DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The submission filed on 07/21/2023 has been entered. Claims 1-20 are pending in this application. Claims 7-20 are withdrawn. Claims 1-6 are currently under examination.
Priority
This is US Application No. 18/225,010 filed on 07/21/2023 and claims benefit of US PRO 63/392,441 filed on 07/26/2022.
Election/Restrictions
Applicant's election with traverse of Group I invention (claims 1-6) in the reply filed on 03/09/2026 is acknowledged. The traversal is on the ground(s) that “The differences among Groups I, II, and III are limited to the identity of the contaminant class and the corresponding reactive compound… iodine containing, sulfur containing (for example thiols), and basic nitrogen containing (for example alkylamines) impurities as contaminants in the same acetonitrile containing waste stream generated by an oligonucleotide synthesis process… they reflect species or alternative embodiments of a single inventive concept… search and examination burden does not rise to the degree to place a serious examination burden” (p. 2, para. 1-3). This is not found persuasive because the "Inventions I/II, I/III, I/IV, II/III, II/IV, or III/IV are unrelated”, as set forth on page 3 of the Restriction/Election Requirement mailed on 01/08/2026. Also, the claimed waste stream in Groups I, II, and III does not limit to the same waste stream or that generated by an oligonucleotide synthesis. Claims 7-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Thus, claims 1-6 are currently under examination.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) with appropriate assertion under 37 CFR 1.98 filed on 03/10/2026 has been considered.
Claim Objections
Claims 4 and 6 are objected to because of the following informalities: In claim 4, change the incorrect recitation “the top fraction” (line 1) to “the overhead fraction” to tie with the preceding “overhead fraction” in claim 1. In claim 6, insert the missing action word “obtain” immediately before the recitation “a purified” (line 1). Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gajda et al. (US 10,336,690, Jul. 2, 2019, hereinafter referred to as Gajda ‘690).
With regard to structural limitations “a method comprising: receiving a waste stream comprising acetonitrile, toluene, and one or more iodine containing compounds; adding an iodine reactive compound to the waste stream; fractionating the waste stream to produce an overhead fraction (defined as “the term "overhead" fraction means a fraction removed from an upper portion of a fractionation column. The overhead fraction includes components of the original mixture with lower boiling points than components found in the "bottoms", in the Specification, p. 6, [0020]) and a bottom fraction, the overhead fraction comprising the acetonitrile and the toluene of the waste stream (or further comprises iodine at a concentration less than 25 ppm), and the bottom fraction comprising the one or more iodine containing compounds of the waste stream (or iodine precipitate)” (claims 1, 4, and 5), and “ further comprising purifying the overhead fraction to obtain a purified overhead fraction consisting essentially of acetonitrile and toluene” (claims 1 and 4-6):
Gajda ‘690 disclosed a method for purifying an acetonitrile waste stream including providing an acetonitrile waste stream and fractionating the acetonitrile waste stream to produce a single
overhead fraction. The method includes condensing the single overhead fraction to produce a condensed single overhead fraction and contacting the condensed single overhead fraction with an adsorbent to produce an acetonitrile stream that comprises an amount of at least one impurity that
is reduced. The term "overhead" fraction means a fraction removed from an upper portion of a fractionation column. The overhead fraction includes components of the original mixture with lower
boiling points than components found in the "bottoms". Suitable adsorbents include silver (Ag)-exchange zeolites. The iodine-reducing adsorbents are limited to faujasite zeolites. In some embodiments, the methods are used to purify an acetonitrile waste stream comprising organic and/or inorganic iodine-containing compounds as impurities. In some embodiments, the resulting purified acetonitrile stream comprises about 25 ppm of iodine or less. In some embodiments, the single overhead fraction may also comprise some higher boiling impurities, such as toluene, due to azeotropic behavior (page 5/12, col. 1, lines 61-67; col. 2, lines 1-3; page 7/12, col. 6, lines 30, 31, 43-45, and 57-62; page 6/12, col. 3, lines 50-60).
Thus, these teachings of Gajda ‘690 anticipate Applicant’s claims 1 and 4-6.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Gajda et al. (US 10,336,690, Jul. 2, 2019, hereinafter referred to as Gajda ‘690) in view of Germann et al. (Journal of the American Chemical Society 45.11 (1923): 2486-2493, hereinafter referred to as Germann ‘1923). Claims 1 and 4-6 are rejected here because they have been rejected by the primary reference under 102 above. Thus, the above disclosure of Gajda ‘690 is incorporated by reference in its entirety.
Gajda ‘690 did not explicitly disclose the limitations “the iodine reactive compound comprises sodium thiosulfate (or sodium thiosulfate and silver nitrate)”, required by claims 2 and 3.
Germann ‘1923 disclosed that potassium iodide is adsorbed by silver iodide, synthesized from reaction of potassium iodide with silver nitrate. A given weight of silver iodide has a much greater specific surface than the same weight of other silver halide and therefore is capable adsorbing much more soluble halide. Sensitization of silver iodide is effected by addition of sodium thiosulfate, hydrogen sulfite. Each of these compounds has the power of combining with iodine. The reactions are: 2Na2S2O3 + I2 [Wingdings font/0xE0] Na2S4O6 + 2NaI (page 2490, para. 4; page 2489, para. 1; page 2491, para. 5).
Thus, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute the silver zeolite of Gajda ‘690 to adsorb iodine with combination of sodium thiosulfate and silver nitrate in view of Germann ‘1923 to enhance the adsorption of both iodide and iodine (I2) because the sodium thiosulfate combines with I2 to yield iodide and iodide reacts with silver nitrate to yield silver iodide that also adsorbs other iodide, described above. Thus, one of skill in the art would have a reasonable expectation that by substituting the silver zeolite of Gajda ‘690 to adsorb iodine with combination of sodium thiosulfate and silver nitrate in view of Germann ‘1923 to enhance the adsorption of both iodide and iodine (I2), one would achieve Applicant’s claims 1-6. "Exemplary rationales that may support a conclusion of obviousness include: (B) Simple substitution of one known element for another to obtain predictable results". See MPEP § 2143 [R-01.2024] [I].
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 and 4-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,336,690 (Applicant: Honeywell International Inc., Jul. 2, 2019). Although the claims at issue are not identical, they are not patentably distinct from each other because Pat ‘690 claims “A method for processing an acetonitrile waste stream the method comprising the steps of: providing an acetonitrile waste stream containing acetonitrile, toluene, acetic acid, propanenitrile, organic and/or inorganic iodine-containing compounds… fractionating the acetonitrile waste stream to produce a single overhead fraction comprising the pyridine, organic and/or inorganic iodine-containing compounds… condensing the single overhead fraction to produce condensed single overhead fraction; contacting the condensed single overhead fraction with a silver-exchange zeolite to remove the organic and/or inorganic iodine-containing compounds… compounds (or the single overhead fraction comprises a distillate from initial boiling of the acetonitrile waste stream to about 82 °C. at standard pressure” (claims 1 and 2), which are encompassed by claims 1, 5, and 6 of this Application, and would also achieve the same intended results, including “the overhead fraction further comprises iodine at a concentration less than 25 ppm”, required by claim 4 of this Application.
Conclusion
No claims are allowed.
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/YIH-HORNG SHIAO/Primary Examiner, Art Unit 1691
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