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.
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 21-22, and 24-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11925901. Although the claims at issue are not identical, they are not patentably distinct from each other because:
the instant claim 21 recites filtering the waste solvent using a membrane as an alternative limitation whereas claim 1 of the US’901 claims the filtering steps as a required step.
Limitations of instant claim 22 is present in claim 1 of the US’901.
Limitations of instant claim 24 is present in claim 1 of the US’901.
Limitations of instant claim 25 is present in claim 2 of the US’901.
Limitations of instant claim 26 is present in claim 1 of the US’901.
Limitations of instant claim 27 is present in claim 3 of the US’901.
Limitations of instant claim 28 is present in claim 6 of the US’901.
Limitations of instant claim 29 is present in claim 7 of the US’901.
Limitations of instant claim 30 is present in claim 7 of the US’901.
Limitations of instant claim 31 is present in claim 4 of the US’901.
Limitations of instant claim 32 is present in claim 5 of the US’901.
Limitations of instant claim 33 is present in claim 8 of the US’901.
Limitations of instant claim 34 is present in claim 9 of the US’901.
Limitations of instant claim 35 is present in claim 10 of the US’901.
Limitations of instant claim 36 is present in claim 11 of the US’901.
Limitations of instant claim 37 is present in claim 12 of the US’901.
Limitations of instant claim 38 is present in claim 1 of the US’901.
Limitations of instant claim 39 is present in claim 13 of the US’901.
Limitations of instant claim 40 is present in claim 14 of the US’901.
Limitations of instant claim 41 is present in claim 15 of the US’901.
Limitations of instant claim 42 is present in claim 16 of the US’901.
Limitations of instant claim 43 is present in claims 1, 2, and 8 of the US’901.
Limitations of instant claim 44 is present in claims 1 and 7 of the US’901.
Limitations of instant claim 45 is present in claims 1 and 7 of the US’901.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 32, 35 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 32 recites the limitation "the waste solvent from a chromatographic separation system” in line 1 and “the reactant" in line 3. There is insufficient antecedent basis for this limitation in the claim.
In Claim 35, the limitation “wherein the filtrate is free of non-solvent contaminants” renders the claim indefinite because it is unclear whether claim 35 requires performing step (a) in claim 1. Step (a) in claim 1 is an alternate limitation.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21, 23, 36, 38, 41, 42, 47 and 48 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dieterle (US 2008/0210540A1).
Regarding claims 21 and 23, Dieterle teaches a method for separating a solvent from a waste solvent (refer fig. 4), the method comprising:
performing (b) distilling (refer column 100) the waste solvent;
condensing or cooling (refer 110) the intermediate solvent to below a boiling point of solvents in the intermediate solvent; and
filtering the intermediate solvent using pervaporation (refer 120) to form a purified solvent.
Regarding claim 36, Dieterle teaches limitations of claim 21 as set forth above. Dieterle teaches that performing (b) forms a distillate (102), and wherein the distillate comprises an azeotrope that is separated by the pervaporation membrane (120).
Regarding claims 38 and 41, limitations of claims 38 and 41 are directed to filtration step which is recited as an optional/alternative limitation.
Regarding claim 42, Dieterle teaches limitations of claim 21 as set forth above. Dieterle does not disclose presence of any thermal degradation products.
Regarding claims 47-48, Dieterle teaches limitations of claim 21 as set forth above. Dieterle teaches that the distillation column is fractional distillation column (refer [0011]).
Claim(s) 21, 22 and 35 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Baker et al. (US 5169533A).
Regarding claims 21 and 22, Dieterle teaches a method for separating a solvent from a waste solvent (refer fig. 2), the method comprising:
Performaing (a) filtering (using filter 102) the waste solvent using a membrane to form an intermediate solvent (104);
condensing or cooling (refer 105) the intermediate solvent to below a boiling point of solvents in the intermediate solvent (refer C12/L19-26); and
filtering the intermediate solvent using pervaporation (refer 112) to form a purified solvent.
Regarding claim 35, limitations of claim 35 are directed to filtration step which is recited as an optional/alternative limitation.
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.
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.
Claim(s) 24-30, 33-34, 37 and 43-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dieterle (US 2008/0210540A1), in view of Rundquist et al. (Green Chem., 2012, 14, 2197).
Regarding claim 24, Dieterle teaches limitations of claim 21 as set forth above. Dieterle does not teach performing (a) filtering the waste solvent using a membrane; and then (b) distilling or evaporating the waste solvent or a filtrate from the membrane.
