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 Status
Claims 1-16 were filed on 4/5/2024. In a preliminary amendment filed on the same day, claims 8-9 and 11-15 were amended. Claims 1-16 are pending.
Priority
The instant application was filed on 4/5/2024 and claims benefit of priority to:
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1054
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See filing receipt dated 9/26/2024.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5, 7, 8, 13, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baer (US4520125, published on 5/28/1985, of record in the IDS filed on 4/5/2024).
In examples 1-6 in col. 3-6, Baer teaches reacting methanol and methacrolein in a reactor system comprising oxygen (an oxygen-containing gas) and a heterogeneous noble metal-containing catalyst (comprising palladium, Pd on a zinc oxide carrier) to produce methyl methacrylate in the absence of any additional bases. The examples teach that the solid catalyst is introduced into a reaction tube and that methacrolein, methanol, and oxygen are passed in through the lower end of the tube. Thus, the examples describe a fixed bed of catalyst (claims 7 and 8). The examples also teach a reaction temperature of 40 or 45°C at atmospheric pressure (0 psig standard or 15 psig absolute), which fall within the range of claims 13 and 14. Also see MPEP 2131.
Claim(s) 1-3, 5-9, 11, and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krapchetov (US2020/0157036, published on 5/21/2020, of record in the IDS filed on 4/5/2024).
In example 2 in [0023], Krapchetov teaches reacting methanol and methacrolein in a reactor system comprising an oxygen-containing gas (air or a gas containing 8 mol% oxygen in nitrogen) and a heterogeneous noble metal-containing catalyst (as a fixed bed comprising gold, Au, supported on alumina-claims 7, 8, and 11). The results are summarized in the following Table:
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632
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Thus, Krapchetov teaches that the reaction can be carried out with similar results in the absence (claim 5) or presence of 0.15 wt% of a sodium methoxide (NaOMe) base. Further regarding claim 5, example 1 in [0020-0022] also teaches runs in the absence of base with the same catalysts. Sodium methoxide is not an Arrhenius base because it does not donate a hydroxide group, but is a Lewis base (claim 2) because it donates electrons. See p. 11-12 of the specification as filed. In the absence of the base, the pH is 5.7 or 6.3 (claim 6) and in the presence of the base, the pH is 6.8 (claim 2). Krapchetov does not explicitly teach if the base is added directly or indirectly (claim 3), however, as these cover all types of addition, then Krapchetov must inherently teach this limitation. Regarding claim 9, part of the product stream is recycled to the reactor system (see “recyc. col”) without addition of more base. Krapchetov teaches that the reaction temperature is 60°C and that the reaction pressure is 160 psig, which falls within the ranges of claims 13-14. Also see MPEP 2131.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 5, 7, 8, and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baer (US4520125, published on 5/28/1985, of record in the IDS filed on 4/5/2024).
The examples of Baer were discussed above and are incorporated herein by reference. Baer further teaches that the reaction can be carried out continuously or batchwise with a molar ratio of methanol to methacrolein of from 100:1 to 1:1, which falls within the range of claim 15 and overlaps with the range of claim 16. See col. 3, lines 20-30. Also see MPEP 2144.05. Baer additionally teaches the reaction temperature can range from 0 to 100°C, preferably from 30 to 60°C, and the reaction pressure can be reduced, atmospheric or super atmospheric, with atmospheric being preferred. See col. 3, lines 14-19 and 46-48. Baer also teaches that the oxygen can be used in pure molecular form or in the form of a mixture with one or more other gases, in particular nitrogen or carbon dioxide. For example, air is a suitable source of oxygen. It has proven useful to use the oxygen in an amount greater than that required for the reaction. Preferably, it is used in not less than 1.5 times the stoichiometric amount. See col. 3, lines 39-45.
Baer does not explicitly teach the molar ratio of the methanol to methacrolein in the examples, corresponding to the ranges in claims 15-16.
It would have been prima facie obvious to arrive at the instantly claimed process based on the teachings of Baer with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to employ the claimed molar ratios in the process of Baer, because Baer teaches a range which overlaps with or falls within the ranges claimed. Also see MPEP 2144.05.
Claim(s) 1-3 and 5-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Krapchetov (US2020/0157036, published on 5/21/2020, of record in the IDS filed on 4/5/2024).
