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 .
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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Claims 1-2, 4-15, 17-18, and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 16-17 and 19 of U.S. Patent No. 11,865,646 in view of Billig et al. (US 7,700,791 B2).
Regarding claim 1, U.S. Patent No. 11,865,646 claims a shell-and-tube heat exchange reactor comprising: an inlet tube sheet having a plurality of first openings and located at an inlet end of the reactor; an outlet tube sheet having a plurality of second openings and located at an outlet end of the reactor; a plurality of elongated tubes located between the inlet tube sheet and the outlet tube sheet and passing through the plurality of first and second openings; a tube sheet overlay material located atop each of the inlet tube sheet and the outlet tube sheet, wherein the tube sheet overlay material contains a plurality of third openings configured to allow the plurality of elongated tubes to pass there through, each third opening of the plurality of third openings comprises a beveled upper portion having a welding groove located between a beveled sidewall of the beveled upper portion of the third opening and an outermost sidewall of the elongated tube passing through the third opening; and a welding material located inside the welding groove and affixed to the outermost sidewall of the elongated tube passing through the third opening, wherein the welding material located inside the welding groove has a tensile strength of greater than 600 MPa (see claims 1 and 4).
U.S. Patent No. 11,865,646 fails to claim a tube sheet overlay material comprising stainless steel.
Billig et al. discloses that the heat exchanger portion preferably is made from carbon steel or duplex steel (duplex stainless-steel) (see column 3, lines 31-36).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the tube sheet overlay material comprising stainless steel since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, since for the purposes of heat exchange carbon steel and duplex (duplex stainless steel) are preferred alternatives.
Regarding claims 2 and 4-15, U.S. Patent No. 11,865,646 claims a shell-and-tube heat exchange reactor comprising: wherein the welding groove has a total area from about 1.125 mm2 to about 10.125 mm2, and a length from about 1.5 mm to about 4.5 mm (see claim 2); wherein the tube sheet overlay material has a tensile strength from greater than 600 MPa to about 950 MPa (see claim 3); wherein the tensile strength of the welding material located inside the welding groove is from greater than 600 MPa to about 950 MPa (see claims 1 and 4); wherein the welding material located inside the welding groove is composed of a chromium-nickel (Cr-Ni) based alloy (see claim 5); wherein a pitch between each neighboring elongated tube affixed to the tube sheet overlay material is from about 27 mm to about 80 mm (see claim 6); wherein the third opening of the tube sheet overlay material further comprises a non-beveled lower portion in communication with the beveled upper portion (see claim 7); further comprising a fillet welding material located on the welding material present in the welding groove and contacting another portion of the outermost sidewall of the elongated tube (see claim 8); wherein the shell-and-tube heat exchange reactor is an ethylene oxide (EO) reactor (see clam 9); wherein the EO reactor further comprises an inlet line for introducing a feed gas comprising 1% to 40% ethylene and 3% to 12 % oxygen into the EO reactor (see claim 10); wherein the EO reactor is configured to operate at a gas hourly space velocity of 1500 to 10,000 h-1, a reactor inlet pressure of 1 MPa to 3 MPa, a coolant temperature of 180°C to 315°C, an oxygen conversion level of 10-60%, and an EO production rate (work rate) of 100 - 350 kg EO/m3 catalyst/hr and a change in ethylene oxide concentration, AEO, of from about 1.5% to about 4.5% (see claim 11); wherein each elongated tube is filled with a silver-based epoxidation catalyst (see claim 12); wherein the silver-based epoxidation catalyst comprises an alumina support, a catalytically effective amount of silver or a silver- containing compound, and a promoting amount of one or more promoters (see claim 13); and wherein the one or more promoters comprises at least a rhenium promoter (see claim 14)
