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 .
Applicant's election with traverse of Group I, claims 1-11 in the reply filed on November 20, 2025 is acknowledged. The traversal is on the ground(s) that because the prior art does not disclose purifying hexafluoro-1,3-butadiene by contacting a mixture containing hexafluoro-1,3-butadiene with absorbents. This is not found persuasive because US patent 6,544,319 B2, which will be discussed in the following office action teaches purifying a mixture containing hexafluoro-1,3-butadiene with absorbent to produce 99.96 vol% hexafluoro-1,3-butadiene (HFBD). Furthermore, the semiconductor industry requires HFBD of this high purity for etching purposes.
The requirement is still deemed proper and is therefore made FINAL.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Krouse et al (US 6,544,319 B1).
Applicants’ claimed invention is directed to a process for the purification of hexafluoro-1,3-butadiene (HFBD) comprising a step wherein a liquid mixture comprising hexafluoro-1,3-butadiene in liquid phase is contacted with at least one adsorbent having an average pore size of less than 10 Å.
Krouse teaches an HFBD purification process includes: (a) contacting a composition containing HFBD with an adsorbent to remove from the HFBD at least two impurities selected from the group consisting of water, an alcohol, hydrofluoric acid and a fluorinated olefin, wherein the adsorbent is a solid having an average pore diameter of about 5 Å and the adsorbent is contacted with the HFBD at a rate of at least 2.7 kg (45 grams/min) of the HFBD per hour; and (b) recovering from the adsorbent a purified HFBD product containing at least 99.9 vol. % HFBD, a reduced amount of the impurities and less than 0.1 vol. % hexafluoro-2-butyne. Alternatively, the process can be conducted at any contacting rate to produce 99.96 vol. % HFBD. See abstract.
Krouse discloses the absorbents are zeolites typically referred to as small pore and behave as 4 Å and 5 Å type sieves, excluding molecules having effective diameters greater than 5 Å Broadly, any metallosilicate that is stable under process conditions and excludes HFBD from the internal pore volume is suitable for use in the inventive process. Due to their availability and demonstrated utility, small pore zeolites are preferred and Type A zeolites most preferred. Preferred zeolite compositions include A-type zeolites, ZK-4, ZK-5, Chabazite, Erionite, Gmelinite, and Offretite. See col. 3, lines 58-67.
Krouse discloses a variety of inorganic microporous metallosilicates containing framework elements other than aluminum will also be useful for HFBD purification. For example, the silicoaluminophosphate SAPO-42 has the same structure as Zeolite type A. The preferred crystalline aluminosilicate is typically referred to as a zeolite selected from the group consisting of structures containing 8-member oxygen ring apertures and having nominal effective pore entrances of 4 to 5 angstroms. See col. 3, lines 50-57.
Krouse teaches 5 Å molecular sieve was successful in delivering the desired purity levels without catalyzing the rearrangement reaction. Additional preferred adsorbents of the process can be identified by their ability to maintain the temperature of the bed at or below about 350C while the bed is contacting the HFBD containing feed gas and producing purified HFBD product.
Krouse teaches system pressure observed at pressure indicator PI dictates the maximum flow attainable and is maintained above 4 psig (0.276 bar), preferably 1 to 4 psig during the process by reducing the flow rate via flow control valve V3. The purification will work at lower pressures, albeit at the sacrifice of the capacity of the 5 Å molecular sieve bed. The purification is terminated when (1) the receiver tank is full, (2) the 5 Å. molecular sieve bed is spent and/or (3) when the source tank is empty. Receiver tank T2 is then isolated and warmed to room temperature. See col. 5, lines 1-10.
Krouse teaches reactivating said adsorbent after said adsorbent has been spent by at least one cycle of said contacting and said recovering, wherein said reactivating comprises heating said spent adsorbent to about 2600 C under a dry nitrogen purge, and then cooling said heated adsorbent to room temperature prior to said contacting. However there is no indication in the prior art that the fresh absorbent is thermally treated. See claim 11.
Krouse teaches if inert gas level are high, then they are removed by a procedure known as blowdown or control venting. That implies that purified HFBD contains inert gas (nitrogen and oxygen). See col. 6, lines 15-19.
Applicants in the background of the invention discloses the purification process of Krouse is carried out in the gas phase and col. 3 of the reference ”passing the product in a gaseous phase” whereas the present invention is conducted in the liquid phase. However, the Examiner notes that in a HFBD purification process impurities are present such as water, an alcohol, hydrofluoric acid and a fluorinated olefin. Therefore the process is not anhydrous and furthermore the temperature and pressure of the purification process falls within the same range as the present invention and HFBD have a purity of greater than 99.96%.
Present invention specifically claims a liquid phase contact step. While the pore size ranges (less than 10 A vs. less than 5 A) and resulting purity (99.96%) overlaps with the purification parameters.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to arrive at the claimed invention because Krouse teaches the purification of HFBD using similar absorbent (pore size less than 5 A) to achieve high purity (99.96%) since the prior art operates within the same temperature and pressure ranges, and HFBD can exist in either phase depending on minor adjustments to these parameters, the transition from gas phase contact to liquid phase contact represents a workshop modification rather than a patentable distinction. A PHOSITA seeking to optimize throughput for minimize equipment surface area would naturally experiment with liquid phase adsorption, as liquid is denser than gas, expecting a similar purification result.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-9 and 12-18 of copending Application No. 18/247,720 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
The subject matter claimed in the instant application is fully disclosed and covered in the above claims. The instant application and the US patent application No. 18/247,720 is claiming common subject matter as follows: a process for the purification of hexafluoro-1,3-butadiene comprising a step wherein a gaseous mixture comprising hexafluoro-1,3-butadiene is contacted with at least one first adsorbent and at least one second adsorbent to purify said gaseous mixture, wherein the at least one first adsorbent has an average pore size of more than 10 A and the at least one second adsorbent has an average pore size of less than 4 A.
Present invention specifically claims a liquid phase contact step. While the pore size ranges (less than 10 A ) whereas the claims of copending application 18/247,720 are drawn to a process for purification of HFBD in the gaseous phase.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to arrive at the claimed invention because the copending claims disclose the purification of HFBD using similar absorbent (pore size less than 5 A) to achieve high purity, since HFBD can exist in either phase depending on minor adjustments to these parameters, the transition from gas phase contact to liquid phase contact represents a workshop modification rather than a patentable distinction. A PHOSITA seeking to optimize throughput for minimize equipment surface area would naturally experiment with liquid phase adsorption, as liquid is denser than gas, expecting a similar purification result.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/JAFAR F PARSA/Primary Examiner, Art Unit 1692