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 .
Detailed Action
This office action is in response to applicant’s communication filed on 8/12/26.
Claims 16-30 are pending in this application.
Applicant's election with traverse of Group 1, claims 16-29, and the election for the species of pastilles, in the reply filed on 8/12/26 is acknowledged.
The traversal is not persuasive. As to the invention requirement, the product of claim 30 can be made by a materially different process. Applicant's own specification states that DHHB is solidified by crystallizing it in tubs or drums and afterwards crushing it. A process and a product made by that process are properly restrictable where the product can be made by a materially different process. As to the species requirement, applicant argues that the claims are linked by a special technical feature, namely the process of claim 16. As set forth below, the process of claim 16 is not free of the prior art. A feature that is not novel and nonobvious is not a special technical feature and cannot link the species.
Reference to applicant’s specification refers to applicant’s PGPub: US 20240150276.
Claims 24 and 30 are withdrawn from consideration being drawn to the non-elected invention and the non-elected species.
As a result, claims 16-23 and 25-29 are being examined in this Office Action.
Priority
The applicant claims benefit as follows:
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Objections
Claims 16, 18, 21 and 29 are objected to because of the following informalities:
Claim 16 recites "the process comprises the step of" and then recites two steps, (a) and (b). This should read "the steps of."
Claim 18 recites "stirring the melt or subcooled at a stirring speed." A noun appears to be missing. Perhaps this should read "the melt or subcooled melt."
Claim 21 recites a Markush group in the form "selected from the group consisting of an extruder, a scraped surface heat exchanger, a cooling disc crystallizer, or a stirred vessel." The proper form is "selected from the group consisting of A, B, C, and D." See MPEP 2117. The commas around "with scraping agitator" should also be removed so that the phrase clearly modifies "a stirred vessel."
Claim 29 recites "the scraper cooler," while parent claim 22 recites "a scraped surface heat exchanger." Consistent terminology is required.
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.
Claims 16-23 and 25-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 16 recites "applying a shear rate of 800 s⁻¹ or more to liquid hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate." The specification does not provide a standard for measuring this value in the apparatus in which the process is carried out. The only definition given is the parallel plate equation γ = v/h, where "v" is the velocity of the moving plate and "h" is the distance between the two plates (specification, paragraphs [0050]-[0051]). It is not clear that these plates even exist in an extruder, a scraped surface heat exchanger, a cooling disc crystallizer, or a stirred vessel, which are the apparatus recited in claims 21, 22 and 29. The specification adds only that "the rotational speed and the dimensions of an apparatus used for the application of the shear rate predetermine the shear rate," but it does not say which dimension is to be used as "h." A person of ordinary skill in the art would therefore not be able to tell whether a given operation falls inside or outside the claim. Where the specification does not supply a standard for measuring a claimed parameter, the claim is indefinite. See MPEP 2173.05(b). This is confirmed by the specification's own examples, which report values that cannot be derived from the disclosed equation: a 60 mm propeller stirrer at 250 rpm is said to give "approximately 1000 s⁻¹," and stirring with a spatula is said to give "approximately 50 s⁻¹" (specification, paragraphs [0118]-[0119]).
Claims 17-23 and 25-29 are rejected as depending from claim 16.
For the purpose of examination, the shear rate limitation will be treated as met when the prior art carries out the same operation on the same compound at the same stirring speed.
Claim 18 recites "the melt or subcooled" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 16, from which claim 18 depends, recites only "liquid hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate."
Claim 22 recites "the liquid hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate is stirred by the scraper" in the last line. There is insufficient antecedent basis for this limitation in claim 16, from which claim 22 depends. No scraper is previously recited. For the purpose of examination, the claim will be treated as reciting that step (a) is performed in a scraped surface heat exchanger with a scraper and that the liquid is stirred by that scraper.
Claim 27 recites "wherein a cooling belt is applied and the cooling belt comprises at least one cooling zone." Claim 25, from which claim 27 depends, recites a maturing belt. It is unclear whether the cooling belt is the maturing belt of claim 25 or a second additional belt. For the purpose of examination, the cooling belt will be treated as the maturing belt of claim 25.