Regarding claims 17-18 and 20, U.S. Patent No. 11,865,646 claims an ethylene oxide (EO) reactor comprising: an inlet tube sheet having a plurality of first openings and located at an inlet end of the EO reactor; an outlet tube sheet having a plurality of second openings and located at an outlet end of the EO reactor; a plurality of elongated tubes located between the inlet tube sheet and the outlet tube sheet and passing through the plurality of first and second openings; a tube sheet overlay material located atop both the inlet tube sheet and the outlet tube sheet, wherein the tube sheet overlay material contains a plurality of third openings configured to allow the plurality of elongated tubes to pass there through, each third opening of the plurality of third openings comprises a beveled upper portion having a welding groove located between a beveled sidewall of the beveled upper portion of the third opening and an outermost sidewall of the elongated tube passing through the third opening; a welding material located inside the welding groove and affixed to the outermost sidewall of the elongated tube passing through the third opening, wherein the welding material located inside the welding groove has a tensile strength of greater than 600 MPa; and an inlet line for introducing a feed gas comprising 1% to 40% ethylene and 3% to 12 % oxygen into the EO reactor, wherein the EO reactor is configured to operate at a gas hourly space velocity of 1500 to 10,000 h-1, a reactor inlet pressure of 1 MPa to 3 MPa, a coolant temperature of 180 °C to 315°C, an oxygen conversion level of 10-60%, and an EO production rate (work rate) of 100 - 350 kg EO/m3 catalyst/hr and a change in ethylene oxide concentration, ΔEO, of from about 1.5% to about 4.5%, and wherein each elongated tube is filled with a silver-based epoxidation catalyst comprising an alumina support, a catalytically effective amount of silver or a silver-containing compound, and a promoting amount of one or more promoters (see claim 16); wherein the welding groove has a total area from about 1.125 mm2 to about 10.125 mm2, and a length from about 1.5 mm to about 4.5 mm (see claim 17); and wherein the tube sheet overlay material has a tensile strength from greater than 600 MPa to about 950 MPa, and wherein the tensile strength of the welding material located inside the welding groove is from greater than 600 MPa to about 950 MPa (see claim 19).
Regarding claim 21, U.S. Patent No. 11,865,646 claims an ethylene oxide (EO) reactor wherein the tube sheet overlay material comprises stainless steel.
Billig et al. discloses that the heat exchanger portion preferably is made from carbon steel or duplex steel (duplex stainless-steel) (see column 3, lines 31-36).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the tube sheet overlay material comprising stainless steel since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, since for the purposes of heat exchange carbon steel and duplex (duplex stainless steel) are preferred alternatives.
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.
Claim(s) 1, 4, 6, and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billig et al. (US 7,700,791 B2) in view of Yan et al. (CN 102837107 B) as evidenced by Pinnacle Alloy ERNiCr-3 Data Sheet.
Regarding claim 1, Billig et al. discloses a shell-and-tube heat exchange reactor (1) comprising: an inlet tube sheet having (3) a plurality of first openings and located at an inlet end of the reactor (1); an outlet tube sheet (4) having a plurality of second openings and located at an outlet end of the reactor; a plurality of elongated tubes (2) located between the inlet tube sheet (3) and the outlet tube sheet (4) and passing through the plurality of first and second openings (see Abstract; figure 1 and column 1, line 66 through column 4, line 4).
Billig et al. fails to discloses a shell-and-tube heat exchange reactor comprising: a tube sheet overlay material comprising stainless steel located atop each of the inlet tube sheet and the outlet tube sheet, wherein the tube sheet overlay material contains a plurality of third openings configured to allow the plurality of elongated tubes to pass there through, each third opening of the plurality of third openings comprises a beveled upper portion having a welding groove located between a beveled sidewall of the beveled upper portion of the third opening and an outermost sidewall of the elongated tube passing through the third opening; and a welding material located inside the welding groove and affixed to the outermost sidewall of the elongated tube passing through the third opening, wherein the welding material located inside the welding groove has a tensile strength of greater than 600 MPa.
However, Billig et al. discloses that the heat exchanger portion preferably is made from carbon steel or duplex steel (duplex stainless-steel) (see column 3, lines 31-36).
Yan et al. discloses a plate (1), carbon steel tubes (2), carbon steel weld overlay (3), groove carbon steel welding seam (4), and nickel base metal (5) (see Abstract; figures 1-2; and paragraph 0018) resulting in a tube sheet (1) having a plurality of first opening; a plurality of elongated tubes located between the tube sheet (1); a tube sheet overlay material (3) located atop the tube sheet (1), wherein the tube sheet overlay material contains a plurality of openings configured to allow the plurality of elongated tubes to pass there through, each opening of the plurality of openings comprises a beveled upper portion having a welding groove located between a beveled sidewall of the beveled upper portion (5) of the opening and an outermost sidewall of the elongated tube passing through the opening; and a welding material (4) located inside the welding groove and affixed to the outermost sidewall of the elongated tube passing through the opening.
