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 .
Status of the Claims
The amendment filed on 01/23/2026 has been entered. to the claims has not been filed. Claims 1 has been amended and claim 13 has been canceled. Thus claims 1-12 and 14 are currently pending and are under examination.
Withdrawn Rejection
Claims 1-5 and 9-14 of the copending application 18/040,294 have been canceled. Thus, the statutory double patenting rejection has been withdrawn.
Claim 1 has been amended to recite “the at least one olefin comprises propylene”. Applicant presents persuasive arguments with respect to US’751 in view of the international application WO2012/016147A2 (WO’147; cited in IDS 8/14/2023), by discussing that the claimed catalyst ligand I, even though considered homolog of the ligand of US’751, obtains a higher iso-selectivity of the aldehyde product than that of US’751. Moreover, WO’147, even though describes a generic formula of the ligand that includes -CH2-CH2- bridging the phospholate-phosphite, the reference exemplifies the same ligands as set forth in US’751, i.e. with -CH2- bridging. However, as presented in the examples and argued by the Applicant, the ligand with the -CH2- bridging does not provide a superior iso-selectivity when compared to the ligands as claimed. Thus, one of ordinary skill in the art would not have been motivated to select the ligand with -CH2-CH2-bridging from the generic formula of WO’147 to improve the iso-selectivity of the aldehyde product. Accordingly, the 103 rejection over Patent number US10,144,751 (US’751; cited in IDS 8/14/2023) in view of the international application WO2012/016147A2 (WO’147; cited in IDS 8/14/2023).
Additionally, the 103 rejection over the international application WO2012/016147A2 (WO’147; cited in IDS 8/14/2023) has also been withdrawn as the reference fails to set forth propylene as the olefin.
The nonstatutory double patenting rejection over the claims of U.S. Patent No. 10144751B1(‘751) in view of international application WO2012/016147A2 (WO’147; cited in IDS 8/14/2023) has also been withdrawn for the above reasons.
Terminal Disclaimer
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The filing date listed on the TD 02/04/2026 does not match the records.
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 1-12 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19455,139 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to a process for preparing at least one aldehyde under hydroformylation temperature and pressure conditions, comprising contacting at least one olefin with hydrogen and carbon monoxide in the presence of at least one solvent and a transition metal-based catalyst composition comprising a phospholane-phosphite ligand of formula I.
Copending claim 1 fails to recite that the at least one olefin comprises propylene, but the deficiency is cured by the copending claim 13 that recites propylene comprised in the at least one olefin. Thus, a skilled artisan would arrive at the instant claimed invention by the combination of copending claims 1 and 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-28 of copending Application No. 18/040,294 in view of U.S. Patent No. 10144751B1(‘751).
Claims 1-12 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-28 of copending Application No. 18/040,294 in view of international application WO2012/016147A2 (WO’147; cited in IDS 8/14/2023).
The claims at issue are drawn to a process for preparing at least one aldehyde under hydroformylation temperature and pressure conditions, comprising contacting at least one olefin with hydrogen and carbon monoxide in the presence of at least one solvent and a transition metal-based catalyst composition comprising a phospholane-phosphite ligand of formula I.
While the copending claim 1 suggests the use of the solvent in hydroformylation reaction, the claim fails to recite that the at least one solvent is one hydrocarbon solvent or fluorinated solvent as instantly claimed. The deficiency is however cured by US’751 or WO’147.
In the same field of endeavor as the copending claims and instant invention, both US’751 and WO’147 teach a process for preparing at least one aldehyde under hydroformylation temperature and pressure conditions, comprising contacting at least one olefin with hydrogen and carbon monoxide in the presence of at least one solvent and a transition metal-based catalyst composition comprising a phospholane-phosphite ligand. The solvent used in the references is hydrocarbon or fluorinated solvent (US’751) and toluene (WO’147).
As such, a skilled artisan would have been motivated to use the solvent of US’751 or WO’147 in the copending claim 1 and would have a reasonable expectation of success in arriving at the instantly claimed method.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
The subject matter of claims 1-12 and 14 is free of prior art references. The closest prior art references and their teachings have been set forth in the Office Action 07/23/2025. However, in view of the reasons set forth above, the instantly claimed invention is novel and unobvious.
Conclusion
Claims 1-12 and 14 are rejected and no claims are 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 MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692