DETAILED ACTION
Applicant’s response filed on 04/13/2026 has been fully considered. Claims 1, 3-12, 14, and 15 are pending. Claim 1 is amended. Claims 2 and 13 are canceled.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1, 3-12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Carvill et al. (US 2005/0004406 A1)
Regarding claim 1, Carvill teaches a process for the reaction of a ketone with a phenol to form a bisphenol comprising reacting a feed comprising a phenol, a ketone, and water in the presence of an ion exchange resin catalyst to produce an effluent, determining the para-para bisphenol selectivity of the reaction, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0007], wherein the phenol starting materials may be commercial grade or better [0030], wherein as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], wherein the ketones are advantageously selected from aliphatic ketones, of which acetone is a representative example [0032], wherein aliphatic ketones which are useful starting materials include, but are not limited to acetone [0034], wherein a preferred aliphatic ketone is acetone, which condenses with phenol to produce 2,2-bis-(4-hydroxyphenyl)-propane, commonly known is bisphenol A [0034], wherein most preferred ketones include acetone [0037], wherein most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], wherein the ketone starting material may be commercial grade or better [0038], wherein as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], wherein the ion exchange resin catalyst may be used in combination with a bulk promoter [0052], wherein exemplary bulk promoters include, but are not limited to cycloaliphatic thiols, alkyl thiols, aromatic thiols, aliphatic thiols, thioglycollic acid, and 3-mercaptopropionic acid [0052], which reads on a process for preparing para,para-bisphenol A comprising the step of (a) condensing raw phenol and raw acetone in the presence of a catalyst system, wherein the catalyst system comprises an ion exchange resin catalyst and a sulfur containing cocatalyst, wherein the amount of acetophenone present in step (a) is 0 ppm or higher with respect to the total weight of the raw phenol, wherein 100 mol-% of the sulfur-containing cocatalyst is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a).
Carvill does not teach that the amount of acetophenone present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of acetophenone in Carvill’s phenol and ketone that is acetone to be slightly higher than 1 ppm with respect to the total weight of Carvill’s phenol in Carvill’s process. The proposed modification would read on the amount of acetophenone present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing purity of Carvill’s commercial grade phenol starting materials and purity of Carvill’s commercial grade ketone staring material that is acetone, for optimizing purity of Carvill’s p/p bisphenol produced in Carvill’s process, for optimizing efficiency of Carvill’s reaction in Carvill’s process, for optimizing the life of Carvill’s catalyst in Carvill’s process, and for minimizing the cost of the production of Carvill’s p/p bisphenol in Carvill’s process because Carvill teaches that the phenol starting materials may be commercial grade or better [0030], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], that the ketone starting material may be commercial grade or better [0038], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], that the process comprises determining the para-para bisphenol selectivity of the reaction, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0007], that the high overall selectivity when combined with the high p/p:o/p ratio indicates that little or no impurity aside from o/p bisphenol is produced [0022], that the high degree of selectivity of the reaction for p/p bisphenol results in the amount of impurities being greatly reduced, thus facilitating the isolation of the p/p bisphenol, improving the overall efficiency of the reaction and isolation, lengthening the life of the catalyst, as well as reducing the cost of the production of p/p bisphenol [0061], and that the ability of this process to be used with a virgin feed system, without significant recycle of impurities to the reactor, also results in a higher purity effluent, further simplifying or eliminating the purification process [0061], which means that the amount of acetophenone in Carvill’s phenol and ketone that is acetone in ppm with respect to the total weight of Carvill’s phenol in Carvill’s process would have affected purity of Carvill’s commercial grade phenol starting materials, purity of Carvill’s commercial grade ketone staring material that is acetone, purity of Carvill’s p/p bisphenol produced in Carvill’s process, efficiency of Carvill’s reaction in Carvill’s process, the life of Carvill’s catalyst in Carvill’s process, and the cost of the production of Carvill’s p/p bisphenol in Carvill’s process.
Regarding claim 3, Carvill teaches that the phenol starting materials may be commercial grade or better [0030], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], that the ketone starting material may be commercial grade or better [0038], and that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], which reads on wherein the amount of acetophenone present in step (a) is 0 ppm or higher with respect to the total mass of the raw phenol.
