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 .
Election/Restrictions
Applicant’s election of group II invention (claim 17-18, 24, 27 and newly added claims 30-38) in the reply filed on 08/07/2026 is acknowledged. It is also noted that applicant canceled group I invention of claim 1-16.
Claim Interpretation
Instant claim 38 recited “the second flushing medium is essentially free of oxygen” is interpreted based on broadest and reasonable interpretation in light of its specification (see the instantly published application US2024/0246069 para. [0055]) means the second flushing medium comprising less than 1% of oxygen.
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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Claim 17-18, 27 and 30-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12569843. Although the claims at issue are not identical, they are not patentably distinct from each other because US’843 teaches a same or substantially the same method for producing a regenerated hydrogenation catalyst from a fouled hydrogenation catalyst as that of instantly claimed. US’843 teaches the method comprising: catalytically reacting a feedstock stream having at least one sulfur-containing impurity in the presence of a hydrogenation catalyst to produce the fouled hydrogenation catalyst, wherein the fouled hydrogenation catalyst comprises an amount of sulfur derived from the at least one sulfur-containing impurity of the feedstock stream, and subjecting the fouled hydrogenation catalyst to a regeneration cycle to produce the regenerated hydrogenation catalyst, the regeneration cycle comprising: (a-i) contacting the catalyst with a first flushing medium for an air-treatment duration to produce an air-treated catalyst and a first effluent, wherein the first flushing medium comprises, measured at 25° C. and 1 atmospheric pressure, liquid water and a gaseous phase comprising oxygen; and contacting the air-treated catalyst with a second flushing medium for a nitrogen-treatment duration to produce a nitrogen-treated catalyst and a second effluent, wherein the second flushing medium comprises, measured at 25° C. and 1 atmospheric pressure, liquid water and a gaseous phase comprising at least 90% nitrogen by volume.
Claim 24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12569843 as applied above, and in view of Ma (US2016/0332154).
US’843 does not expressly teach the feedstock stream containing at least 0.1ppm sulfur. However, Ma teaches biomass material feedstock containing as much as 0.5 wt.% sulfur amount (para [0008], table 1). It would have been obvious for one of ordinary skill in the art to adopt a biomass with such well-known sulfur content as shown by Ma to practice the feedstock of US’843 because adopting biomass material with such well-known sulfur content is well within the scope of one ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Hirai et al (WO2014203601) (for applicant’s convenience, machine translation has been used for citations) teaches a method of regenerated hydrogenation catalyst which is poisoned by sulfur from a feedstock stream when used in the process of catalytically reacting polyhydric alcohol with hydrogen (page 3 2nd para., page 5 2nd para.-page 6 first para, page 11 last para., page 25 2nd para., page 30 last para.-page 32 first para.) comprising subjecting the poisoned hydrogenation catalyst to a regeneration process which includes washing the poisoned hydrogenation catalyst with water under an air or a nitrogen atmosphere for a duration of time (page 6 last para.-page 7 line 5, page 9 first para., page 22 2nd last para.), then contacting such air treated hydrogenation catalyst under a gas containing nitrogen, specifically nitrogen gas (nitrogen gas containing 100% volume of nitrogen in such gas stream) for a duration of time (page 9 2nd para, page 22-page 23 3rd para., example 1-6, table 1). Hirai et al. teaches the sulfur amount in the nitrogen treated poisoned hydrogenation catalyst being reduced as much as possible (page 30 last para., example 1-6, table 1). Harai et al. also teaches the raw material being derived from biomass (page 3 first para.).
Regarding independent claim 17, Hirai et al does not expressly teach using a flushing medium comprising water and oxygen, or using a second flushing medium comprising gaseous phase having 90% volume of nitrogen and liquid water.
Maisin (EP0037137) (for applicant’s convenience, machine translation has been used for citations) teaches a process of regenerating fouled hydrogenation catalyst, wherein such fouled hydrogenation catalyst being obtained after hydrogenating sugars, comprising washing the fouled hydrogenation catalyst with water in the presence of oxygen (claim 1, 3-4, para. [0008], [0010], [0011], example 1-5).
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/JUN LI/ Primary Examiner, Art Unit 1732