The teachings of Krapchetov were discussed in the preceding rejection and are incorporated by reference herein. Krapchetov additionally teaches that the heterogeneous catalyst can comprise other noble metals and other refractory oxide supports. See [0004-0011]. Krapchetov teaches that the catalyst particles may be present in a slurry of a catalyst bed. See [0014]. Krapchetov teaches that the reaction comprises a liquid phase comprising methacrolein, methanol, and methyl methacrylate (MMA) and a gaseous phase comprising oxygen and can be carried out at a temperature from 40 to 120°C and a pressure from 0 to 2000 psig. See [0014]. Krapchetov teaches the molar ratio of methanol to methacrolein is 1:10 to 100:1, preferably from 1:2 to 20:1, preferably from 1:1 to 10:1, which falls within or overlaps with the ranges of claims 15-16. See [0015] and MPEP 2144.05. Krapchetov teaches that the product stream is fed to a methanol recovery distillation column which provides an overhead rich stream in methanol and methacrolein; preferably this stream is recycled back to the OER (claim 10). See [0015-0016]. Krapchetov teaches the oxygen concentration at the reactor outlet is at least 0.5 mole% and preferably no more than 7 mole%, which overlaps with the range of claim 12. See [0017] and MPEP 2144.05.
Krapchetov does not explicitly teach an example wherein a base material is added indirectly to the reactor system by mixing with one or more reactants to form a base-containing stream that is subsequently added to the reactor system (claim 4); wherein the portion of the product stream recycled back to the reactor system is distilled before entering the reactor system (claim 10); that the gas phase stream exiting the reactor system comprising oxygen in an amount ranging from 1-7.5 mol% based on the total amount of the gas phase (claim 12); and the molar ratios of methanol : methacrolein of from 1:100 to 1000:1 (claim 15) or 0.1:1 to 10:1 (claim 16).
It would have been prima facie obvious to arrive at the claimed invention based on the teachings of Krapchetov with a reasonable expectation of success before the effective filing date of the claimed invention. It would have been prima facie obvious to arrive at the ranges of claims 12, 15, and 16 because these fall within or overlap with the ranges disclosed by Krapchetov. Also see MPEP 2144.05. Regarding claim 4, Krapchetov only discusses that the base can be fed to the reactor, but does not explicitly teach pre-mixing the base with a reactant before being. However, the selection of any order of performing process steps and/or mixing reactants is prima facie obvious in the absence of new or unexpected results. Also see MPEP 2144.04(IV)(C). Regarding claim 10, Krapchetov teaches that the preferred embodiment of the process is to distill the product stream before it is recycled back to the reactor. Therefore, it would have been obvious to arrive at this step based on the teachings of Krapchetov.
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.
Non-Provisional Rejections with no Secondary References
Claims 1, 5-9, and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11691942 (‘942).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘942 recite a process which overlaps with that claimed in that “wherein base is not added to the reactor or to the liquid streams entering the reactor”. See claim 1 and instant claims 1 and 5. Regarding claims 6-9, and 11-13, see claims 1-10. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5-9, and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10829432 (‘432).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘432 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 6-8, 11-13, and 15-16, see claims 1-9. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Also see MPEP 2144.05.
Claims 1, 5-9, 11, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10829434 (‘434).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘434 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 6-8, 11, 13, and 15-16, see claims 1-11. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Also see MPEP 2144.05.
Claims 1, 5-9, 11, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10829433 (‘433).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘433 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 6-8, 11, 13, and 15-16, see claims 1-9. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Also see MPEP 2144.05.
Claims 1, 5-9, and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10865179 (‘179).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘179 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 6-8, 11-13, and 15-16, see claims 1-9. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Also see MPEP 2144.05.
Claims 1-4, 7-9, 11, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10745341 (‘341).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘179 recite a process which includes all of the actively required process steps and further includes addition of a base which can be an Arrhenius base (sodium hydroxide) or a non-Arrhenius base (sodium methoxide) according to claim 8 (corresponding to instant claims 1 and 2). Regarding claims 7-8, 11, and 13, see claims 1-10. Regarding claims 3-4, the claims of ‘341 do not explicitly teach how the base is added to the reactor. However, the selection of any order of performing process steps and/or mixing reactants is prima facie obvious in the absence of new or unexpected results. Also see MPEP 2144.04(IV)(C). Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5-9, 11, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10800727 (‘727).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘727 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 6-8, 11, and 13, see claims 1-10. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5-9, 11, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10829435 (‘435).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘435 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 6-8, 11, and 13, see claims 1-10. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5, 7-9, 11, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12654156 (‘156).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘156 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8, 11, 13, and 14, see claims 1-12. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5, 7-9, 11, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12397284 (‘284).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘284 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-10. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5, 7-9, 11, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11813593 (‘593).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘593 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-13. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5, 7-9, 11, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11498057 (‘057).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘057 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-10. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5, 7-9, 11, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11111204 (‘204).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘204 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8, 11, and 15-16, see claims 1-9. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Also see MPEP 2144.05.