Carvill does not teach that the amount of acetophenone present in step (a) is higher than 1 ppm and equal to or lower than 5000 ppm with respect to the total mass of the raw phenol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of acetophenone in Carvill’s phenol and ketone that is acetone to be slightly higher than 1 ppm and less than or equal to 5000 ppm with respect to the total weight of Carvill’s phenol in Carvill’s process. The proposed modification would read on wherein the amount of acetophenone present in step (a) is higher than 1 ppm and equal to or lower than 5000 ppm with respect to the total mass of the raw phenol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing purity of Carvill’s commercial grade phenol starting materials and purity of Carvill’s commercial grade ketone staring material that is acetone, for optimizing purity of Carvill’s p/p bisphenol produced in Carvill’s process, for optimizing efficiency of Carvill’s reaction in Carvill’s process, for optimizing the life of Carvill’s catalyst in Carvill’s process, and for minimizing the cost of the production of Carvill’s p/p bisphenol in Carvill’s process because Carvill teaches that the phenol starting materials may be commercial grade or better [0030], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], that the ketone starting material may be commercial grade or better [0038], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], that the process comprises determining the para-para bisphenol selectivity of the reaction, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0007], that the high overall selectivity when combined with the high p/p:o/p ratio indicates that little or no impurity aside from o/p bisphenol is produced [0022], that the high degree of selectivity of the reaction for p/p bisphenol results in the amount of impurities being greatly reduced, thus facilitating the isolation of the p/p bisphenol, improving the overall efficiency of the reaction and isolation, lengthening the life of the catalyst, as well as reducing the cost of the production of p/p bisphenol [0061], and that the ability of this process to be used with a virgin feed system, without significant recycle of impurities to the reactor, also results in a higher purity effluent, further simplifying or eliminating the purification process [0061], which means that the amount of acetophenone in Carvill’s phenol and ketone that is acetone in ppm with respect to the total weight of Carvill’s phenol in Carvill’s process would have affected purity of Carvill’s commercial grade phenol starting materials, purity of Carvill’s commercial grade ketone staring material that is acetone, purity of Carvill’s p/p bisphenol produced in Carvill’s process, efficiency of Carvill’s reaction in Carvill’s process, the life of Carvill’s catalyst in Carvill’s process, and the cost of the production of Carvill’s p/p bisphenol in Carvill’s process.
Regarding claim 4, Carvill teaches that the process for the reaction of a ketone with a phenol to form a bisphenol comprises reacting a feed comprising a phenol, a ketone, and water in the presence of an ion exchange resin catalyst to produce an effluent, determining the para-para bisphenol selectivity of the reaction, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0007], that the phenol starting materials may be commercial grade or better [0030], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], that the ketone starting material may be commercial grade or better [0038], and that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038]. As explained above for claim 1, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of acetophenone in Carvill’s phenol and ketone that is acetone to be slightly higher than 1 ppm with respect to the total weight of Carvill’s phenol in Carvill’s process. Carvill therefore renders it obvious wherein the acetophenone is present throughout the whole of process step (a) as claimed.
Regarding claim 5, Carvill teaches that the residual phenol and other starting materials are typically isolated before being recycled to the reaction feed but small amounts of impurities can remain and thus become part of the feed [0057], that the bisphenol may be isolated from the residual starting materials, water, and side products found in the effluent [0061], that in the isolation process, water, residual ketone, and optionally some residual phenol are removed first, resulting in a bisphenol containing product stream [0061], that the p/p bisphenol may be isolated from the bisphenol containing product stream [0061], that advantageously, the high degree of selectivity of the reaction for p/p bisphenol results in the amount of impurities being greatly reduced, thus facilitating the isolation of the p/p bisphenol, improving the overall efficiency of the reaction and isolation [0061], that the phenol starting materials may be commercial grade or better [0030], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], that the ketone starting material may be commercial grade or better [0038], and that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], which reads on wherein the process further comprises the following step: (b) separating the mixture obtained after step (a) into a bisphenol A fraction comprising para,para-bisphenol A and a phenol fraction, wherein the phenol fraction comprises unreacted phenol and optionally acetophenone. As explained above for claim 1, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of acetophenone in Carvill’s phenol and ketone that is acetone to be slightly higher than 1 ppm with respect to the total weight of Carvill’s phenol in Carvill’s process. Carvill therefore renders it obvious wherein the phenol fraction comprises unreacted phenol and acetophenone as claimed.
