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 .
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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-7 and 12-24 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18431474 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1-7 correspond to claims 1-7. Claims 8-20 correspond to claims 12-24.
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 1-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18431438 of copending Application No. 18431438 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘438 has all the claim limitations stated in a slightly different manner and additional claim limitations.
Applicant is reminded that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed 1n the patent. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
Claims 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18431438 of copending Application No. 18431474 (reference application). The claims further limit the oxygenate conversion catalyst and are found in the specification.
Applicant is reminded that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed 1n the patent. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 ends with a phrase and is not a complete sentence. “…at reforming reaction conditions in a reforming reaction zone to produce”
Claim 15 is indefinite.
The term “aqueous product” lacks antecedent basis.
Claims 15-24 defines the rest of the method of production, adding a third and fourth effluent, and a specific method to create the recycle effluent found in claim 1 step 4. It is unclear if these claims are to replace steps 3 and 4 of claim 4, or are to run in tandem with steps 2 and 4. For the purpose of this office action it is assumed these additional claim limitations replace the steps 3 and 4 of claim 1. Wording should be adjusted in claim 15 (on which all the rejected claims depend) to reflect if these claims are replacing the more generalized version of these of the limitations found in steps 3 and 4 of claim 1.
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.
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(s) 1-4 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Littlewood et al (US 2023/0069964 A1).
Littlewood teaches a method for making LPG hydrocarbons (title) from bio-based sources. See p 31. This includes those with biomethane.
The reaction has two steps, the first blends the bio synthesis gas includes CO, carbon dioxide and hydrogen (p 32) in a reforming zone which corresponds to the oxygenate synthesis reaction zone of claim 1. The catalyst for this zone does not need include any molecular sieve, see p 42. The metals for catalyst include Pt, Rh, Pd and others, see p 48.
The intention of this zone is to produce methanol for the second zone. The conversion rate of the gases is at least 85%, see p 56. As such the amount of the effluent from this zone would be at least 50 mol% methanol.
The second zone is the LPG synthesis zone, which corresponds to the oxygenate conversion reaction zone of claim 1 step 2. See p 59. The catalyst for this zone may have as little as 0.5% WGS catalytically active metals, see p 66. Preferred catalysts include SAPO, see p 70-71. This zone has a temperature range of 204C-454C and a pressure range of up to 1000 psig, see p 63.
The products of this zone are 40% LPG and less than 25% C5+ products. See table 1 on page 18.
In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946), and MPEP 2144.05.
A portion of the product is separated to form a recycle effluent which is recombined with the feed synthesis gas, see p 36, 62 for recycling.
Claim(s) claims 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Littlewood et al (US 2023/0069964 A1) and Martens et al (US 2015/0099913 A1).
Littlewood does not state the silica to alumina ratio of the use of SAPO 18 and 56.
Martens teaches a method of using methanol and oxygenates to form gasoline and alkane products. See abstract and p 14.
The catalyst used has a silica/alumina ration of as low as 10, see p 21. The molecular sieve used is SAPO 18 and/or SAPO 56. See p 25.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the catalyst support as found in Martens in the invention of Littlewood. Littlewood already calls for use of such catalysts, including specifically SAPO. This has the advantage of being and effective catalyst for a methanol and oxygenate conversion reaction.
Allowable Subject Matter
There is no allowable subject matter due to double patenting rejections. The following are the claims not rejection over prior art, and what is not taught.
Regarding claim 5, there must be some WGS active catalytic metals present.
Regarding claim 9, ssz-13 in not taught or suggested for use.
Regarding claims 12-14 the reaction temperature of the oxygenate synthesis reaction zone is explicitly outside the claimed range, see p 52. The pressure of both zones and the temperature of the oxygenate conversion zone is taught.
Regarding claims 15-24 a third and fourth effluent produced from the second effluent is not taught or suggested. The second effluent is the intended product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANCIS C CAMPANELL/ Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771