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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krill et al. (US 9,963,417) in view of Krill (EP 3786148).
The claims are drawn to a process for the production of alkyl methacrylate comprising:
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Krill et al. teach a process for producing methyl methacrylate by reacting methacrolein with oxygen and methanol in the presence of a heterogeneous noble metal catalyst in an oxidative esterification reaction. The stationary concentration of methacrolein is less than or equal to 12% by weight based on the total weight of the reaction mixture in the reactor (abstract).
The methacrolein starting material is prepared by reacting propanal with formaldehyde. According to an embodiment of the invention, the oxidative esterification reaction takes place with a molar ratio of methanol to methacrolein from 1:1 to 50:1 (col. 3, line 63 to col. 4, line 22).
According to Krill et al., a mixture of methanol and methacrolein is fed into a reactor filled with a corresponding fixed bed catalyst; after reaction, the mixture is fed from the reactor to a heat exchanger where it is cooled; the cooled mixture is fed to a gas/liquid separator where the gas is continuously separated from the liquid phase; the off-gas is disposed of or recycled; the liquid phase may be neutralized, and then the reaction mixture comprising methyl methacrylate is separated from the neutralization vessel for purification, while the rest of the reaction mixture is fed back to the main reactor.
In a specific example, a mixture of 30.9 wt.% of methacrolein and 69.1 wt.% of methanol is fed to a tube reactor along with a mixture of oxygen and nitrogen gas. The tube reactor contains 15g of catalyst comprising 0.9% gold, 1.1% nickel oxide on SiO2/MgO. The product mixture was analyzed by gas chromatography (col.5, line24 to col. 7, line 3).
Krill et al. do not expressly teach the concentration of alcohol or methacrolein in the liquid stream exiting the reactor system, the amount of oxygen in the gas phase exiting the reactor system, or that the liquid phase stream exiting the reactor system comprising a certain concentration of an alkyl isobutyrate.
However, Krill (EP 3786148) teaches a process for making methyl methacrylate by reaction of methanol and methacrolein in the presence of a nano-sized gold catalyst in slurry form, wherein the reaction output comprises isobutyric acid methyl ester (methyl isobutyrate) in an amount smaller than 1000 ppm; about 46.3% by weight of methanol, and about 9.4% by weight of methacrolein are present in the liquid stream exiting the reactor; the gas stream exiting the reactor comprises about 4.5% oxygen (0040-0058).
The instant claims are rendered obvious by the combined reference teachings, since Krill teaches the same process for making methyl methacrylate that is taught by Krill et al., and teaches the reactor output not expressly taught by Krill et al., but recited by the instant claims.
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 1-8, 10, and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/698,828 (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 for producing an alkyl methacrylate by first producing methacrolein from propionaldehyde and formaldehyde, and then reacting the methacrolein with an alkyl alcohol. The difference between the instant claims and those in the reference application is that the reference application specifically make methyl methacrylate, wherein methanol is the alkyl alcohol reacted with methacrolein, while the instant claims more broadly recited the production of an alkyl methacrylate, wherein methacrolein is reacted with an alkyl alcohol. This is not a patentable distinction because the instant claims recited the use of an alkyl alcohol having from 1 to 12 carbon atoms, which includes methanol. Therefore, the instant claims are rendered obvious by 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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 5-11 of copending Application No. 18/695,395 (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 for producing an alkyl methacrylate by first producing methacrolein from propionaldehyde and formaldehyde, and then reacting the methacrolein with an alkyl alcohol. The difference between the instant claims and those in the reference application is that the reference application specifically make methyl methacrylate, wherein methanol is the alkyl alcohol reacted with methacrolein, while the instant claims more broadly recited the production of an alkyl methacrylate, wherein methacrolein is reacted with an alkyl alcohol. This is not a patentable distinction because the instant claims recited the use of an alkyl alcohol having from 1 to 12 carbon atoms, which includes methanol. Therefore, the instant claims are rendered obvious by 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
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