Regarding claim 6, Carvill teaches that in the isolation process, water, residual ketone, and optionally some residual phenol are removed first, resulting in a bisphenol containing product stream by adduct crystallization, solvent crystallization, melt crystallization, or a combination of the foregoing isolation methods [0061], that the p/p bisphenol may be isolated from the bisphenol containing product stream by adduct crystallization, solvent crystallization, melt crystallization, or a combination of the foregoing isolation methods [0061], that the residual phenol and other starting materials are typically isolated before being recycled to the reaction feed but small amounts of impurities can remain and thus become part of the feed [0057], and that the bisphenol may be isolated from the residual starting materials, water, and side products found in the effluent [0061], which reads on wherein the separation in step (b) is performed using a crystallization technique as claimed.
Regarding claim 7, Carvill teaches that it can be desirable to recycle residual phenol and other starting materials found in the effluent stream [0057], that the residual phenol and other starting materials are typically isolated before being recycled to the reaction feed but small amounts of impurities can remain and thus become part of the feed [0057], that the removed ketone and residual phenol can be separated from the water and recycled to the reaction feed [0061], and that the phenol removed from the product stream may be recycled for use in the catalyzed reaction or adduct crystallization when present [0061], which reads on wherein the process further comprises the additional step of (c) using at least a part of the phenol fraction obtained in step (b) as educt in step (a) as claimed.
Regarding claim 8, Carvill teaches that exemplary bulk promoters include, but are not limited to 3-mercaptopropionic acid [0052], which optionally reads on wherein the sulfur containing cocatalyst is selected from mercaptopropionic acid as claimed.
Carvill does not teach a specific embodiment wherein sulfur containing cocatalyst is selected from the claimed group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Carvill’s bulk promoter in Carvill’s process to be Carvill’s 3-mercaptopropionic acid. The proposed modification would read on wherein the sulfur containing cocatalyst is selected from mercaptopropionic acid as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying catalyzing properties of Carvill’s process or for providing a species of bulk promoter that is suitable for Carvill’s process, or because it would have been obvious to try with a reasonable expectation of success because Carvill teaches that exemplary bulk promoters include, but are not limited to 3-mercaptopropionic acid [0052]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 9, Carvill teaches that the process for the reaction of a ketone with a phenol to form a bisphenol comprises reacting a feed comprising a phenol, a ketone, and water in the presence of an ion exchange resin catalyst to produce an effluent, determining the para-para bisphenol selectivity of the reaction, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0007], wherein the phenol starting materials may be commercial grade or better [0030], wherein as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], wherein the ketones are advantageously selected from aliphatic ketones, of which acetone is a representative example [0032], wherein aliphatic ketones which are useful starting materials include, but are not limited to acetone [0034], wherein a preferred aliphatic ketone is acetone, which condenses with phenol to produce 2,2-bis-(4-hydroxyphenyl)-propane, commonly known is bisphenol A [0034], wherein most preferred ketones include acetone [0037], wherein most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], wherein the ketone starting material may be commercial grade or better [0038], wherein as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], wherein the ion exchange resin catalyst may be used in combination with a bulk promoter [0052], wherein exemplary bulk promoters include, but are not limited to cycloaliphatic thiols, alkyl thiols, aromatic thiols, aliphatic thiols, thioglycollic acid, and 3-mercaptopropionic acid [0052], which optionally reads on wherein the acetophenone present in step (a) is introduced into the process of step (a) as impurity in the raw phenol as claimed.