Rundquist teaches method of solvent recovery wherein the method includes a step of filtering the waste solvent using a membrane (refer filter in fig. 1); and distilling the filtrate from the membrane (refer IPAc recovery in fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of Dieterle to include a filtration step prior to distillation step as taught by Rundquist to enable removal of impurities.
Regarding claim 25, Dieterle teaches limitations of claim 21 as set forth above. Dieterle teaches that the waste solvent comprises a first solvent and a second solvent (refer [0002]). Dieterle does not discloses that the waste solvent comprises at least one contaminant.
Rundquist teaches method of solvent recovery wherein the method includes a step of filtering the waste solvent using a membrane (refer filter in fig. 1); and distilling the filtrate from the membrane (refer IPAc recovery in fig. 1). Rundquist discloses that the waste solvent comprises impurities that are removed by crystallization and filtration (Refer P2197/right column).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of Dieterle to include waste solvent comprising a contaminant because Rundquist discloses that recovery of solvent(s) from a waste solvent comprising impurities/contaminants is known in the art.
Regarding claims 26-27, Dieterle teaches limitations of claim 21 as set forth above. Dieterle does not teach that the method comprising mixing the waste solvent with a reactant to cause precipitation or complexing and forming a mixture, wherein filtering the waste solvent comprises filtering the mixture, and wherein distilling or evaporating the waste solvent comprises distilling or evaporating the mixture.
Rundquist teaches method of solvent recovery wherein the method includes a step of crystallization of waste solvent (refer fig. 1, paragraph “Solvent recycle and crystallization” on page 2200), filtering the waste solvent using a membrane (refer filter in fig. 1); and distilling the filtrate from the membrane (refer IPAc recovery in fig. 1). Rundquist discloses that the waste solvent comprises impurities that are removed by crystallization and filtration (Refer P2197/right column).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of Dieterle to include a step of crystallization by introducing a reagent into the waste solvent and filtering the mixture prior to distillation or evaporation as taught by Rundquist to purify the waste solvent.
Regarding claims 28-30, modified Dieterle teaches limitations of claim 26 as set forth above. Selecting the reactant based on the contaminants to be crystallize/precipitate would have been an obvious matter of choice to one of ordinary skill in the art.
Regarding claims 33-34, modified Dieterle teaches limitations of claim 25 as set forth above. Dieterle teaches that the first solvent comprises (refer [0036]) alcohols, aromatics, esters, organic acids, ketones, amines, aliphatics, or ethers; and second solvent comprises water (refer [0002]).
Regarding claim 37, Dieterle teaches limitations of claim 21 as set forth above. Dieterle does not teach that the method comprises filtration step. Rundquist teaches method of solvent recovery wherein the method includes a step of filtering the waste solvent using a nanomembrane (refer filter in fig. 1); and distilling the filtrate from the membrane (refer IPAc recovery in fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of Dieterle to include a filtration step including nanomembrane prior to distillation step as taught by Rundquist to enable removal of impurities. Nanomembrane would inherently remove contaminants larger than pore size of the nanomembrane.
Regarding claim 43, Dieterle teaches a method for separating a solvent from a waste solvent (refer fig. 4), the method comprising:
performing (b) distilling (refer column 100) the waste solvent;
condensing or cooling (refer 110) the intermediate solvent to below a boiling point of solvents in the intermediate solvent; and
filtering the intermediate solvent using pervaporation (refer 120) to form a purified solvent.
Dieterle teaches that the waste solvent comprises a first solvent and a second solvent (refer [0002]). Dieterle teaches that the first solvent comprises (refer [0036]) alcohols, aromatics, esters, organic acids, ketones, amines, aliphatics, or ethers; and second solvent comprises water (refer [0002]).
Dieterle does not discloses that the waste solvent comprises at least one contaminant.
Rundquist teaches method of solvent recovery wherein the method includes a step of filtering the waste solvent using a membrane (refer filter in fig. 1); and distilling the filtrate from the membrane (refer IPAc recovery in fig. 1). Rundquist discloses that the waste solvent comprises impurities that are removed by crystallization and filtration (Refer P2197/right column).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of Dieterle to include waste solvent comprising a contaminant because Rundquist discloses that recovery of solvent(s) from a waste solvent comprising impurities/contaminants is known in the art.
Regarding claims 44 and 45, Dieterle teaches a method for separating a solvent from a waste solvent (refer fig. 4), the method comprising:
performing (b) distilling (refer column 100) the waste solvent;
condensing or cooling (refer 110) the intermediate solvent to below a boiling point of solvents in the intermediate solvent; and
filtering the intermediate solvent using pervaporation (refer 120) to form a purified solvent.
