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 .
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen et al. (U.S. Pub. No. 2016/0030916) taken in view of evidence by Sjoberg (Silica in aqueous environments; Journal of Non-Crystalline Solids 196, 51-57; 1996).
Regarding claim 1, Shen et al. teaches removal of hydrogen sulfide and mercaptans from gaseous hydrocarbon streams, natural gas or obtained in the drilling, removal from the ground, storage, transport, and processing of crude oil which meets the limitation of process to remove H2S from a stream wherein the stream is selected from the group consisting of oil streams, gas streams, CO2 point source purification streams and geothermal energy system streams (paragraphs 15-19). Shen et al. teaches silica particulates, silica (quartz sand), which meets the limitation one or more aqueous acidic silica nanoparticle compositions (paragraph 28). Shen et al. teaches triazine which one or more triazine compounds (paragraphs 37, 38, Table 1). While Shen et al. does not silica being acidic (i.e., acidic silica), given acidic properties of a silica surface have been described by an acidity constant for surface SiOH groups with pKa(intr.) = 6.8 (i.e., acidic), as evidenced by Sjoberg, Abstract, it is clear that silica taught by Shen et al. would necessarily be acidic in an aqueous environment (paragraph 36) (i.e., acidic silica).”
Regarding claim 2, Shen et al. teaches 1,3,5-tris(2-hydroxyethyl)-hexahydro-s-triazine (paragraph 37).
Regarding claims 3-6, Shen et al. teaches removal of hydrogen sulfide and mercaptans from gaseous hydrocarbon streams, natural gas or obtained in the drilling, removal from the ground, storage, transport, and processing of crude oil (paragraphs 15-19).
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-13 of copending Application No. 18/546,755 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and copending Application No. 18/546,755 claim removal of H2S from a stream comprising silica and triazine.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/546,759 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and copending Application No. 18/546,759 claim removal of H2S from a stream comprising silica and triazine.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/546,662 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and Application No. 18/546,662 claim removal of H2S from a stream comprising colloidal dispersion which is defined by the specification as silica nanoparticles and triazine.
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/546,674 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and Application No. 18/546,674 claim removal of H2S from a stream comprising colloidal dispersion which is defined by the specification as silica nanoparticles and triazine.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 01/22/2026