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 1-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/562989. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the claims of SN 18/562989.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 Rejections - 35 USC § 103
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.
Claims 1-5, 7-14, 16-30 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/208008 A1 in view of WO 2019/110269 A1, for the reasons given in the last Office Action. In addition, WO 2020/208008 A1 discloses on page 14, lines 19 and 20 that parallel reverse water gas shift reactors are conceivable.
Regrading claim 34, one of ordinary skill in the art would have appreciated that the process of WO 2020/208008 A1 could be carried out free of an autothermal reactor, since the necessary heat could be supplied from one of the reverse water gas shift reactors.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/208008 A1 in view of WO 2019/10269 A1, as applied to claim 1 above, and further in view of Moore et al (US 10,894,244) for the reasons given in the last Office Action.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/208008 A1 in view of WO 2019/10269 A1, as applied to claim 13 above, and further in view of WO 2021/098980, for the reasons given in the last Office Action.
Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/208008 A1 in view of WO 2019/10269 A1, as applied to claim 1 above, and further in view of CA 3,103,347, for the reasons given in the last Office Action.
Response to Arguments
Applicant’s argument, that WO 2020/208008 A1 does not disclose that at least a portion of the first product stream is arranged to be fed to a heating side of the HER such that heat from the first product stream is transferred to the process side of the HER, thereby allowing the conversion of the second feed to a second product stream comprising CO in the process side of the HER, and providing a cooled product stream, is not convincing. One of the parallel rWGS reactors disclosed in WO 2020/208008 A1 is considered to constitute a heat exchange reactor (HER), as recited in applicant’s claims. It would have been obvious to provide heat from the first parallel wWGS reactor to the heating side of the second rWGS reactor in the system of WO 2020/208008 A1, since WO 2020/208008 A1. Discloses on page 14, lines 27-32 that heating may be provided by a stream comprising hydrogen, with a further disclosure that the effluent from the rWGS reactor unit can be 400-900 C. One would have appreciated that such effluent would be a useful source of heat for the second rWGS reactor. Applicant’s argument, that the temperature of 400-900C might be the case of the effluent of the ATR reactor of WO 2020/208008 A1, but is not the effluent of the rWGS reactor, is not convincing, since WO 2020/208008 A1 teaches on page 14, lines 30-32 that the effluent from the rWGS unit can be 400-900C. Applicant’s claims 1-33 do not exclude the inclusion of an autothermal reactor (ATR) in the system.
Regarding claim 34, WO 2020/208008 A1 teaches on page 8, lines 17-21 that the ATR section can be a partial oxidation section or a catalytic partial oxidation section. Accordingly the system of WO 2020/208008 A1 does not require an ATR.
THIS ACTION IS MADE FINAL. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached Monday through Friday from 8:15 am to 4:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736
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