Dieterle does not teach that the method comprising mixing the waste solvent with a reactant to cause precipitation or complexing and forming a mixture, wherein filtering the waste solvent comprises filtering the mixture, and wherein distilling or evaporating the waste solvent comprises distilling or evaporating the mixture.
Rundquist teaches method of solvent recovery wherein the method includes a step of crystallization of waste solvent (refer fig. 1, paragraph “Solvent recycle and crystallization” on page 2200), filtering the waste solvent using a membrane (refer filter in fig. 1); and distilling the filtrate from the membrane (refer IPAc recovery in fig. 1). Rundquist discloses that the waste solvent comprises impurities that are removed by crystallization and filtration (Refer P2197/right column).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of Dieterle to include a step of crystallization by introducing a reagent into the waste solvent and filtering the mixture prior to distillation or evaporation as taught by Rundquist to purify the waste solvent. Selecting the reactant based on the contaminants to be crystallize/precipitate would have been an obvious matter of choice to one of ordinary skill in the art.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dieterle (US 2008/0210540A1), in view of Stepnowski et al. (Resources, Conservation and Recycling 35 (2002) 163–175).
Regarding claim 31, Dieterle teaches limitations of claim 21 as set forth above. Dieterle does not teach that the waste solvent is chromatographic separation waste stream. However, Stepnowski discloses that it is well known in the art to use distillation in recovery of solvents from waste solvents from chromatographic separation waste stream (Refer abstract, page 164, page 166). One of ordinary skill in the art would have had a reasonable expectation of success in applying the method of Dieterle to waste stream of chromatographic separation because Stepnowski discloses that it is well known in the art to use distillation in recovery of solvents from waste solvents from chromatographic separation waste stream.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dieterle (US 2008/0210540A1), in view of Stepnowski et al. (Resources, Conservation and Recycling 35 (2002) 163–175) and Rundquist et al. (Green Chem., 2012, 14, 2197).
Regarding claim 31, Dieterle teaches limitations of claim 21 as set forth above. Dieterle does not teach that the waste solvent is chromatographic separation waste stream. However, Stepnowski discloses that it is well known in the art to use distillation in recovery of solvents from waste solvents from chromatographic separation waste stream (Refer abstract, page 164, page 166). One of ordinary skill in the art would have had a reasonable expectation of success in applying the method of Dieterle to waste stream of chromatographic separation because Stepnowski discloses that it is well known in the art to use distillation in recovery of solvents from waste solvents from chromatographic separation waste stream.
Modified Dieterle does not teach adding a reactant to the waste solvent.
Rundquist teaches method of solvent recovery wherein the method includes a step of crystallization of waste solvent (refer fig. 1, paragraph “Solvent recycle and crystallization” on page 2200), filtering the waste solvent using a membrane (refer filter in fig. 1); and distilling the filtrate from the membrane (refer IPAc recovery in fig. 1). Rundquist discloses that the waste solvent comprises impurities that are removed by crystallization and filtration (Refer P2197/right column).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of modified Dieterle to include a step of crystallization by introducing a reagent into the waste solvent and filtering the mixture prior to distillation or evaporation as taught by Rundquist to purify the waste solvent.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dieterle (US 2008/0210540A1), in view of Iversen (US 2018/0057754).
Regarding claim 39, Dieterle teaches limitations of claim 21 as set forth above. Dieterle does not teach that the method further comprises a microfiltration or ultrafiltration or both prior to distilling.
Iversen teaches providing a pretreatment step in a system, wherein the pretreatment step comprises division of particles in the feed (refer fig. 1, [029], [0093]) to improve effectiveness of processing.
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to provide pretreatment in the system of Dieterle as taught by Iversen to improve effectiveness of processing. Selecting which size of particles to be removed would have been an obvious matter of design choice to one of ordinary skill in the art.
Claim(s) 40 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dieterle (US 2008/0210540A1).
Regarding claim 40, Dieterle teaches limitations of claim 21 as set forth above. Dieterle teaches that feed is conditioned for temperature and pressure based upon the overall optimal design of the distillation column (Refer [0037]). Selecting the temperature would have been an obvious matter of design choice to one of ordinary skill in the art to optimize the method.
Regarding claim 46, Dieterle teaches limitations of claim 21 as set forth above. Dieterle teaches that the distillation column is fractional distillation column (refer [0011]). Selecting a multistage evaporator would have been an obvious matter of choice to one of ordinary skill in the art.
Conclusion
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/PRANAV N PATEL/Primary Examiner, Art Unit 1779
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