Carvill does not teach a specific embodiment wherein the acetophenone present in step (a) is introduced into the process of step (a) as impurity in the raw phenol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of acetophenone in Carvill’s phenol to be slightly higher than 1 ppm with respect to the total weight of Carvill’s phenol in Carvill’s process. The proposed modification would read on wherein the acetophenone present in step (a) is introduced into the process of step (a) as impurity in the raw phenol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing purity of Carvill’s commercial grade phenol starting materials, for optimizing purity of Carvill’s p/p bisphenol produced in Carvill’s process, for optimizing efficiency of Carvill’s reaction in Carvill’s process, for optimizing the life of Carvill’s catalyst in Carvill’s process, and for minimizing the cost of the production of Carvill’s p/p bisphenol in Carvill’s process because Carvill teaches that the phenol starting materials may be commercial grade or better [0030], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], that the ketone starting material may be commercial grade or better [0038], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], that the process comprises determining the para-para bisphenol selectivity of the reaction, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0007], that the high overall selectivity when combined with the high p/p:o/p ratio indicates that little or no impurity aside from o/p bisphenol is produced [0022], that the high degree of selectivity of the reaction for p/p bisphenol results in the amount of impurities being greatly reduced, thus facilitating the isolation of the p/p bisphenol, improving the overall efficiency of the reaction and isolation, lengthening the life of the catalyst, as well as reducing the cost of the production of p/p bisphenol [0061], and that the ability of this process to be used with a virgin feed system, without significant recycle of impurities to the reactor, also results in a higher purity effluent, further simplifying or eliminating the purification process [0061], which means that the amount of acetophenone in Carvill’s phenol in ppm with respect to the total weight of Carvill’s phenol in Carvill’s process would have affected purity of Carvill’s commercial grade phenol starting materials, purity of Carvill’s p/p bisphenol produced in Carvill’s process, efficiency of Carvill’s reaction in Carvill’s process, the life of Carvill’s catalyst in Carvill’s process, and the cost of the production of Carvill’s p/p bisphenol in Carvill’s process.
Regarding claims 10 and 15, Carvill teaches a process for the manufacture of polycarbonate comprising reacting said bisphenol with a carbonic acid derivative or a carbonate diester in the presence of a polymerization catalyst [0008], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], and that the process comprises determining the para-para bisphenol selectivity of the reaction of the reacting the feed comprising the phenol, the ketone, and the water, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0008], which reads on a process for preparing polycarbonate comprising the steps of (i) obtaining a para,para-bisphenol A according to the process of claim 1 and (ii) polymerizing the para,para-bisphenol A obtained in step (i) as claimed, wherein step (ii) is performed in the presence of at least one further monomer in order to obtain a polycarbonate as claimed.
Regarding claim 11, Carvill teaches that the residual phenol and other starting materials are typically isolated before being recycled to the reaction feed but small amounts of impurities can remain and thus become part of the feed [0057], that the bisphenol may be isolated from the residual starting materials, water, and side products found in the effluent [0061], that in the isolation process, water, residual ketone, and optionally some residual phenol are removed first, resulting in a bisphenol containing product stream [0061], that the p/p bisphenol may be isolated from the bisphenol containing product stream [0061], that advantageously, the high degree of selectivity of the reaction for p/p bisphenol results in the amount of impurities being greatly reduced, thus facilitating the isolation of the p/p bisphenol, improving the overall efficiency of the reaction and isolation [0061], that the phenol starting materials may be commercial grade or better [0030], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0030], that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037], that the ketone starting material may be commercial grade or better [0038], that as readily understood by one of ordinary skill in the art commercial grade reagents may contain measurable levels of typical impurities such as acetophenone [0038], that the comprises determining the para-para bisphenol selectivity of the reaction, and adjusting the concentration of the water in the feed based upon the para-para bisphenol selectivity [0008], and that most preferably, the process is used to make bisphenol A by reaction of phenol with acetone [0037]. As explained above for claim 1, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of acetophenone in Carvill’s phenol and ketone that is acetone to be slightly higher than 1 ppm with respect to the total weight of Carvill’s phenol in Carvill’s process. Carvill therefore renders it obvious wherein the process of step (i) further comprises a step of purifying the para,para-bisphenol A in order to reduce the amount of acetophenone in the para,para-bisphenol A as claimed.
