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 .
Status of Claims
Claims 1 – 13 are pending.
Claims 1 – 13 are rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Claim 3 recites: “…wherein the acidic molecular sieve catalyst comprises an acidic molecular sieve.” The language is redundant, and is not further limiting the acidic molecular sieve catalst. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 – 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 6, 8, 10, 22, 24, 25, 26 and 30 of copending Application No. 18,275,444 (’444)(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the instantly claimed invention covers, inter alia, method for preparing glycolic acid through hydrolysis of alkoxyacetate, comprising: subjecting raw materials comprising the alkoxyacetate and water to a reaction in the presence of an acidic molecular sieve catalyst to produce the glycolic acid, wherein the alkoxyacetate is at least one selected from the group consisting of compounds with a structural formula shown in formula I:
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wherein R1 and R2 each are independently one selected from the group consisting of Ci-C5 alkyl groups. Claims 3 – 8 further define the acidic molecular sieve catalyst. Claims 9 – 13 further define the reaction conditions.
Claim 1 of ‘444 covers, inter alia, A method for preparing glycolic acid and methyl glycolate through a hydrolysis of methyl methoxyacetate and methoxyacetic acid, comprising: allowing raw materials comprising the methyl methoxyacetate, the methoxyacetic acid, and water to a contact and a reaction with a catalyst to produce the glycolic acid and the methyl glycolate, wherein the catalyst is any one selected from the group consisting of a solid acid catalyst, a liquid acid catalyst, a solid base catalyst, and a liquid base catalyst. Claim 2, 3, 6, 8 and 10 of ‘444 further defines the acidic molecular sieve catalyst. Claims 22, 23, 25, 26 and 30 further define the reaction conditions.
The difference between the instantly claimed invention and ‘444 is as follows: process produces glycolic acid and methyl glycolate; the starting reactant is limited to methyl ethoxy acetate and methoxyacetic acid; and the catalyst can be something other than an acidic molecular sieve.
However, the alkoxyacetate of the instantly claimed invention encompasses the methyl methoxyacetate of ‘444, which according to the instantly claimed invention produces the glycolic acid in a hydrolysis reaction. Further, with regard to the other catalyst of ‘444, there is nothing in the claim to indicate that those catalyst (liquid acid, solid base or liquid base) are combined with the acidic molecular sieve catalyst. As such, is can be presumed by one having ordinary skill in the are before the effective filing date of the instantly claimed reaction that only one type of catalyst is used during a reaction. Specifically, there is a hydrolysis reaction of ‘444 where the only catalyst in use is the acidic molecular sieve catalyst. Therefore, the claims of copending application ‘444 encompass the instant claims. Further, the claims of the instantly claimed invention and those of ‘’444 are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN1180067A ((Univ Qinghua) See English translation) mentions in the background that hydroxyacetic acid (glycolic acid) can be obtained by hydrolysis of methyl methoxyacetate without providing any parameters, i.e. catalyst etc.. However, the invention of CN’067 is to the method for simultaneously synthesizing methyl hydroxyacetate and methyl methoxyacetate from formaldehyde and methyl formate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692