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 .
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.
Claim(s) 1, 4, 5, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Surnin et al. (Flenum Publishing Corp., 1985).
The claims are drawn to a process for producing an imine-functional organosilicon compound by combining an aldehyde-functional organosilicon compound with a primary amine to affect a dehydrative imine generation reaction, thereby forming a reaction product comprising an imine-functional organosilicon compound and water.
Surnin et al. teach a process for forming imines of alpha, beta-unsaturated aldehydes by reacting an ethylenic aldehyde with a primary aldehyde. For example, 3-trimethylsilyl-2-propenal is reacted with a primary amine, e.g., methylamine, propylamine, aniline, and tert-butylamine, to produce the corresponding imine compound. Water that is produced may be azeotropically separated from the reaction mixture (p. 1822, and bottom of p.1827).
The difference between Surnin et al. and the present invention is that the former uses a reactant comprising unsaturated, i.e., carbon-carbon double bond containing aldehydes, while the present invention uses an aldehyde-functional organosilicon reactant that is free of aliphatic unsaturation.
The examiner does not find that this is a patentable distinction, as the process taught by Surnin et al. is substantially similar to the claimed process. The examiner contends that a person having ordinary skill in the art would be able to substitute a saturated aldehyde-functionalized organosilicon for the unsaturated compound taught by Surnin et al., and produce the corresponding imine-functionalized organosilicon compound, using the process taught by Surnin et al. Therefore, the instant claims are rendered obvious by Surnin et al.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Surnin et al. as applied to claims 1, 4, 5, and 13 above, and further in view of Caers et al. (US 8,022,256).
The instant claim relates to the process for forming the aldehyde-functionalized organosilicon compound used in the process of the present invention. Surnin et al. do not mention how their starting compound is formed; however, hydroformylation of an olefin in the presence of a catalyst comprising a rhodium compound and organophosphite, or bisphosphite ligand is known in the art, as taught by Caers et al. (abstract; cols. 11 and 12). Caers et al. do not expressly teach an alkenyl-functional organosilicon compound as substrate; however, a person having ordinary skill in the art would recognize that a functionalized alkene will produce the corresponding aldehyde upon being subjected to hydroformylation conditions. Therefore, the instant claims is deemed obvious in view of the combined reference teaching.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/290,969 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims relate to a process for preparing an amino-functionalized organosilicon compound and/or an imine-functionalized organosilicon compound. The difference between the two sets of claims is that the instant claims more broadly recite the reaction of an aldehyde-functionalized organosilicon compound with a primary amine source, in a first step, while the reference application specifically uses a propylaldehyde-functionalized organosilicon compound. A propyl-aldehyde is considered a species of the broader genus of aldehyde-functionalized compound recited by the instant claims, and as such, renders the instant claims obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett 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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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
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