Claim 28 recites "the cooling belt". There is insufficient antecedent basis for this limitation in claim 25, from which claim 28 depends. Claim 28 depends from claim 25, which recites only a maturing belt. For the purpose of examination, claim 28 will be treated as depending from claim 27.
Claim 29 recites "the scraper cooler" twice. There is insufficient antecedent basis for this limitation in claim 22, from which claim 29 depends. Parent claim 22 recites a scraped surface heat exchanger. For the purpose of examination, the scraper cooler will be treated as the scraped surface heat exchanger of claim 22.
Appropriate correction is required.
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 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 of this title, 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 16-21, 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Champ et al. (US 20100137629, pub date June 3, 2010, in applicant’s IDS filed 9/16/25), in view of Orban et al. (US 4683326, pub date July 28, 1987, in applicant’s IDS filed 5/26/26).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Champ et al. teaches a method for the crystallization of n-hexyl 2-(4-N,N-diethylamino-2-hydroxybenzoyl)benzoate. This is the same compound as the claimed hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate, or DHHB. Champ et al. teaches that the compound is sold by BASF as the UV-A filter Uvinul A Plus and that it melts at about 57 °C. (Champ et al., Abstract; paragraphs [0007], [0047])
Champ et al. teaches the same problem as applicant. Champ et al. teaches that the compound does not crystallize on its own at its melting point, that a thermodynamically metastable melt forms below the melting point, and that first crystal growth occurs only after storage for about six weeks at room temperature. (Champ et al., paragraphs [0007], [0017])
Champ et al. teaches providing a clear melt at a temperature above 57 °C and then crystallizing the compound at a temperature below 57 °C, wherein the clear melt is stirred below 57 °C until opacity arises. Champ et al. teaches that the clear melt is provided at 57 to 80 °C, preferably 58 to 65 °C, and in particular 59 to 62 °C, and that the melt is stirred at 25 to 40 °C, particularly 27 to 35 °C. (Champ et al., paragraphs [0010]-[0012], [0016], [0018])
Champ et al. teaches that the melt is stirred at a speed of 100 to 600 rpm, particularly preferably 200 to 500 rpm, using a stirrer such as a propeller stirrer having a diameter of 2 to 20 cm. Champ et al. teaches that the time until opacity arises, which is caused by the formation of crystal germs, can be reduced if the speed of the stirrer is increased. (Champ et al., paragraphs [0019]-[0021])
Champ et al. teaches in Example 6 that 5 kg of the molten compound in a 5 L aluminum container is stirred with a PTFE propeller stirrer of 60 mm diameter at a stirring speed of 250 rpm at room temperature. First crystals appear after five hours and complete crystallization takes place within 24 hours. (Champ et al., paragraph [0053])
Champ et al. also teaches adding seed crystals of the same compound. In Examples 2 and 4, at about 40 °C, 100 g of fine crystals of n-hexyl 2-(4-N,N-diethylamino-2-hydroxybenzoyl)benzoate smaller than 100 µm are added to 5 kg of the molten compound. (Champ et al., paragraphs [0049], [0051])
Champ et al. further teaches that after opacity has arisen the still liquid melt is transferred to a mold, and that a plane surface may be used as the mold. Champ et al. teaches that the melt may be applied as a thin layer of 0.1 to 5 mm which is later comminuted to a desired flake size by breakage, and that the melt may also be portioned into small drops and placed onto the flat surface so that pastilles or prills are formed. Champ et al. teaches that a continuously circulating steel belt may be used as the mold in a continuous method, and that the melt is left to crystallize out at 15 to 35 °C. (Champ et al., paragraphs [0023], [0040])Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Champ et al. teaches applying shear to the liquid compound by stirring, and Champ et al. teaches adding seed crystals of that compound.
However, Champ et al. is deficient in the sense that Champ et al. teaches these two operations in separate embodiments. Champ et al. does not expressly teach adding the seed crystals while the shear of step (a) is applied. Champ et al. is also silent as to a shear rate.
