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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on October 4, 2025 has been entered.
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 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,993,565. 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, wherein a linear C4-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The difference is that the claims of the ‘565 patent specifically recite that the second pressure is higher than the first pressure, while the instant claims generally recites that the two pressures are different. The recitation of a higher second pressure than first pressure in the ‘565 patent meets the condition of the second pressure being different from the first pressure, in the instant claims. Therefore, the instant claims are rendered obvious by the claims of the ‘565 patent.
Claims 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 7-12 of U.S. Patent No. 12,054,455. 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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is higher than the first pressure. The differences between the two sets of claims are minimal. There is such a substantial overlap of scope between the two sets of claims that there is no patentable distinction among them. Accordingly, the instant claims are rendered obvious by the claims of the ‘455 patent.
Claims 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9, and 10 of U.S. Patent No. 11,680,032. 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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is higher than the first pressure. The difference between the two sets of claims is that the instant claims recited specific pressure ranges for the first and second pressures, 0.0 bar(g) to 10 bar(g), and 1 bar(g) to 50 bar(g), respectively. The claims of the ‘032 patent do not recite specific pressure ranges; however, since the claims of the ‘032 patent recite a first and second pressure, wherein the second pressure is higher than the first pressure, the breadth of such a recitation meets the parameters of the instant claim limitation. Therefore, the instant claims are rendered obvious by the claims of the ‘032 patent.
Claims 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 10, and 11 of copending Application No. 18/198,809 (reference application). 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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The difference is that the claims of the reference application specifically recites a first pressure of from 0.1 bar(g) to 10 bar(g), and a second pressure of from 5 bar(g) to 400 bar(g), while the instant claims generally recites that the two pressures are different. The recitation of the two different pressure ranges in the reference application meets the condition of the second pressure being different from the first pressure, in the instant claims. Therefore, the instant claims are rendered obvious by the claims of the reference application.
It should be mentioned that the reference application also recites a temperature range for the isomerization and hydroformylation reactions. Since the instant claims are silent with regard to temperature, standard isomerization/hydroformylation conditions are assumed. Such conditions would include the temperature(s) recited in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, and 7-11 of copending Application No. 18/755,473 (reference application). 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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The difference is that the claims of the reference application recite that the isomerizing step and hydroformylation step produces an isomerized product comprising at least 20 wt.% internal olefins, and at least 25 wt.% branched aldehydes, respectively. Such a limitation is not found in the instant claims; however, since both sets of claims recite an isomerization step and a hydroformylation of the isomerized product, at similar pressure ranges for the first and second pressure, it would be reasonable to expect that the isomerized olefin, and hydroformylation product, would have similar product distributions to those recited in the reference application. Therefore, the instant claims are rendered obvious by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 10 of copending Application No. 17/921,098 (reference application). 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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The difference is that the claims of the reference application recite that the isomerizing step and hydroformylation step produces an isomerized product comprising at least 20 wt.% internal olefins, and at least 40 wt.% branched aldehydes, respectively. Such a limitation is not found in the instant claims; however, since the instant claims meet the limitation of the reference application, wherein the isomerization is conducted at a first pressure, and the hydroformylation is conducted at a second pressure that is higher than the first pressure, it would be reasonable to expect that the isomerized olefin, and hydroformylation product, would have similar product distributions to those recited in the reference application. Therefore, the instant claims are rendered obvious by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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