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 .
Priority
Applicant's claim of priority under 35 U.S.C. §120 as a continuation application of US Serial No. 16/237,777 filed January 2, 2019, which issued as US 11,753,596 B2 on September 12, 2023, is hereby acknowledged.
Claim Objections
Claim 1, and claims 4, 6-8, 13, 14 and 16-19 that depend therefrom, are objected to because lines 3-4 of claim 1 recite “alkali earth metal catalyst” twice. Examiner assumes the term “earth” was not meant to be present in both instances.
Correction by Applicant in a subsequent reply to this action is respectfully requested.
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 non-statutory 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 non-statutory 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.
Independent claim 1, and claims 4, 6-8, 13, 14 and 16-19 that depend therefrom, are rejected on the ground of non-statutory double patenting as unpatentable over claims 1-16 of U.S. Patent No. US 11,753,596 B2 patent (‘596 patent), which issued on September 12, 2023.
The claims at issue are not identical in that the process of present independent claim 1 is drawn to a process for producing syngas non-isothermically from a biomass/carbon source, whereas claim 1 of the ‘596 patent is drawn to a non isothermic process for producing syngas by co-gasifying a feedstock comprising vacuum gas oil (VGO) and a biomass.
However, they are not patentably distinct from each other because both sets of claims are drawn to a non-isothermic process for producing syngas comprising hydrogen and carbon monoxide from a biomass-containing carbon source, wherein the process includes: co-gasifying, in the presence of an alkali metal/alkali metal earth catalyst (claim 11 of the ‘596 patent); heating a feedstock comprising VGO, petroleum coke and a biomass comprising glucose, lignin, and cellulose (claims 1, 9 and 13 of the ‘596 patent) at specified temperature/time rates; to produce syngas comprising hydrogen and carbon monoxide, wherein the co-gasification is performed using a purge gas, carrier gas, or gasification agent (claims 2-4 and 6 of the ‘596 patent) supplied at a specified flow rate, wherein the VGO comprises C₂₀ through C₅₀ hydrocarbons and boils in the range of about 350°C to 600°C (claim 1 of the ‘596 patent), wherein the biomass has a C:H:O ratio in a weight percent of 35 to 40:4 to 6:50 to 55 (claim 1 of the ‘596 patent), wherein the feedstock comprises the biomass and the VGO in specified weight percent ranges based on a total weight of the feedstock, and wherein the process produces syngas having a higher content of hydrogen than an otherwise identical process that uses a feedstock consisting of the VGO, coke, or coal (claim 1 of the ‘596 patent).
Thus, the present claims are unpatentable under ODP over the cited claims of the ‘596 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J FIGUEROA whose telephone number is (571)272-8916. The examiner can normally be reached on 8:30 am -6:00 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John J Figueroa/
Primary Examiner, Art Unit 1763
February 5, 2026