Orban et al. cures this deficiency. Orban et al. teaches the solvent-free crystallization of a melt of an organic compound that crystallizes extremely poorly. Orban et al. teaches that the solidified melt is otherwise obtained as an amorphous product that melts at 55 to 62 °C. (Orban et al., column 1, lines 30-47)
Orban et al. teaches seeding the melt with 0.1 to 5 percent by weight of seed crystals of the same compound in an extruder, a kneader, or an internal mixer. Orban et al. teaches that the seed crystals are added to the melt while the melt is being worked in that apparatus. (Orban et al., claim 1; column 2, lines 1-5 and 28-37)
Orban et al. teaches that crystallization of the melt takes place very rapidly under these conditions, with residence times of 3 to 5 minutes in an extruder, and that a 100 percent crystallization of the melt is obtained. Orban et al. expressly teaches the disadvantage of seeding without shear: if the melt were instead seeded in a laboratory stirring apparatus, the melt would have to be stirred for about 1 hour or longer and the product would still contain at least 1 to 3 percent of amorphous product. (Orban et al., column 2, line 55 to column 3, line 5)
Orban et al. teaches that the process is preferably carried out continuously in a single-screw, double-screw, or planetary roller extruder. In Example 2, the melt is fed to the extruder at 5 kg/h and the seed crystals are metered to that melt at the same time. (Orban et al., column 2, lines 10-18; Example 2)
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Therefore, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention to add the seed crystals of Champ et al. while applying the stirring of Champ et al. Champ et al. teaches both operations for the same purpose, namely starting the crystallization of a metastable DHHB melt. It is prima facie obvious to combine two operations each taught by the prior art for the same purpose in order to form a third operation used for the very same purpose. MPEP 2144.06. (Champ et al., paragraphs [0018], [0020], [0049], [0051])
Additionally, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention to combine the seeding and the shearing in view of Orban et al. Orban et al. teaches that it is the combination of seeding with intensive shear, and not either one alone, that gives rapid and complete crystallization of a poorly crystallizing solvent-free melt. Orban et al. teaches slow solvent-free crystallization of a low melting organic melt, and the amorphous product melts at 55 to 62 °C, which is close to the melting point of DHHB. (Orban et al., column 1, lines 30-47; column 2, line 55 to column 3, line 5)
One of ordinary skill in the art would have been motivated to make this combination because Champ et al. reports long crystallization times. Complete crystallization takes 14 days when the melt is stirred at 80 rpm without seeding, 24 hours when the melt is stirred at 250 rpm without seeding, and two months when the melt is seeded but not stirred. Champ et al. identifies increased stirrer speed as the way to shorten this time. A reasonable expectation of success existed because both operations were already carried out on this same compound, in the same apparatus, and at the same temperatures. (Champ et al., paragraphs [0020], [0049], [0051]-[0053])
With regard to the recited shear rate of 800 s⁻¹ or more, Champ et al. is silent as to shear rate. However, applicant's own specification assigns a shear rate to the conditions of Champ et al. Example 6. Comparative Example 2 of applicant’s specification states that it "is in line with Example 6 of EP 2155660 B1," the European member of the Champ et al. family, and recites 5 kg of DHHB in a 5 L aluminum vessel stirred by a PTFE propeller stirrer of 60 mm diameter at 25 °C at a stirring speed of "250 rpm (approximately 1000 s⁻¹)." These are the conditions of Champ et al. Example 6. Applicant has therefore admitted that the prior art applies a shear rate of approximately 1000 s⁻¹, which is 800 s⁻¹ or more. Admissions in the specification as to what is prior art may be relied upon in an obviousness rejection. MPEP 2129. (applicant’s specification, paragraph [0119]; Champ et al., paragraph [0053])
