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 Objections
Claim 4 is objected to because of the following informalities: the claim is missing a period at the end. Appropriate correction is required.
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.
Claim(s) 1-5, 7, and 9-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nair et al. (US 10,954,177).
The instant claims are drawn to a process for producing trifluoroiodomethane by reacting a first reactant stream comprising hydrogen iodide with a second reactant stream comprising trifluoroacetyl chloride to produce an intermediate product stream comprising trifluoroacetyl iodide; reacting the intermediate product stream to produce a final product stream comprising trifluoroiodomethane.
Nair et al. teach a process for producing trifluoroiodomethane and trifluoroacetyl iodide. The process comprising reacting a reactant stream comprising hydrogen iodide with a trifluoroacetyl halide selected from trifluoroacetyl chloride, trifluoroacetyl bromide, and trifluoroacetyl fluoride, in the presence of a catalyst, at a temperature of 25 to about 400°C, to produce an intermediate product stream comprising trifluoroacetyl iodide. The trifluoroacetyl iodide stream is reacted in the presence of a second catalyst at a temperature from 200 to about 600°C to produce a final product stream comprising trifluoroiodomethane (abstract).
The hydrogen iodide is commercially available or may be produced by reacting elemental iodine with hydrogen under irradiation (col. 4, lines 17-22). The hydrogen iodide and the trifluoroacetyl halide react in the presence of a first catalyst selected from activated carbon, nickel, nickel-chromium alloy, copper, iron, or metal carbides (col. 5, lines 14-26). The intermediate product stream may be distilled to separate un-reacted hydrogen iodide from trifluoroacetyl halide, and returning the un-reacted compounds to the reactant stream (col. 10, lines 16-39). The purified intermediate product stream comprising trifluoroacetyl iodide is sent to a second reactor and heated in the presence of a second catalyst comprising nickel, copper, activated carbon, silicon carbide, etc., to form trifluoroiodomethane.
The difference between the present invention and Nair et al. is that the former specifically reacts hydrogen iodide with trifluoroacetyl chloride, while Nair et al. teaches the use of either trifluoroacetyl chloride, trifluoroacetyl bromide, or trifluoroacetyl fluoride. This is not a patentable distinction, because clearly, trifluoroacetyl halide is taught by Nair et al. as a trifluoroacetyl halide that may be reacted with hydrogen iodide. Moreover, Nair et al. teach examples where trifluoroacetyl chloride is reacted with hydrogen iodide to produce trifluoroacetyl iodide, which is subsequently separated and added to another reactor to produce trifluoroiodomethane. Therefore, the instant claims are obvious in view of the process taught by Nair et al.’
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, 4, 7, 9, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7, 8, 10, 11, and 14 of U.S. Patent No. 10,954,177. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a process for producing trifluoroiodomethane by reacting a first reactant stream comprising hydrogen iodide with a second reactant stream comprising trifluoroacetyl halide to produce an intermediate product stream comprising trifluoroacetyl iodide; reacting the intermediate product stream to produce a final product stream comprising trifluoroiodomethane.
The difference between two sets of claims is that the instant claims recite a process wherein hydrogen iodide is reacted with trifluoroacetyl chloride to produce an intermediate, trifluoroacetyl iodide, while the claims of the ‘177 patent recites a broader process, wherein hydrogen iodide is reacted with a trifluoroacetyl halide. However, trifluoroacetyl chloride is one of the trifluoroacetyl halides that may be reacted with hydrogen iodide in the ‘177 patent. Therefore, the instant claims are rendered obvious by the claims of the ‘177 patent.
Claims 1, 4, and 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,752,565. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a process for producing trifluoroiodomethane by reacting a first reactant stream comprising hydrogen iodide with a second reactant stream comprising a trifluoroacetyl halide to produce an intermediate product stream comprising trifluoroacetyl iodide; reacting the intermediate product stream to produce a final product stream comprising trifluoroiodomethane.
The difference between two sets of claims is that the instant claims recite a process wherein hydrogen iodide is reacted with trifluoroacetyl chloride to produce an intermediate, trifluoroacetyl iodide, while the claims of the ‘565 patent recites a broader process, wherein hydrogen iodide is reacted with a trifluoroacetyl halide. However, trifluoroacetyl chloride is one of the trifluoroacetyl halides that may be reacted with hydrogen iodide in the ‘565 patent. Therefore, the instant claims are rendered obvious by the claims of the ‘565 patent.
Claims 6 and 8 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
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