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, 3, 5-7, 9-10, and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12-17 of copending Application No. 18/535904 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite treating produced water with a macroporous weak-acid resin, where the raw material for the macroporous weak-acid resin includes a matrix material, a porogen, a reinforcing agent, an initiator, and a dispersant in a mass ratio of (25-35):(32-50):(1-3):(0.8-1.2):(6-9). While the reference application recites additional limitations, it would be anticipated by the broader current claims of the instant application in genus/species relationship thereby establishing the current application and reference application as patentably indistinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-20 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.
Claim 1 recites “a method for deep removal of divalent and trivalent scaling ions from heavy oil produced water, comprising carrying out a deep removal treatment of the divalent and trivalent scaling ions in the heavy oil produced water with a macroporous weak-acid resin”. The manipulative step drawn to “carrying out a deep removal treatment” is unclear since it does not reasonably describe the metes and bounds resulting in “deep removal of divalent and trivalent scaling ions”, where interpreted metes and bounds for treatment may exceed those provided in the originally filed disclosure.
Claim 1 recites a method comprising carrying out treatment with a macroporous weak-acid resin, “wherein the raw material for the macroporous weak-acid resin includes a matrix material, a porogen, a reinforcing agent, an initiator and a dispersant”. Since the claim does not equate the macroporous weak-acid resin with “the raw material for the macroporous weak-acid resin” it is unclear what components of the raw material are provided in the final macroporous weak-acid resin. Additionally, it is unclear what components of the raw material exist in the final macroporous weak-acid resin, whether all components in the raw material are utilized in the treatment, or some other alternative.
The recitation of “a raw material for the macroporous weak-acid resin” is interpreted as a product by process limitation. According to MPEP 2113, “Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production”. In this case, the claims are drawn to a method of treatment via a final product, formed by a raw material comprising those elements recited in claim 1. However, the claim fails to adequately recite what the final product comprises.
In light of the above-noted uncertainty regarding treatment methodology and macroporous weak-acid resin content/structure, it would be improper to reject the current claims on the basis of prior art since such rejection would necessarily rely on considerable speculation by the examiner (MPEP 2173.06, Section II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIRK R BASS whose telephone number is (571)270-7370. The examiner can normally be reached 8-4:30 EST Monday-Friday.
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, Bobby Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779
Prosecution Insights