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 .
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.
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Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-15 of U.S. Patent No. 12,540,114. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,540,114 claims a similar method.
Regarding claim 1, U.S. Patent No. 12,540,114 claims a method of preparing a phithalonitrile-based compound, comprising: (a) preparing a mixture including a phthalic acid-based compound and a nitrile- based compound; and (b) reacting the mixture, wherein step (b) is performed under supercritical conditions of the nitrile-based compound (see claims 1 and 60, since claim 6 is drawn to a method using the preparation system according to claim 1.
Regarding claim 2-11, U.S. Patent No. 12,540,114 claims a method wherein the phthalic acid-based compound is isophthalic acid, terephthalic acid, or a mixture thereof (see claim 7); wherein the nitrile-based compound is one or more selected from the group consisting of hydrogen cyanide, acetonitrile, acrylonitrile, butyronitrile, isobutyronitrile, pivalonitrile, succinonitrile, fumaronitrile, crotonitrile, and benzonitrile (see claim 8); wherein the nitrile-based compound is acetonitrile (see claim 9), since acetonitrile is a nitrile-based compound; wherein the mixture of step (a) is comprised of the phthalic acid-based compound and the nitrile-based compound (see claim 9); wherein in step (a), a content of the nitrile-based compound is 1 to 500 parts by weight based on 1 part by weight of the phthalic acid-based compound (see claim 10); wherein in step (a), a water content of the mixture is less than 6,000 ppm (see claim 11); wherein step (b) is performed under conditions of 260 to 350 °C and 40 to 200 bar (see claim 12); wherein step (b) is performed for 1 to 500 minutes (see claim 13); further comprising (c) separating the product of step (b) after step (b) (see claim 14); and wherein a residual compound separated in step (c) is reused in step (a) (see claim 15).
Election/Restrictions
Regarding claims 1-11, the applicant selected isophthalic acid as Species A and acetonitrile as Species B.
All 11 claims are examined.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 3,646,103 discloses a process for the production of nitrile; carboxylic acids can be converted into the corresponding nitriles; isophthalic acid is an aliphatic carboxylic acid used to be converted into a nitrile (see column 1, lines 22-65).
JP 4778151 B2 discloses a method for producing an olefinic compound from an organoboron compound and an acetylenic compound using a transition metal catalyst (see paragraph 0001); an organic boron compound having an organic group on a boron atom and an acetylene compound are reacted in the presence of a transition metal catalyst to produce an olefin having the organic group added thereto; the reaction system may be allowed to coexist with a proton source to promote the reaction, or may be reacted in the presence of a nitrogen-containing compound to increase the generation ratio of a compound having a plurality of carbon-carbon double bonds (see paragraph 0008); an example of the protic acid is organic acids (see paragraph 0042); an example of the organic acid is isophthalic acid (see paragraph 0043); and nitriles (acetonitrile) are examples of a nitrogen-containing compound (see paragraph 0047).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA E YOUNG whose telephone number is (571)270-3163. The examiner can normally be reached M-F 7:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wang Claire can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NATASHA E. YOUNG
Examiner
Art Unit 1774
/NATASHA E YOUNG/ Primary Examiner, Art Unit 1774
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