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
This is a first action on the merits for this continuation application filed on 09/22/2023
Election/Restrictions
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method for generating a chemical reaction product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/21/25.
Applicant’s election without traverse of claims 13-23 in the reply filed on 05/21/25 is acknowledged.
Claim Objections
Claim 18 is objected to because of the following informalities: in line 2, replace the word “find” with the word “fin”. Appropriate correction is required.
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.
Claims 21-23 are 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.
Reactor vessel 21-23 depend from heat exchanging assembly claim 13. The examiner is not able to determine the metes and bounds of claims 21-23 since it is not positively recited what structural limitations of claim 13 are or are not included in claim 21. It is respectfully requested that claim 21 be rewritten in independent form to include all the structural limitations of claim 13.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 13-15 and 18-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rubinstein (US 3,881,962).
Regarding claim 13, Rubinstein discloses a heat exchanging assembly (Fig.3), comprising:
an outer tube (Fig.3:52) having an opened end (Fig.3:72) and a closed end (Fig.3:58), wherein an outer diameter of the outer tube is capable of at least being partially coated in a catalyst (col.5, lines 15-63);
an inner tube (Fig.3:54) located at least in part in an interior of the outer tube (Fig.3:52) and having first (Fig.3:42) and second opened (Fig.3:73) ends, the first opened end (Fig.3:42) being located proximate the closed end (Fig.3:58) of the outer tube (Fig.3:52), the second opened end (Fig.3:73) being located proximate the opened end (Fig.3:72) of said outer tube;
wherein the outer tube (Fig.3:52) and inner tube (Fig.3:54) coact to provide a flowpath for a heat transfer media (col.4, lines 17-56) that extends between the outer tube (Fig.3:52) and the inner tube (Fig.3:54) from the opened end of the outer tube (Fig.3:72) to the first end (Fig.3:42) of inner tube and then extends internal to the inner tube (Fig.3:54) to the second end (Fig.3:73) of said inner tube (Fig.3:54).
Regarding claim 14, Rubinstein discloses that the outer diameter includes at least one heat transferring fin (Fig.3:96 or 100).
Regarding claim 15, Rubinstein discloses that at least one heat transferring fin is an axial fin (Fig.2:100 and 96) arranged generally parallel to a length of the heat exchanging assembly.
Regarding claim 18, Rubinstein discloses that the at least one heat transferring fin (Fig.10:271) and the outer diameter (Fig.10:213) of the outer tube are capable of coacting to create a channel for the downward flow of liquid.
Regarding claim 19, Rubinstein discloses that the outer tube (Fig.3:52) is adapted and configured to support the heat transfer assembly (Fig.3:100 and 96) from a flange (Fig.3:98).
Regarding claim 20, Rubinstein discloses a first fluid manifold (Fig.3:66) in fluid communication with the opened end of the outer tube (Fig.3:52) and a second fluid manifold (Fig.3:68) in fluid communication with the second opened end (Fig.3:73) of said inner tube (Fig.3:54).
Regarding claim 21, Rubinstein discloses a reactor vessel (Fig.3:10), the reactor vessel comprising: a top end (unlabeled top of 10 as shown in Fig.3), a bottom end (Fig.3:23), an interior (unlabeled inner space of 10 as shown in Fig.3), and a plurality of parallel, spaced-apart tubular heat exchanging assemblies (Fig.10:271) located in the interior.
Regarding claim 22, Rubinstein discloses that each tubular heat exchanging assembly (Fig.3:100 and 96) is supported at the opened end (Fig.3:73) of the outer tube by a flange (Fig.3:98) and each tubular heat exchanging assembly is capable of being adapted and configured both to be repeatedly removed separately from the flange (Fig.1:100 and 96) and to be repeatedly installed separately to the flange.
Regarding claim 23, Rubinstein discloses that the opened ends (Fig.3:72) of each outer tube (Fig.3:52) are in fluid communication with one another and wherein the second opened ends (Fig.3:42 and 73) of each inner tube (Fig.3:54) are in fluid communication with one another.
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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Rubinstein (US 3,881,962) as applied to claim 14, and further in view of Bostrom (US 3,789,494).
Rubinstein appears silent to disclose that the at least one heat transferring fin has a spiral shape along a length of the heat exchanging assembly.
Bostrom discloses a method (col.1, lines 4-9) for the manufacture of finned units that are spiral (Fig.7:30) since spiral finned ducts achieve low pressure drop and effective heat transfer (col.1, lines 43-48). 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 to add spiral finned tubes to Rubinstein heat exchanging assembly since spiral finned ducts achieve low pressure drop and effective heat transfer.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Rubinstein (US 3,881,962) as applied to claim 14, and further in view of Holcombe (US 2010/0240780 A1).
Rubinstein discloses plurality of heat transferring fins.
Rubinstein appears silent regarding that the fins are at least partially coated in the catalyst.
Holcombe discloses a heat exchanging assembly (Fig.2:1) where fins are coated with a thin layer of catalyst [0036] in order to control and ensure low pressure drops, simple fabrication and easy service [0027]. 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 to add Holcombe fins that are coated with catalyst to Rubinstein heat exchanging assembly in order to control and ensure low pressure drops, simple fabrication and easy service.
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 13 and 16-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, and 7-11 of U.S. Patent No. 11,642,641 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scopes of claims 13 and 16-23 of 18/472,403 and the scopes of 1, 3-4, and 7-11 of U.S. Patent No. 11,642,641 B2 are the same, but written using different words (claim 13 vs claim 1 of U.S. Patent No. 11,642,641 B2; claims 19 and 17 vs claims 3-4 of U.S. Patent No. 11,642,641 B2; claims 16, 18 and 20-23 vs claims 7-11 of U.S. Patent No. 11,642,641 B2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONZER R CHORBAJI whose telephone number is (571)272-1271. The examiner can normally be reached M-F 5:30-12:00 and 6:00-9:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill J Warden can be reached at (571)272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MONZER R CHORBAJI/Primary Examiner, Art Unit 1798