Regarding claim 12, Carvill teaches that in the isolation process, water, residual ketone, and optionally some residual phenol are removed first, resulting in a bisphenol containing product stream by adduct crystallization, solvent crystallization, melt crystallization, or a combination of the foregoing isolation methods [0061], that the p/p bisphenol may be isolated from the bisphenol containing product stream by adduct crystallization, solvent crystallization, melt crystallization, or a combination of the foregoing isolation methods [0061], that the residual phenol and other starting materials are typically isolated before being recycled to the reaction feed but small amounts of impurities can remain and thus become part of the feed [0057], and that the bisphenol may be isolated from the residual starting materials, water, and side products found in the effluent [0061], which reads on wherein the step of purifying is performing using a crystallization technique as claimed.
Regarding claim 14. Carvill satisfies the limitation wherein the alkyl sulfide is ethyl sulfide as claimed because claims 8 and 14 do not require the sulfur containing catalyst to be selected from alkyl sulfides if the sulfur containing catalyst is selected from mercaptopropionic acid, and Carvill’s teachings read on wherein the sulfur containing cocatalyst is selected from mercaptopropionic acid as explained above for claim 8.
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, 3-12, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/270,651 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a process for preparing ortho,para-, ortho,ortho- and/or para,para- bisphenol A comprising the step of (a) condensing raw phenol and raw acetone in the presence of a catalyst system, wherein the catalyst system comprises an ion exchange resin catalyst and a sulfur containing cocatalyst, wherein at least part of the sulfur containing cocatalyst is neither covalently nor ionically bound to the ion exchange resin catalyst at the beginning of process step (a), characterized in that wherein at least two of the following (A) to (F) are true:(A) the amount of 2-methyl benzofuran present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol; (B) the amount of hydroxyacetone present in step (a) is higher than 1 ppm with respect to the total weight of the sum of the weights of the raw phenol and the raw acetone; (C) the amount of alpha-methylstyrene present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol; (D) the amount of acetophenone present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol; (E) the amount of benzene present in step (a) is higher than 1 ppm with respect to the total weight of the raw acetone; and/or (F) the amount of cumene present in step (a) is higher than 1 ppm with respect to the total weight of the raw acetone (claim 1), wherein at least 75 mol% of the sulfur containing cocatalyst of the catalyst system of step (a) is neither covalently not ionically compound to the ion exchange resin catalyst at the beginning of process step (a) (claim 13), which reads on a process for preparing ortho,para-, ortho,ortho- and/or para,para- bisphenol A comprising the step of (a) condensing raw phenol and raw acetone in the presence of a catalyst system, wherein the catalyst system comprises an ion exchange resin catalyst and a sulfur containing cocatalyst, wherein the amount of acetophenone present in step (a) is higher than 1 ppm with respect to the total weight of the raw phenol, wherein at least 75 mol-% of the sulfur-containing cocatalyst is neither covalently nor ionically bound to the ion exchange catalyst at the beginning of process step (a) as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that Applicant submits a terminal disclaimer herewith directed to the ‘651 Application in compliance with 37 C.F.R. 1.321(c), and that Applicant respectfully requests the double patenting rejection of claims 1-15 be withdrawn (p. 5), the applicant has not filed a terminal disclaimer. The provisional rejection of claims 1, 3-12, 14, and 15 on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/270,651 (reference application) is therefore maintained.
Applicant’s arguments, see p. 5-8, filed 04/13/2026, with respect to the rejection of claims 1, 3-5, 7-11, 14, and 15 under 35 U.S.C. 103 as being unpatentable over De Brouwer et al. (WO 2012/150560 A1, cited in IDS, made of record on 06/29/2023) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see p. 5-8, filed 04/13/2026, with respect to the rejection of claims 6 and 12 under 35 U.S.C. 103 as being unpatentable over De Brouwer et al. (WO 2012/150560 A1, cited in IDS, made of record on 06/29/2023) as applied to claims 5 and 11, and further in view of Carvill et al. (US 2004/0116751 A1) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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