In addition, Yan et al. discloses the carbon steel welding seam (4) is welded using ERNiCr-3 welding wire (see paragraph 0010) resulting in welding material located inside the welding groove has a tensile strength of greater than 600 MPa as evidenced by the Pinnacle Alloys Data Sheet that show that ERNiCr-3 has a tensile of 660 Mpa.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Billig et al. with the teachings of Yan et al. as evidenced by Pinnacle Alloy ERNiCr-3 Data Sheet resulting in a shell-and-tube heat exchange reactor comprising: a tube sheet overlay material located atop each of the inlet tube sheet and the outlet tube sheet, wherein the tube sheet overlay material contains a plurality of third openings configured to allow the plurality of elongated tubes to pass there through, each third opening of the plurality of third openings comprises a beveled upper portion having a welding groove located between a beveled sidewall of the beveled upper portion of the third opening and an outermost sidewall of the elongated tube passing through the third opening; and a welding material located inside the welding groove and affixed to the outermost sidewall of the elongated tube passing through the third opening, wherein the welding material located inside the welding groove has a tensile strength of greater than 600 MPa for improved heat exchange.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the tube sheet overlay material comprising stainless steel since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, since for the purposes of heat exchange carbon steel and duplex (duplex stainless steel) are preferred alternatives.
Regarding claim 4, the combined teachings of Billings and Yan et al. as evidenced by Pinnacle Alloy ERNiCr-3 Data Sheet discloses a shell-and-tube heat exchange reactor wherein the tube sheet overlay material has a tensile strength from greater than 600 MPa to about 950 MPa, since Yan et al. discloses the carbon steel welding seam (4) is welded using ERNiCr-3 welding wire (see paragraph 0010) resulting in welding material located inside the welding groove has a tensile strength of greater than 600 MPa to about 950 MPa as evidenced by the Pinnacle Alloys Data Sheet that show that ERNiCr-3 has a tensile of 660 Mpa.
Regarding claim 6, the combined teachings of Billings and Yan et al. as evidenced by Pinnacle Alloy ERNiCr-3 Data Sheet discloses a shell-and-tube heat exchange reactor wherein the welding material located inside the welding groove is composed of a chromium-nickel (Cr-Ni) based alloy, since Yan et al. discloses the carbon steel welding seam (4) is welded using ERNiCr-3 welding wire (see paragraph 0010).
Regarding claim 8, Billig et al. fails to disclose a shell-and-tube heat exchange reactor wherein the third opening of the tube sheet overlay material further comprises a non-beveled lower portion in communication with the beveled upper portion.
Yan et al. discloses a plate (1), carbon steel tubes (2), carbon steel weld overlay (3), groove carbon steel welding seam (4), and nickel base metal (5) (see Abstract; figures 1-2; and paragraph 0018) resulting in a tube sheet (1) wherein the third opening of the tube sheet overlay material further comprises a non-beveled lower portion in communication with the beveled upper portion.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Billig et al. with the teachings of Yan et al. resulting in a shell-and-tube heat exchange reactor wherein the third opening of the tube sheet overlay material further comprises a non-beveled lower portion in communication with the beveled upper portion for improved heat exchange.
Regarding claim 9, Billig et al. fails to disclose a shell-and-tube heat exchange reactor further comprising a fillet welding material located on the welding material present in the welding groove and contacting another portion of the outermost sidewall of the elongated tube.
Yan et al. discloses a plate (1), carbon steel tubes (2), carbon steel weld overlay (3), groove carbon steel welding seam (4), and nickel base metal (5) (see Abstract; figures 1-2; and paragraph 0018) resulting in a tube sheet (1) further comprising a fillet welding material (5) located on the welding material (4) present in the welding groove and contacting another portion of the outermost sidewall of the elongated tube (2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Billig et al. with the teachings of Yan et al. resulting in a shell-and-tube heat exchange reactor further comprising a fillet welding material located on the welding material present in the welding groove and contacting another portion of the outermost sidewall of the elongated tube for improved heat exchange.
