatively, a non-fluorinated activated carbon catalyst, a fluorinated or non-fluorinated chromium oxide catalyst, or the like is more preferable.
Based on at least this teaching one skilled in the art could at once envisage a carbon catalyst, the net result being that none of the metals listed in the claim are present. Based on the claim interpretation above, this is allowed.
Further, the ‘585 publication teaches reactors or in this claim interpretation storage containers such as:
In the reaction between the butin halide compound and hydrogen halide in the present disclosure, the shape and structure of the reactor in which the butin halide compound and the catalyst are charged and reacted are as long as they can withstand the above temperature and pressure. There is no particular limitation. Examples of the reactor include a vertical reactor, a horizontal reactor, a multi-tube reactor and the like. Examples of the material of the reactor include glass, stainless steel, iron, nickel, iron-nickel alloy and the like.
Further, the ‘585 publication teaches the following experimental procedure using a carbon catalyst. There is no Lewis acid metal present, and the product was “collected” which is considered a storage container. The flask or container that holds the product.
Examples 1 to 4: Activated carbon catalyst (manufactured by Osaka Gas Chemical Co., Ltd .; specific surface area 1200 m 2 ) as a catalyst in SUS piping (outer diameter: 1/2 inch) which is a hydrogenation hydrogen fluoride reaction reaction tube using an activated carbon catalyst. / g) was added by 10 g. After drying at 200 ° C for 2 hours in a nitrogen atmosphere, the pressure was normal pressure, and the contact time (W / F) between CF 3 C ≡ CCF 3 (substrate) and hydrogen fluoride and the activated carbon catalyst was 2 g · sec / cc. CF 3 C ≡ C CF 3 (substrate) and hydrogen fluoride gas were circulated in the reaction tube so as to be.
The reaction proceeded in a gas phase continuous flow system.
The reaction tube was heated at 200 ° C., 250 ° C., 300 ° C. or 400 ° C. to initiate the hydrogen fluoride addition reaction.
CF 3 C≡CCF 3 (substrate) hydrogen fluoride gas is contacted with a molar ratio of the (HF / CF 3 C≡CCF 3 ratio) was set to 150, the contact time (W / F) so as to become 2 g · sec / cc The flow rates of the substrate and hydrogen fluoride gas were adjusted, and the distillate that passed through the abatement tower was collected 1 hour after the start of the reaction.
Still further, the ‘585 publication teaches comparable examples where no catalyst is used, product results and the product is necessarily contained, or stored. Otherwise, you could not collect samples and test it. In this case, no metal was present which is currently allowed by the instant claims.
The data in the specification looks to require a specific container material. However, it should be noted that the ‘585 publication teaches a flask or glass container which would not contain those metals since glass is silicon and oxygen.
With respect to claims 1-2, the ‘585 publication fails to explicitly state what the storage container is made out of such that the metals in claim 1 are not present.
However, it would have been prima facie obvious to pick from a list including glass, stainless steel, or nickel to arrive at a known flask that are all taught as being capable of storing the product. Applying prong (E ) of KSR one could pick from a finite list and arrive at a glass container for example.
With respect to claims 3-4, the ‘585 publication fails to explicitly teach the range of storage temperatures.
However, it would have been prima facie obvious to one having ordinary skill in the art to store the product at for example room temperature a temperature within the range because storage at room temperature would require no external energy costs to either cool or heat the flask and it would therefore be cheaper to store the compound at room temperature. Further, temperature is a result effective variable and it is routine to optimize temperature in order to minimize cost, decomposition, product quality, etc., so such optimization is routine experimentation absent a showing of criticality. See MPEP 2144.05 incorporated by reference herein.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent Application No. 18031382 (“the ‘382 application”).
The claims of the ‘382 application teach an overlapping compound in a container (stored) and the only metal present is copper which is not listed in the instant claims, so the concentration of other metals is lower than that required by the instant claims. Further, the instant claims allow for zero percent of those metals.
The claims of the ‘382 application fail to teach overlapping temperatures of instant claims 3-4.
However, it would have been prima facie obvious to arrive at overlapping temperatures because the instant claims include room temperature and overlapping structures such that is would be cost effective to store the molecules at room temperature in order to save energy costs. Further, temperature is a result effective variable and would be routine for the chemist to optimize in order to minimize cost and/or by-product formation.
This is a provisional double patenting rejection.
Claim 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent Application No. 18031542 (“the ‘542 application”).
The claims of the ‘382 application teach a method of storing an overlapping compound in a container (stored) with limited HF, so the concentration of other metals is lower than that required by the instant claims. Further, the instant claims allow for zero percent of those metals. Further, claims 3-4 of the ‘382 application recited overlapping temperatures.
This is a provisional double patenting rejection.
Claim 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent Application No. 18031425 (“the ‘425 application”).
The claims of the ‘425 application teach a method of storing an overlapping compound in a container (stored) with limited HCl, so the concentration of other metals is lower than that required by the instant claims. Further, the instant claims allow for zero percent of those metals. Further, claims 3-4 of the ‘425 application recited overlapping temperatures.
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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/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621