DETAILED ACTION
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18457216 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application 18457216 teaches a process for dehydration of an ethanol feed stream comprising: mixing said ethanol feed stream with steam and feeding the ethanol feed stream and steam mixture to a charge heater to produce a heated charge stream and sending said heated charge stream to a radial flow reactor to contact a catalyst under reaction conditions and produce an effluent comprising ethylene, wherein a pressure drop through a catalyst bed in the radial flow reactor is about 3 to about 5 psi.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-17 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.
Previously cited prior art (in parent application 18457216) Taheri teaches that only steam is heated in the inert super-heater to produce a superheated inert gas stream and then the superheated inert gas (steam) stream is mixed with a preheated first ethanol stream in an inline stationary mixer. It is acknowledged that Taheri's process does not allow passing of the ethanol stream from the inert super-heater. Taheri further teaches that the ethanol stream does not pass through the heater to avoid any thermal decomposition of ethanol. It is further acknowledged that Bolton's process involves dehydrogenation reactors that function at significantly lower temperatures (160°C to 270°C, as stated in claim 1 of Bolton), and therefore, Bolton utilizes a heat exchanger to reheat the feed stream instead. The instant claim distinguishes itself from Bolton in combining ethanol with steam and then heating the combined stream in a heater (not exchanger) before sending to a radial reactor. Thus, would not look to the teachings of Bolton at such a low temperature to combine with the teachings of Taheri. Valladares teaches using steam as a carrier but does not teach or suggest in combination with a radial reactor. In Valladares, the temperature range conducted is lower and the pressure is higher than what is conducted in the instant invention (the lowest used in Valladares was about 12 psi).
In an updated search, the Examiner cites Coupard et al. who teaches a stream of ethanol is combined with a recycle stream of water which is vaporized in a heat exchangers, compressed and vaporized again before sending to a radial reactor. However, Coupard does not teach or suggest combining steam with the ethanol feed then sending it to a radial reactor. The operation in Coupard is at low temperatures (like Bolton) and higher pressures considerably outside of the range conducted in the instant invention.
Thus, there would be no expected success in a combination and there is no suggestion or motivated provided by the prior art to make a combination to result in process for dehydration of an ethanol feed stream comprising sending said ethanol feed stream and steam to a radial flow reactor system to contact a catalyst under reaction conditions and produce an effluent comprising ethylene.
Conclusion
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/SHARON PREGLER/Primary Examiner, Art Unit 1772
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