DETAILED ACTION
Response to Amendment
The Examiner acknowledges the Amendments to the claims filed 7/13/26. The previous statutory Double Patenting is withdrawn. However, a nonstatutory double patenting rejection exists in light of the amendment.
This action is now Final.
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, 5, and 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9, and 10 of U.S. Patent No. 12,570,587. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent ‘587 teaches a process of converting an ethanol feed stream to ethylene comprising:
a. dividing all of said ethanol feed stream into a first portion and a second portion;
b. sending said first portion to a reactor through a charge heater;
c. mixing steam with said first portion at said charge heater and sending an ethanol and steam mixture to said reactor;
d. subjecting said ethanol and steam mixture to sufficient conditions to dehydrate said ethanol to produce an effluent comprising ethylene and water;
e. combining said effluent with said second portion to form an effluent and second portion mixture and sending said mixture to a second reactor to be reacted to produce a product effluent comprising ethylene and water and sending product effluents from said first reactor and said second reactor to a third reactor wherein the inlet temperature for said third reactor is about 400-500° C;
wherein said inlet temperature is from about 450-454° C;
wherein a product effluent from said third reactor contains less than 5 mol ppm diethyl etherl;
wherein selectivity to ethylene is about 98-99% and wherein about 0.00% butene is produced.
Thus, it would have been obvious to employ inlet temperatures to arrive at an effluent that contains less than 5 mol ppm DME.
Claims 2-4 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, and 10 of U.S. Patent No. 12,570,587 in view of Sarin et al. 20170266635.
With regards to claims 2-4 and 6-7, Sarin teaches that ethanol dehydration is endothermic and that the temperature profile through the reactor affects ethanol and DME conversion. Sarin further teaches that DME decomposes at elevated temperatures and that excessive cooling can result in incomplete conversion. Thus, heat supplied to the reactor should be controlled to minimize DME ([0033]-[0040]).
Thus, it would have been obvious to optimize the operating conditions of the third reactor of the ‘587 patent to minimize both the reactor endotherm and the among of DME in the effluent. Patent ‘587 teaches that the third reactor endotherm is 2.8 ⁰C and an effluent contains 1.7 ppm DME. Reducing the endotherm to less than 10 degrees, 5 degrees, or 2 degrees, to reach less than 1 mol ppm DME would have been obvious routine experimentation and optimization in the art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON PREGLER whose telephone number is (571)270-5051. The examiner can normally be reached Monday - Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571) 272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON PREGLER/Primary Examiner, Art Unit 1772
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