DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1, 4, and 5 are amended. Claim 3 is cancelled.
The amendment to claim 5 overcomes the previous 112(b) rejection.
Claims 1, 2, 4, and 5 are pending for examination below.
Response to Arguments
Applicant’s arguments and amendments with respect to the rejection(s) of claim(s) 1-5 under USC 102 and 103 have been fully considered and are persuasive. The cancellation of claim 3 overcomes the previous 102 rejection. For claims 1 and 4, Haag does not teach the newly claimed zeolites, because Haag only teaches zeolite ZSM-35 (FER type). Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly discovered prior art in view of the amendments.
Applicant's arguments with respect to the Double Patenting rejection have been fully considered but they are not persuasive.
Applicant argues on page 7 of the Remarks that the amendment to claim 1 overcomes the Double Patenting rejection. However, claim 1 of 18/434,760 has also been amended to recite a zeolite and a similar temperature range. Thus, the ODP rejection for instant claim 1 is maintained.
Claim Objections
Claims 1, 4, and 5 are objected to because of the following informalities:
With regard to claims 1 and 4, the claims each recite “FAU type”, “MFI type”, “BEA type”, and “MOR type” for the zeolites. The phrase “type” is unnecessary and could cause confusion as to the limits of the zeolites. Thus, the term “type” should be removed from the claims.
With regard to claim 5, the claim recites “normal butene that remains unreactive”. This is a typographical error of “unreacted”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (CN 102416340, machine translation provided herein).
With regard to claim 1, Guo teaches isomerization of n-butene to isobutene (Abstract) comprising contacting an HZSM-5 (MFI) zeolite with the n-butene (paragraphs [0116] and [0181]) at a reaction temperature of 100-800°C (paragraph [0100]). This temperature range overlaps the range of 65-150°C of instant claim 1, rendering the range prima facie obvious.
With regard to claim 2, Guo teaches that the silica alumina ratio is 10 to infinity (paragraph [0085]), which overlaps the range of 2 to 1500 of instant claim 2, rendering the range prima facie obvious.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Coughenour et al. (US 4,731,490) in view of Ma (One-step electrosynthesis of ethylene and ethanol from CO2 in an alkaline electrolyzer) and Guo et al. (CN 102416340, machine translation provided herein).
With regard to claim 4, Coughenour teaches an apparatus for synthesis of methyl tertiary butyl ether (Abstract) comprising the following components (Figure 1 and corresponding description column 5):
a) a dimerization zone 12 for dimerizing ethylene to butene; and
b) an isomerization zone 16 for isomerizing butene to isobutene. (column 5, lines 40-50).
Coughenour fails to teach i) an electrolyzer for generating ethylene from carbon dioxide, ii) that the catalyst in the isomerization zone 16 is a MFI zeolite having a silica/alumina ratio of 2 to 1500, or iii) that the temperature in the isomerization zone is 65-150°C.
With regard to the electrolyzer i), Coughenour exemplifies that the source of the ethylene is from pyrolysis of naphtha and gas oil (column 5, lines 33-34), but does not limit the source of the ethylene to only the listed sources. Ma teaches producing ethylene from carbon dioxide in an electrolyzer (Abstract). Ma further teaches that producing ethylene from CO2 is useful because ethylene is an important raw material and producing value added chemicals from CO2 offers promise to suppress CO2 emissions to help curb undesirable effects of climate change (page 22, Introduction, first paragraph).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to add an electrolyzer to the apparatus of Coughenour, because Coughenour teaches dimerizing of ethylene and does not limit the source of the ethylene, and Ma teaches that an electrolyzer produces the desirable raw material ethylene from CO2, where the electrolysis reduces CO2 emissions and helps curb undesirable effects of climate change (page 22, Introduction, first paragraph).
With regard to the catalyst ii), Coughenour teaches that any suitable isomerization catalyst capable of isomerizing n-butene to isobutene may be employed (column 3, lines 11-14).
Guo teaches an isomerization reactor comprising an HZSM-5 (MFI) zeolite (paragraphs [0116] and [0181]). Guo also teaches that the silica alumina ratio is 10 to infinity (paragraph [0085]), which overlaps the range of 2 to 1500 of instant claim 4, rendering the range prima facie obvious. Guo additionally teaches that the catalyst has the benefits of high activity and low reaction temperatures for the isomerization (paragraph [0103]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the zeolite of Haag in the process of Coughenour, because Coughenour teaches any suitable isomerization catalyst capable of isomerizing n-butene to isobutene (column 3, lines 11-14) and Guo teaches the HZSM-5 (MFI) catalyst provides the benefits of high activity and low reaction temperatures (paragraph [0103]).
With regard to the temperature iii), Guo teaches that the temperature for the isomerization with the above catalyst is 100-800°C (paragraph [0100]). This temperature range overlaps the range of 65-150°C of instant claim 4, rendering the range prima facie obvious. It would have been obvious to one of ordinary skill in the art at the time of the invention to use the temperature of Guo in the process of Coughenour, because it is well known in the art that certain catalysts are effective at certain temperatures. Thus when using the catalyst of Guo, it would have been obvious to one of ordinary skill in the art at the time of the invention to also use the temperature of Guo, in order to make sure the catalyst functions in the process as desired.
With regard to claim 5, Coughenour teaches that the apparatus further comprises an etherification zone 20 which accepts the isomerization effluent in line 18 and separates MTBE in line 24 and normal butene in line 26, where the normal butene is recycled to isomerization zone 16 (column 5, lines 40-50).
Coughenour does not explicitly teach that the etherification zone is a hydration reactor as claimed. However, Coughenour teaches the structural limitations of the etherification zone 20 include a vessel (20) with an inlet conduit (18) and two outlet conduits (24, 26), where one of the conduits is in communication with the isomerizer as a recycle line (26). These structural limitations are equivalent to the implied structural limitations of the claimed hydration reactor. Additionally, the etherification reactor of Coughenour has a similar function of reacting iso-butene to form an oxygenated compound which allows for the separation of normal butene as the claimed hydration reactor (see instant specification paragraph [0048]). Thus the etherification zone 20 is considered to be equivalent to the hydration reactor of instant claim 5.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/434,760 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of Application 18/434,760 encompasses instant claim 1.
Instant claim 1 recites a method of generating isobutene comprising contacting normal butene with a zeolite which is FAU, MFI, BEA, or MOR at a temperature of 65-150°C.
Claim 1 of 18/434,760 recites a method of generating isobutene comprising contacting normal butene with a catalyst comprising a zeolite at a temperature of 25-150°C.
The differences are i) 18/434,760 does not specify the type of zeolite and ii) the temperature in 18/434,760 is broader than the instant temperature range.
With regard to i), the specification of 18/434,760 recites FAU, MFI, BEA, and MOR as options for the zeolite (paragraph [0030]). Thus, one of ordinary skill in the art would find it obvious that the general zeolite of 18/434,760 encompasses the specific zeolites in instant claim 1, rendering the instant claimed zeolites prima facie obvious.
With regard to ii), the temperature range of 18/434,760 overlaps the temperature range of instant claim 1, rendering the range of instant claim 1 prima facie obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA L CEPLUCH whose telephone number is (571)270-5752. The examiner can normally be reached M-F, 8:30 am-5 pm, EST.
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/Alyssa L Cepluch/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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