DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The new grounds of rejection set forth below for claims 1-20 are necessitated by Applicant’s amendment filed on Jun. 25, 2026. In particular, independent claim 1 has been amended to contain limitations regarding a microreactor and a flow path. Therefore, claim 1 and claims 2-20 which ultimately depend on amended claim 1 are now different in scope from what they were at the time of the preceding Office action. For this reason, the present action is properly made final.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,434,308 B2 in view of U.S. Patent No. 7,622,509 B2 (herein “Tonkovich”). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1: US ‘308 claims a method (see claim 1 of US ‘308) according to the presently recited method, with the exception that claim 1 of US ‘308 does not recite that the microreactor is a “substrate-type micromixer” or that the flow path of the microreactor has a rectangular cross-sectional shape.
The present application includes the following disclosure: “A substrate type micromixer includes a substrate having a flow path formed in the interior or on the surface of the substrate and sometimes may be referred to as a microchannel.” (Spec. p. 20, ¶ [0070]). The term “substrate” itself is not defined in the specification.
Because the microreactor recited in the claims of US ‘308 is capable of mixing, it is considered to be a “micromixer”. The microreactor recited in the claims of US ‘308 is necessarily made of a material, and this material is considered to be a “substrate”. For this reason, the microreactor recited in the claims of US ‘308 is considered to fall within the scope of the recited “substrate-type micromixer”.
Tonkovich describes a microchannel mixer (see the abstract). In one embodiment, the microchannels have square or rectangular cross sections. Such a configuration incurs less pressure drop while the same shear force is realized for the height or width, or diameter at the same continuous phase mass flux; configurations can be easily arranged in a compact device for scale-up; and a higher capacity per unit volume for the multiphase mixture forming process can be achieved with parallel plate configurations as compared with circular tubes. One of ordinary skill in the art would therefore have been motivated to perform the process of US ‘308 using a microreactor in which the flow paths are rectangular in cross-section in order to reduce pressure drop, for ease of arrangement for scale-up; and for higher capacity.
Furthermore, one of ordinary skill in the art and having ordinary creativity would have recognized that rectangular cross-sections have a greater ratio of perimeter to cross-sectional area than a same-size circular cross-sectional area. One of ordinary skill in the art would have had a reasonable expectation that greater heat transfer could be achieved by performing the process of US ‘308 using a microreactor in which the flow paths are rectangular in cross-section. One of ordinary skill in the art would therefore have been motivated to perform the process of US ‘308 using a microreactor in which the flow paths are rectangular in cross-section in order to achieve more efficient heat transfer for better temperature control.
It would have been obvious to one of ordinary skill in the art to have performed the process claimed by US ‘308 using a microreactor in which the flow paths are rectangular in cross-section.
The further limitations of present claims 2-20 are adequately set forth in claims 2-20 of US ‘308.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,859,028 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1: US ‘028 claims a method (see claim 1 of US ‘028) according to the presently recited method, with the exception that claim 1 of US ‘028 does not recite that the microreactor is a “substrate-type micromixer” or that the flow path of the microreactor has a rectangular cross-sectional shape.
The present application includes the following disclosure: “A substrate type micromixer includes a substrate having a flow path formed in the interior or on the surface of the substrate and sometimes may be referred to as a microchannel.” (Spec. p. 20, ¶ [0070]). The term “substrate” itself is not defined in the specification.
Because the microreactor recited in the claims of US ‘028 is capable of mixing, it is considered to be a “micromixer”. The microreactor recited in the claims of US ‘028 is necessarily made of a material, and this material is considered to be a “substrate”. For this reason, the microreactor recited in the claims of US ‘028 is considered to fall within the scope of the recited “substrate-type micromixer”.
Tonkovich describes a microchannel mixer (see the abstract). In one embodiment, the microchannels have square or rectangular cross sections. Such a configuration incurs less pressure drop while the same shear force is realized for the height or width, or diameter at the same continuous phase mass flux; configurations can be easily arranged in a compact device for scale-up; and a higher capacity per unit volume for the multiphase mixture forming process can be achieved as compared with circular tubes. One of ordinary skill in the art would therefore have been motivated to perform the process of US ‘028 using a microreactor in which the flow paths are rectangular in cross-section in order to reduce pressure drop, for ease of arrangement for scale-up; and for higher capacity.
Furthermore, one of ordinary skill in the art and having ordinary creativity would have recognized that rectangular cross-sections have a greater ratio of perimeter to cross-sectional area than a same-size circular cross-sectional area. One of ordinary skill in the art would have had a reasonable expectation that greater heat transfer could be achieved by performing the process of US ‘028 using a microreactor in which the flow paths are rectangular in cross-section. One of ordinary skill in the art would therefore have been motivated to perform the process of US ‘028 using a microreactor in which the flow paths are rectangular in cross-section in order to achieve more efficient heat transfer for better temperature control.
It would have been obvious to one of ordinary skill in the art to have performed the process claimed by US ‘028 using a microreactor in which the flow paths are rectangular in cross-section.
The further limitations of present claims 2-20 are adequately set forth in claims 2-20 of US ‘028.
Response to Arguments
Applicant’s arguments filed Jun. 25, 2026 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejection under 35 U.S.C. § 112(b) and the objections to several claims that were set forth in the preceding Office action have been withdrawn in light of the amendments of the claims.
In light of the amendments of the claims, the double patenting rejections that were set forth in the preceding Office action have been recast above in combination with a teaching reference.
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 extension fee 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.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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, Arrie (Lanee) Reuther can be reached at (571) 270-7026. 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.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
Prosecution Insights