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 .
Response to Amendment
Amendment filed on 9/10/2025 is acknowledged.
Claim 1 has been amended to incorporate molar ratio and reaction conditions recited in original claim 14.
Claim 14 has been amended to narrow the scope of molar ratio and reaction conditions.
New claim 17 has been added. Therefore, claims 1-17 are pending.
Response to Arguments
Applicant's arguments filed 9/10/2025 have been fully considered but they are not persuasive.
Applicant’s argument the amended claim 1, incorporating process conditions and mole ratio originally found in claim 14, obviates anticipatory rejection is persuasive.
Applicant argues Table 2 in instant specification demonstrate “optimal performance is achieved at a mole of 2.5:1 to 3:1 (hydrogen:iodine), with HI collection rates above 90%, whereas increasing the mole ratio above 3 results in a dramatic decrease in HI recover.” A review of Table 2 demonstrates a significant difference between a ratio of 2.7 (T=370 oC, contact time=7.4 sec) and 4.28 (T=320 oC, contact time 4.5) in HI collection rate. The argument is not persuasive because the findings as shown in Table 2 do not commensurate with the scope of claim 1 which recites a mole ratio of 2:1 to about 5:1, a temperature of about 200-500 oC, and a contact time of about 2-100 seconds. These ranges are much broader than what is demonstrated and include especially mole ratios which are shown to be outside the desired HI recovery rate.
The examiner further notes that while claim 14 is amended to narrow the mole ratio range and reaction conditions, claim 14 does not commensurate with Table 2 demonstration. Claim 14 calls for a reaction temperature range of about 300-350 oC which is lower than the reaction temperature of 370 oC and a contact time of about 60-80 seconds which is much higher than the contact time of 7.4 seconds for H2/I2 mole ratio of 2.7 as shown in Table 2.
Applicant states a terminal disclaimer was filed with the Remarks and Amendments. However, there is no record of such. Therefore, the nonstatutory double patenting is maintained.
In response to the amendment, 102(a)(2) rejection is withdrawn. However, a new ground of rejection under USC 103 is presented below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0308261 to Kanbe et al. (hereinafter “Kanbe”).
With respect to claims 1-17, Kanbe discloses a method for producing hydrogen iodide comprising:
mixing gaseous iodine with hydrogen to form a gas mixture [0122];
reacting the gas mixture in presence of catalyst to produce hydrogen iodide [0127];
separating unreacted iodine [0129];
cooling and liquifying the hydrogen iodide [0129]; and
recovering unreacted hydrogen contained in gas at the exit of a hydrogen iodide producing tower may be recycled [0124] & [0129].
Kanbe further discloses the molar ratio of hydrogen to gaseous iodine in a mixture gas is in a range from 0.5 to 10, and more preferably in a range from 0.5 to 6 [0118], a reaction temperature in a range from 200o to 1000o C [0136]. These ranges overlap with the claimed mole ratio of hydrogen to iodine from about 2:1 to 5:1 and a reaction temperature from about 200o to 500o C. Overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
With respect to the claimed contact time of from about 2 to 100 seconds, Kanbe discloses gas hourly space velocity is preferably in a range from 300 to 10000 hr-1 [0136] but does not specifically disclose the contact time. However, it would have been obvious to one skilled in the art at the time of the invention to determine a sufficient amount of time of contact between the reactant stream and the catalyst to promote reaction through routine experimentation.
With respect to claim 2, Kanbe discloses in the hydrogen iodide refining process, iodine dissolved in the refining solution is condensed and recovered as solid iodine [0228].
With respect to claims 3 and 4, Kanbe discloses the recovered iodine may be reused for a reaction for producing hydrogen iodide [0228]. Kanbe further discloses that the solid iodine is not directly made into gaseous iodine but temporarily made into liquid iodine and a part of the liquid iodine is made gaseous [0119].
With respect to claims 5 and 8, Kanbe discloses the flow rate of 450 ml/min for hydrogen and 75 ml/min for iodine which suggests it is a continuous process [0257].
With respect to claim 7, Kanbe discloses the hydrogen iodide gas is cooled down and liquidized which allows for easy removal of hydrogen [0129]. The hydrogen exits the hydrogen iodide producing tower and is recycled [0124].
With respect to claims 9-11, Kanbe does not disclose claimed pressure ranges for compressing the product stream. However, it is within the skill one of ordinary skill in the art to determine effective pressure range to remove hydrogen from the product stream.
With respect to claims 15-16, Kanbe discloses using hydrogen halide to form an organic iodide and aliphatic iodide [0173], [0174], and [0192].
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-22 of U.S. Patent No. 11554956 (hereinafter “Patent ‘956”). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims are direct to producing hydrogen iodide comprising providing a vapor-phase reactant stream comprising hydrogen and iodine, and reacting the reactant stream in presence of a catalyst to produce a product stream comprising hydrogen iodide. Claims 1 and 14 of Patent ‘956 read on instant claim 1 which recites the steps of separating unreacted iodine, condensing a stream comprising HI, and optionally venting or recycling a stream comprising unreacted H2.
Conclusion
THIS ACTION IS MADE FINAL. 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 IN SUK C BULLOCK whose telephone number is (571)272-5954. The examiner can normally be reached M-F 8:00 AM-4:30 PM.
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/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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