In the alternative, Champ et al. teaches that the time until crystal germs form can be reduced if the speed of the stirrer is increased. Shear rate is therefore a result effective variable. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 II A. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the stirring of the combined references to achieve a desired crystallization time, and in such an optimization one of ordinary skill in the art would have arrived at applicant's claimed shear rate. (Champ et al., paragraph [0020])
With regard to claim 17, Champ et al. teaches providing a clear melt at 59 to 62 °C, and teaches that a metastable melt is formed below the melting point, for example at room temperature, which is a subcooled melt. (Champ et al., paragraphs [0016]-[0017])
With regard to claim 18, Champ et al. teaches a stirring speed of 100 to 600 rpm, which lies inside the claimed range of 50 to 600 rpm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257 (CCPA 1976). MPEP 2144.05 I. The first alternative is also met for the reasons given above as to the shear rate. (Champ et al., paragraph [0020])
With regard to claim 19, Champ et al. teaches adding the seed crystals at about 40 °C and teaches stirring the melt at 25 to 40 °C, both of which fall within the claimed range of about 15 to about 54 °C. (Champ et al., paragraphs [0018], [0049], [0051])
With regard to claim 20, Champ et al. teaches adding 100 g of seed crystals to 5 kg of melt, which is 0.02 g of seed crystals per 1 g of the compound to be solidified and falls within the claimed range of 0.0001 to 0.1 g. Champ et al. also teaches seed crystals smaller than 100 µm, which is less than the claimed 100000 µm. (Champ et al., paragraphs [0049], [0051])
With regard to claim 21, Orban et al. teaches carrying out the seeded melt crystallization in an extruder, a kneader, or an internal mixer, and teaches a single-screw, double-screw, or planetary roller extruder. Champ et al. teaches carrying out the stirring below the melting point at 25 to 40 °C, which is less than about 54 °C. Thus, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to carry out the process in the extruder of Orban et al. cooled to the temperature taught by Champ et al., in order to obtain the rapid and complete crystallization that Orban et al. reports. (Orban et al., claim 1; column 2, lines 10-18; Champ et al., paragraph [0018])
With regard to claim 25, Champ et al. teaches transferring the still liquid melt to a mold after opacity has arisen. Because opacity is caused by the formation of crystal germs, the transferred melt contains solids and is a melt suspension. Champ et al. teaches applying that melt as a thin layer onto a plane surface, teaches that a continuously circulating steel belt may be used as the mold in a continuous method, and teaches crystallizing out at 15 to 35 °C, which is less than about 54 °C. Champ et al. further teaches comminuting the thin layers to a desired flake size by breakage. (Champ et al., paragraphs [0020], [0022]-[0023], [0040])
With regard to claim 26, Champ et al. teaches that the still liquid melt may be portioned into small drops and placed onto the flat surface such that pastilles or prills are formed, and teaches crystallizing out at 15 to 35 °C. (Champ et al., paragraphs [0023], [0040])
Claims 22, 23, 27, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Champ et al. (US 20100137629, pub date June 3, 2010, in applicant’s IDS filed 9/16/25), in view of Orban et al. (US 4683326, pub date July 28, 1987, in applicant’s IDS filed 5/26/26), and further in view of Siewert et al. (US 20170216802, pub date Aug. 3, 2017).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Champ et al. and Orban et al. have been discussed previously within this office action.