Regarding claims 10-12, Billig et al. discloses a shell-and-tube heat exchange reactor wherein the shell-and-tube heat exchange reactor is an ethylene oxide (EO) reactor; wherein the EO reactor further comprises an inlet line for introducing a feed gas comprising 1% to 40% ethylene and 3% to 12 % oxygen into the EO reactor; and wherein the EO reactor is configured to operate at a gas hourly space velocity of 1500 to 10,000 h-1, a reactor inlet pressure of 1 MPa to 3 MPa, a coolant temperature of 180°C to 315°C, an oxygen conversion level of 10-60%, and an EO production rate (work rate) of 100 - 350 kg EO/m3 catalyst/hr and a change in ethylene oxide concentration, ΔEO, of from about 1.5% to about 4.5% (see Abstract; figure 1 and column 1, line 66 through column 4, line 4) and since the use of the apparatus isn't limiting or the material the apparatus acts upon isn't limiting.
Regarding claim 13, Billig et al. disclose a shell-and-tube heat exchange reactor wherein each elongated tube is filled with a silver-based epoxidation catalyst (see column 2, lines 13-19).
Allowable Subject Matter
Claims 3 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 3 and 19, the prior art references fail to disclose or suggest a shell-and-tube heat exchange reactor wand an ethylene oxide (EO) reactor wherein the beveled upper portion of the third opening of the tube sheet overlay material has a J-bevel shape, a groove angle from about 00 to about 60°, and a bevel angle from about 0° to about 30°.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 16 is allowed.
Regarding claim 16, Billig et al. discloses a shell-and-tube heat exchange reactor (1) comprising: an inlet tube sheet having (3) a plurality of first openings and located at an inlet end of the reactor (1); an outlet tube sheet (4) having a plurality of second openings and located at an outlet end of the reactor; a plurality of elongated tubes (2) located between the inlet tube sheet (3) and the outlet tube sheet (4) and passing through the plurality of first and second openings; and an inlet line for introducing a feed gas comprising 1% to 40% ethylene and 3% to 12 % oxygen into the EO reactor, wherein the EO reactor is configured to operate at a gas hourly space velocity of 1500 to 10,000 h-1, a reactor inlet pressure of 1 MPa to 3 MPa, a coolant temperature of 180°C to 315°C, an oxygen conversion level of 10-60%, and an EO production rate (work rate) of 100 - 350 kg EO/m3 catalyst/hr and a change in ethylene oxide concentration, ΔEO, of from about 1.5% to about 4.5%, and wherein each elongated tube is filled with a silver-based epoxidation catalyst (see Abstract; figure 1 and column 1, line 66 through column 4, line 4) and since the use of the apparatus isn't limiting or the material the apparatus acts upon isn't limiting.
Yan et al. discloses a plate (1), carbon steel tubes (2), carbon steel weld overlay (3), groove carbon steel welding seam (4), and nickel base metal (5) (see Abstract; figures 1-2; and paragraph 0018) resulting in a tube sheet (1) having a tube sheet overlay material located atop both the inlet tube sheet and the outlet tube sheet, wherein the tube sheet overlay material contains a plurality of third openings configured to allow the plurality of elongated tubes to pass there through.
The prior art references fail to disclose or suggest each third opening of the plurality of third openings comprises a beveled upper portion having a welding groove having a total area of from about 1.125 mm2 to about 10.125 mm2 located between a beveled sidewall of the beveled upper portion of the third opening and an outermost sidewall of the elongated tube passing through the third opening; and a welding material located inside the welding groove and affixed to the outermost sidewall of the elongated tube passing through the third opening, wherein the beveled upper portion of the third opening of the tube sheet overlay material has a J-bevel shape, a groove angle from about 00 to about 60, and a bevel angle from about 0 to about 30.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 4-15, 17-18 and 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim 21 is new.
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 NATASHA E YOUNG whose telephone number is (571)270-3163. The examiner can normally be reached M-F 7:00 am - 6:00 pm.
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NATASHA E. YOUNG
Examiner
Art Unit 1774
/NATASHA E YOUNG/Primary Examiner, Art Unit 1774
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