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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This application, filed June 12, 2023, is a reissue continuation of U.S. application Serial No. 17/019,691, now RE49,551, which is a reissue of U.S. Patent 10,183,281 (hereafter the '281 patent), which issued from U.S. application Serial No. 15/341,715 (the ‘714 application) with claims 1-8 on January 22, 2019. The ‘281 patent is a continuation of U.S. application Serial No. 14/753,623 (the ‘623 application) filed June 29, 2015, now U.S. Patent 9,643,163 (the ‘163 patent).
Objections and Rejections Resolved
All objections and rejections set forth in the Office action mailed 08/25/2025 have been overcome other than the issues set forth below.
Non-Compliant Amendment
The amendments to the specification filed 02/25/2026 is improper. The amendment does not comply with 37 CFR 1.173 which sets for the manner of making amendments in reissue applications. While the improper amendment has been entered and considered, Applicant’s next response should be a compliant amendment. An amendment filed after final rejection that fails to comply with 37 CFR 1.173 will not be entered.
All amendment changes must be made relative to the patent to be reissued, not relative to a previous submitted amendment. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification must be shown by employing the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets, i.e., single brackets; and (2) The matter to be added by reissue must be underlined.
The non-compliance issues is as follows:
The underlined “ of” in the phrase “ of U.S. Reissue Application Ser. No. 17/019,691” in the amended paragraph should not be underlined since “ of” is present at col. 1, line 8 of the ‘281 patent.
Claim Objections
Claim 14 is objected to because of the following informalities: In claim 14, “PO4” should be “PO4”, and “H2O” should be “H2O”. Appropriate correction is required.
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.
Claims 10 and 11 are 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.
Claim 10 is indefinite because it is unclear how “a double media salt” is related to the double metal salt in claim 9. The same applies to dependent claim 11. It is suggested that “a double media salt” in claim 10 be changed to “the double metal salt”.
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 9-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. RE49,551 (the ‘551 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claims 9-12, claim 9 of the ‘551 patent does not teach that the transesterification catalyst is present in a slurry with a triglyceride-containing oil or fat. However, claim 9 of the ‘551 patent sets forth that the transesterification catalyst, when present in a transesterification reactant mixture, is capable of being separated from the reactants. According to the ‘551 patent specification, in use, the transesterification catalyst can form a slurry with triglyceride-containing oils and/or fats, i.e., transesterification reactants, rather than alcohol, for a better reaction conversion to alkyl ester and easier separation of reactants (see col. col. 3, lines 8-34 and col. 4, lines 43-61).
It would have been obvious to one of ordinary skill in the art to have prepared a slurry containing the transesterification catalyst in claim 9 of the ‘551 patent and a triglyceride-containing oil or fat reactant when utilizing the transesterification catalyst to prepare alkyl ester. As noted above, the transesterification catalyst provides better catalytic conversion to alkyl ester and easier separation of the reactants from the transesterification catalyst. Accordingly, claim 9 of the ‘551 patent renders obvious instant claims 9-12.
With respect to claim 14, claim 9 of the ‘551 patent does not teach that the transesterification catalyst is present with an alkyl ester in a biodiesel fuel product. However, the ‘551 patent specification teaches that, in use, the transesterification catalyst is used to manufacture commercial grade, alkyl ester biodiesel (see Abstract; col. 3, lines 8-35 and 52-55). It would have been obvious to one of ordinary skill in the art to have obtained a reaction product containing biodiesel and the transesterification catalyst in claim 9 of the ‘551 patent because, in use, the transesterification catalyst is used to manufacture commercial grade, alkyl ester biodiesel. Accordingly, claim 9 of the ‘551 patent renders obvious instant claim 14.
Response to Arguments
Applicant's arguments filed have been fully considered. Applicant is correct in noting that a terminal disclaimer can be used to overcome the above nonstatutory double patenting rejection (Remarks, p. 10). Currently, a terminal disclaimer has not yet been filed, and thus, the rejection is maintained.
Conclusion
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.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,183,281 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
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, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/ALAN D DIAMOND/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991