Siewert et al. teaches a process for the production of solid cooling agents in which a pre-scraped melt, that is, a melt of menthol compounds with added seed crystals, is placed onto a pre-cooled area by even deposition of drops. Siewert et al. teaches that the melting point of the stable form of menthol is 42 to 43 °C. (Siewert et al., Abstract; paragraphs [0002], [0012])
Siewert et al. addresses the same problem as Champ et al. Siewert et al. teaches that the compound is traditionally allowed to crystallize in troughs or tubs in cold storage for many days, and that the technical effort and the low space and time profit of such a long-term process render it unattractive for industrial use. (Siewert et al., paragraph [0004])
Siewert et al. teaches that the seed crystals are obtained by treating the melt to be solidified in a scraped surface heat exchanger, as a result of which the seed crystals are formed in situ in the melt that is to be solidified, avoiding an additional process step. (Siewert et al., paragraph [0037])
Siewert et al. teaches that this seeding is obtained by allowing the melt to pass through a heat exchanger that is operated below the melting point, where adhering crystallized material is scraped off the walls by a scraping means. Siewert et al. teaches that the skilled person is familiar with such arrangements, which are referred to as scraped surface heat exchangers. (Siewert et al., paragraph [0040])
Siewert et al. teaches that the pre-scraped melt has a temperature in the range of from about 40 to about 60 °C, and particularly of from about 43 to 50 °C, which is above the 42 to 43 °C melting point of the compound being solidified. (Siewert et al., paragraph [0041])
Siewert et al. teaches that the pre-scraped melt is fed by means of a pump to a Rotoform system, which deposits drops of product on the whole length of a steel belt cooler. (Siewert et al., paragraphs [0039], [0042])
Siewert et al. teaches that the melt drops are deposited onto a cooled steel belt which may have a plurality of cooling zones that can be tempered independently of one another, to temperatures below the congelation point. Siewert et al. teaches that cooling belts with three cooling zones are typical, of which the first two have temperatures of from about 25 to 30 °C and the last one of from about 15 to 20 °C. Siewert et al. further teaches that the process can be performed on plants having a system capacity of from 50 to 1,000 kg/h. (Siewert et al., paragraph [0043])
Siewert et al. teaches that the tests were performed on a steel belt cooler with a Rotoformer and an upstream scraped surface heat exchanger. Siewert et al. teaches that a melt that has been pre-scraped in the scraped surface heat exchanger, that is, a suspension of seed crystals in menthol, was deposited onto a pre-cooled steel belt by means of the Rotoformer, that the cooling belt had three cooling zones which could be tempered independently of one another, and that an output in the range of from 150 to 165 kg/h was obtained during the tests. (Siewert et al., paragraphs [0065]-[0066])
Siewert et al. teaches in Example 1 that the three cooling zones were held at 30 °C, 30 °C and 15 °C, and that the scraped surface heat exchanger was held at 41.5 °C, which is below the 42 to 43 °C melting point. (Siewert et al., paragraph [0067], Table 1)
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Champ et al. in view of Orban et al. teaches applying shear to a DHHB melt while adding seed crystals of DHHB, and teaches solidifying the resulting melt on a continuously circulating steel belt.
However, the references are deficient in the sense that they do not expressly teach performing step (a) in a scraped surface heat exchanger in which the melt is stirred by a scraper, and do not expressly teach a cooling belt having one or two cooling zones.
Siewert et al. cures these deficiencies. Siewert et al. teaches heating the compound until a liquid melt is obtained, feeding that liquid melt by pump into a scraped surface heat exchanger operated below the melting point, and forming seed crystals in situ in that melt while the melt is scraped by a scraping means, so that a suspension of seed crystals in the melt is obtained. Siewert et al. teaches that the melt so fed is above the melting point of the compound and that the scraped surface heat exchanger is below it. (Siewert et al., paragraphs [0037], [0039]-[0041], [0066]-[0067])
Siewert et al. further teaches depositing the resulting suspension onto a cooled steel belt having a plurality of independently tempered cooling zones, and teaches that three such zones are typical. (Siewert et al., paragraphs [0043], [0066])
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Therefore, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention to carry out the seeded and sheared crystallization of Champ et al. in view of Orban et al. in the scraped surface heat exchanger of Siewert et al. Siewert et al. teaches that apparatus for the same purpose for which the combined references apply shear and add seed crystals, namely to generate seed crystals in the melt that is to be solidified. Siewert et al. teaches the added benefit that the seed crystals are formed in situ, which avoids a separate seeding step. Both Champ et al. and Siewert et al. are directed to the solidification of a low melting organic compound that crystallizes slowly and that is otherwise crystallized in tubs or troughs over many days, so that one of ordinary skill in the art would have had a reasonable expectation of success. (Champ et al., paragraphs [0007], [0017]; Siewert et al., paragraphs [0004], [0037], [0040])
