DETAILED ACTION
This is in response to the claim amendments and arguments filed 18 February 2026. Claims 1-15 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The rejection of Claim 10 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, made in the previous Office action is withdrawn in view of the amendment to the claim.
The rejection of Claims 1-11 under 35 U.S.C. 103 as being unpatentable over Celaya Sanfiz et al [EP 2 179 790 A1] made in the previous Office action is withdrawn in view of applicant arguments. Specifically, applicant argued that one skilled in the art would not reasonably expect that an oxidative dehydrogenation catalyst having a composition of MovVwNbyBizOx would necessarily have a crystallographic structure with the Pba2-32 space group, characterized by reflections determined with Cu-Kα X-ray diffraction (XRD), as recited in claim 1. Applicant argued that the crystalline structure of a compound with a similar composition is difficult to predict because of polymorphism and often depends on the given crystallization conditions.
Further, applicant argued that the claimed crystallographic structure provides the unexpectedly advantageous property to render a high yield of desired olefins. Applicant pointed to the data in the specification that inventive Examples 1 to 3 demonstrate high stability with respect to catalyst activity, as well as slow increase in ethylene selectivity as function of cumulative redox cycles, versus comparative Examples 1 and 2. Applicant argument that the claimed crystallographic structure provides unexpectedly advantageous properties over Celaya Sanfiz is deemed to be persuasive.
In regard to independent claim 5, applicant amended the temperature range to “180°C to 220°C” which differs from the reaction temperature of 175°C disclosed in Example 1 of Celaya Sanfiz. Applicant also amended claim 5 to include the step of “calcining the MovVwNbyBizOx in an inert atmosphere” which is not disclosed or suggested in Celaya Sanfiz which discloses a calcination treatment in an oxygen-containing atmosphere (air or a synthetic oxygen-containing atmosphere) which is not an inert atmosphere.
Allowable Subject Matter
Claims 1-11 are allowed over the prior art references of record.
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 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/683,043. Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application claims a method converting alkanes (i.e., paraffins) to olefins comprising contacting a feed stream comprising alkanes (i.e., paraffins) with an oxidative dehydrogenation catalyst in a reaction zone which is indistinguishable over the method of claim 12 since the oxidative dehydrogenation catalyst may be the same when A is bismuth.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant response that they will consider filing a terminal disclaimer once one of the applications is indicated to be in condition for allowance has been noted.
Conclusion
THIS ACTION IS MADE FINAL. 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 ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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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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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
March 31, 2026
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