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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 29 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “in particular” in claim 29, line 3 renders the claim indefinite, because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
US patent No. 11,945767 to Weissker et al. is consider the closet prior art.
Weissker teaches a process for preparing metal alkoxides by means of transalcoholization, wherein - a lower metal alkoxide is fed via a side feed into a reactive distillation column comprising a top, a bottom, a rectifying section situated above the feed and a stripping section situated below the feed;- a higher alcohol is fed into the stripping section, the bottom and/or a bottoms circuit of the column; - a solution of a higher metal alkoxide in the higher alcohol is taken off at the bottom of the column and/or from the bottoms circuit; and - a vapor comprising lower alcohol is taken off at the top of the column, the vapor is at least partially condensed and a substream of the condensate is recycled to the top of the column as reflux; wherein the higher alcohol has a higher boiling point than the lower alcohol. However, Weissker fails to disclose an auxiliary alcohol to transalcoholization reaction to enhance the process reaction.
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 16-18, 21 and 23-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-26 of copending Application No. 18/039,504 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
The subject matter claimed in the instant application is fully disclosed and covered in the above copending application. The instant application and US patent application No. 18/039,504 is claiming common subject matter as follows: a method for controlling a reactive distillation column for effecting a transalcoholisation reaction, comprising - feeding a metal methoxide into the reactive distillation column via a side feed;- feeding a reactant alcohol into a lower part of the reactive distillation column; - causing an auxiliary alcohol to be present in the reactive distillation column; and optionally replenishing the auxiliary alcohol via a side feed located above the feed of the reactant alcohol and below the top of the column; - withdrawing methanol from the top of the reactive distillation column; and - withdrawing a solution of a product metal alkoxide in the reactant alcohol from the bottom of the reactive distillation column; wherein the method comprises a process control scheme selected from: Scheme C: - establishing a signal S2 which is responsive to a temperature at a point located between the feed of the metal methoxide and the bottom of the reactive distillation column; and - manipulating in response to the signal S2 the feed amount of the reactant alcohol; Scheme D: - establishing a signal S2 which is responsive to a temperature at a point located between the feed of the metal methoxide and the bottom of the reactive distillation column; and - manipulating in response to the signal S2 the heat supplied to the bottom of the reactive distillation column.
Basically all the recitations of claims of claims 16-18, 21 and 23-30 are recited in claims 16-26 of copending Application No. 18/039,504. Therefore, the copending claims anticipate claims 16-18, 21 and 23-30 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/JAFAR F PARSA/Primary Examiner, Art Unit 1692