With regard to claim 22, Champ et al. teaches heating the compound until a clear liquid melt is obtained at 59 to 62 °C. Siewert et al. teaches feeding the liquid melt by pump into a scraped surface heat exchanger and stirring that melt by the scraping means as seed crystals are formed. (Champ et al., paragraph [0016]; Siewert et al., paragraphs [0037], [0039]-[0040])
With regard to claim 23, Champ et al. teaches heating the compound to 57 to 80 °C, preferably 58 to 65 °C, to obtain the clear melt, which is more than about 54 °C. Siewert et al. teaches that the scraped surface heat exchanger is operated below the melting point of the compound being solidified, and Champ et al. teaches carrying out the crystallization below 57 °C at 25 to 40 °C, which is less than about 54 °C. (Champ et al., paragraphs [0016], [0018]; Siewert et al., paragraphs [0040]-[0041])
With regard to claim 27, Siewert et al. teaches depositing the melt drops onto a cooled steel belt having cooling zones that can be tempered independently of one another. (Siewert et al., paragraph [0043])
With regard to claim 28, Siewert et al. teaches that cooling belts with three cooling zones are typical, and teaches a cooling belt having three cooling zones tempered independently of one another at 30 °C, 30 °C and 15 °C. (Siewert et al., paragraphs [0043], [0066]-[0067])
With regard to claim 29, Siewert et al. teaches a continuous process in which the melt is pumped into the scraped surface heat exchanger and the resulting suspension of seed crystals in the melt is taken from that heat exchanger and deposited on the cooling belt at an output of 150 to 165 kg/h. Champ et al. also teaches that the production process can take place continuously. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to operate the process continuously in order to obtain the throughput taught by Siewert et al. (Champ et al., paragraph [0023]; Siewert et al., paragraphs [0043], [0066])
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. See 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.2d438, 164 USPQ 619 (CCPA 1970); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 16-23 and 25-29 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 16, 18-19, 21-29, 31-32 and 34 of copending Application No. 18279902, in view of Champ et al. (US 20100137629, pub date June 3, 2010, in applicant’s IDS filed 9/16/25), further in view of Siewert et al. (US 20170216802 A1, pub date Aug. 3, 2017).
The teachings of Champ et al. and Siewert et al. have been discussed previously within this office action.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of copending Application No. 18279902 is directed to a process for the solidification of DHHB comprising applying a shear rate to liquid DHHB and adding seed crystals of DHHB while applying that shear rate. Claims 31 and 32 of the copending application recite the same process in independent form. The only difference between instant claim 16 and the claims of the copending application is that the copending claims recite a shear rate of less than 800 s⁻¹ while the instant claim recites 800 s⁻¹ or more. In all other respects instant claim 16 is broader.
The difference in shear rate does not make the claims patentably distinct. The two ranges meet at 800 s⁻¹. "Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)." MPEP 2144.05 I. Champ et al. further teaches that the time until crystal germs form can be reduced if the speed of the stirrer is increased, which gives one of ordinary skill in the art a reason to operate above 800 s⁻¹ in order to crystallize the melt faster. (Champ et al., paragraph [0020])
The instant dependent claims are likewise not patentably distinct, since the claims of copending Application No. 18279902 also overlap in scope.
Instant claims 25-29 recite downstream solidification steps that the copending claims do not recite.
Champ et al. teaches transferring the opaque melt to a continuously circulating steel belt, applying it as a thin layer that is broken into flakes, and portioning it into small drops to form pastilles, with crystallizing out at 15 to 35 °C. Siewert et al. teaches depositing the seeded melt suspension in drops onto a cooled steel belt having a plurality of independently tempered cooling zones, with three zones being typical, and teaches operating the process continuously at 150 to 165 kg/h. (Champ et al., paragraphs [0023], [0040]; Siewert et al., paragraphs [0043], [0066])
Thus it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to complete the process of the copending claims by the belt solidification and pastillation steps of Champ et al. and Siewert et al., in order to obtain the pourable solid form that is the object of the process.
This is a provisional obviousness-type double patenting rejection, because the conflicting claims have not in fact been patented.
Conclusion
No claim is allowed.
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/JENNIFER C SAWYER/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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