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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 9/4/2026 has been entered.
Claim Status
Claims 1 and 8 were amended and claim 5 was canceled in the response filed on 9/4/2026. Claims 1, 3-4, and 6-9 are pending.
Withdrawn Claim Rejections
The Applicant’s amendments to claim 8 are persuasive to overcome the 35 USC 112(b) rejection of record on p. 2-4 of the OA dated 6/9/2026; therefore, the rejection is withdrawn. Also see p. 5 of the response.
The Applicant canceled claim 5 and amended independent claim 1 to be limited to toluene as the organic solvent. On p. 7 of the response, Applicant argues:
‘‘First, the Office Action states, "Joszai does not explicitly teach a two-phase solvent system in which an organic phase and an aqueous phase are present in a separated state in the solvent" (Office Action, p. 7). The rejection thus relies on Guan, which uses a THF/water biphasic system. Guan does not disclose or suggest the use of toluene. One of ordinary skill in the art would understand that THF and toluene differ materially in water miscibility (THF is readily soluble in water). Applicant respectfully submits, therefore, that replacing THF with toluene would not constitute a routine or predictable solvent substitution in Guan's reaction. Applicant respectfully submits that one of ordinary skill in the art would not have been motivated to replace THF with toluene based on the teachings of Joszai and/or Guan.’’
This argument has been fully considered and is persuasive. Guan and Joszai are silent regarding the use of toluene as a solvent and there is no indication that toluene, an aprotic non-polar hydrocarbon solvent, can be substituted for THF, an aprotic polar ether solvent with a reasonable expectation of success. Further, in Tables 1-2 of Huang (US 10300469, published on 5/28/2019, of record), the evidence indicates that toluene would not be as effective a solvent as THF based on analogous formic acid dehydrogenation reactions.
Therefore, the 35 USC 103 rejections of record over Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023) in view of Guan (“Conversion of CO2 from air into formate using amines and phosphorus-nitrogen PN3P-Ru(II)pincer complexes”. Green Chem, 2018, p. 4201, including Supporting Information p. S1-S34, of record), Huang (US 10300469, published on 5/28/2019, of record), Filonenko (“Highly Efficient Reversible Hydrogenation of Carbon Dioxide to Formates Using a Ruthenium PNP-Pincer Catalyst” ChemCatChem2014, p. 1526, including Supporting Information p. S1-S18, of record), Joo (“Molecular catalysis in liquid multiphase systems” Topics in Catalysis 5, 1998, p. 113, of record) and Sasson (US 2018/0123153, published on 5/3/2018, of record) on p. 4-19 of the OA dated 6/9/2026 are withdrawn.
The rest of the arguments on p. 7 of the response were also considered but are not persuasive. These arguments were already addressed on p. 18-19 of the OA dated 6/9/2026.
This amendment to claim 1 is also persuasive to overcome the provisional non-statutory double patenting rejection co-pending Application No. 18/841329 (‘329) (reference application) in view of Joszai on p. 24-25 of the OA dated 6/9/2026, which does not recite toluene in the claims. Therefore, the rejection is withdrawn.
The terminal disclaimer filed on 9/4/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12606513 has been reviewed and is accepted. The terminal disclaimer has been recorded. Therefore, the non-statutory double patenting rejection of record on p. 19-21 of the OA dated 6/9/2026 is withdrawn.
Double Patenting
See p. 19-26 of the OA dated 6/9/2026 for rejections of record which are maintained herein unless withdrawn above.
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, 3-4, and 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 7-12 of co-pending Application No. 18/043960 (‘960) (reference application) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘906 a broader variant of the instant process wherein the catalyst and ligand are limited to that of instant claims 7 and 8 and require the phase transfer catalyst of instant claim 9. Regarding toluene as the solvent, see claim 9 of ‘960. The claims of ‘906 do not require carbon dioxide in the hydrogenation step or the using of an alkaline earth metal carbonate or bicarbonate to produce the corresponding formate.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘906 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have included CO2 in the reaction and employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘960 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘906 would predictably produce calcium formate according to the instantly claimed process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Though the rejection over 18/043960 (‘960) is provisional, the instant application and ’96 share the same patent term filing date (8/30/2021). Therefore, according to MPEP 804(I)(B)(1)(b)(ii):
If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.
Claims 1, 3-4 and 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of co-pending Application No. 18/840951 (‘951) (reference application) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
The claims of ‘951 teach a broader variant of the instant process wherein the carbonate and formates are not limited to alkaline earth metal carbonates and formates. The claims of ‘951 otherwise teach the same process as that claimed using the same catalysts and solvents, wherein toluene is mentioned in claim 11 of ‘951.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘951 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘951 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘951 would predictably produce calcium formate according to the instantly claimed process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of co-pending Application No. 19/108913 (‘913) (reference application) in view of Joszai (“Hydrogenation of aqueous mixtures of calcium carbonate and carbon dioxide using a water-soluble rhodium(I)-tertiary phosphine complex catalyst” Journal of Molecular Catalysis A: Chemical 2004, p. 87, of record in the IDS filed on 3/3/2023).
The claims of ‘913 teach a broader variant of the instant process wherein the carbonate and formates are not limited to alkaline earth metal carbonates and formates (see claims 9-10). The claims of ‘913 otherwise teach the same process as that claimed using the same catalysts and solvents, wherein toluene is recited in claim 15 of ‘913.
The teachings of Joszai were described in detail in the rejections above and incorporated herein.
It would have been prima facie obvious to combine the claims of ‘913 and the teachings of Joszai to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have employed an alkaline earth metal, specifically calcium, carbonate or bicarbonate in the process of the claims of ‘913 because Joszai teaches that calcium formate is a valuable chemical in the tanning of leather and production of silage in animal nutrition and also that combinations of CO2 and calcium carbonates can be hydrogenated in the same mixture produce the correspond calcium formate. Therefore, including CO2 and calcium carbonates in the process of the claims of ‘913 would predictably produce calcium formate according to the instantly claimed process. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant Arguments on p. 9 of the response filed 9/4/2026
Applicant argues that the double patenting rejections should be withdrawn for the same reasons as set forth above regarding the rejections under 35 USC 103. The arguments have been fully considered but are not persuasive. The double patenting rejections rely on the combination of the claims of the applications/patents and Joszai. Therefore, arguments against the combination of Joszai and Guan are not persuasive. Further, the claims of ‘960, ‘951, and ‘913 explicitly recite the use of toluene. The rejections are maintained.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
Prosecution Insights