Claims 1, 5, 7-9, 11, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10829431 (‘431).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘431 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-9. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5-9, 11, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10822297 (‘297).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘297 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 6-8, 11, and 13, see claims 1-10. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5, 7-9, and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9969672 (‘672).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘672 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 13-14, see claims 1-15. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Claims 1, 5, 7-9, and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 9676699 (‘699).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘699 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8, see claims 1-12. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05.
Provisional Rejections with no Secondary References
Claims 1, 5, 7-11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of co-pending Application No. 19/125957 (‘957).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘957 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-15. Regarding claims 9-10, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further, the claims of ‘957 describe that the product stream is subjected to distillation to provide an overhead stream comprising unreacted reactants. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, 11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of co-pending Application No. 19/125802 (‘802).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘802 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-12. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, 11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of co-pending Application No. 19/125791 (‘791).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘791 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-13. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, 11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of co-pending Application No. 19/125366 (‘366).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘366 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-12. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of co-pending Application No. 19/125361 (‘361).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘361 (step d) recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11-14, see claims 1-15 and MPEP 2144.05 regarding routine optimization. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of co-pending Application No. 18/698830 (‘830).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘830 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11-16, see claims 1-15 and MPEP 2144.05 regarding routine optimization. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of co-pending Application No. 18/695395 (‘395).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘395 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11-16, see claims 1-11 and MPEP 2144.05 regarding routine optimization. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, 11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of co-pending Application No. 18/695388 (‘388).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘388 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-9. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of co-pending Application No. 18/695145 (‘145).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘145 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11-16, see claims 1-9 and MPEP 2144.05 regarding routine optimization. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, 7-9, 11, and 13-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of co-pending Application No. 18/695059 (‘059).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘059 recite a process which includes all of the actively required process steps and further includes addition of a base which can be an Arrhenius base or a non-Arrhenius base according to claim 3 (corresponding to instant claims 1 and 2). Regarding claims 3-4, 7-9, 11, and 13, see claims 1-9. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Further regarding claim 14, no pressure is given, therefore, the pressure is assumed to include atmospheric pressure (0 psig standard or 15 psig absolute). Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 7-9, 11, and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of co-pending Application No. 18/695047 (‘047).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘366 recite a process which includes all of the actively required process steps and is silent regarding the addition of any base to the reactor system (corresponding to instant claims 1 and 5). Regarding claims 7-8 and 11, see claims 1-13. Regarding claim 9, it is prima facie obvious to recover and recycle any unreacted reagents back to the reactor in order to increase the efficiency of the reaction. Regarding claims 15-16, the reaction stoichiometry requires at least a 1:1 molar ratio of methanol to methacrolein, which falls within the claimed ranges. Also see MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Non-Provisional and Provisional Rejections with Secondary References
The following rejection applies to any of the non-statutory double patenting rejections above, except for the provisional rejection over 19/125957 (‘957).
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over the US patents cited above or on the ground of provisional nonstatutory double patenting as being unpatentable over the co-pending US app. nos above, and further in view of over Krapchetov (US2020/0157036, published on 5/21/2020, of record in the IDS filed on 4/5/2024).
The claims of the above US patents and co-pending US app. no’s are silent regarding a recycle stream obtained by distillation of the product stream. The teachings of Krapchetov were addressed in the prior art rejections above and are incorporated by reference herein. In particular Krapchetov teaches that the product stream is fed to a methanol recovery distillation column which provides an overhead rich stream in methanol and methacrolein; preferably this stream is recycled back to the OER. See [0015-0016]. It would have been prima facie obvious to combine the process of the claims of the US patents or US co-pending applications above with the teachings of Krapchetov to arrive at the instantly claimed process with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to obtain the recycle stream from distillation of the MMA product stream because such is known and suggested by Krapchetov. Including a distillation in the claimed processes will predictably produce a process where pure unreacted reactants can be separated from the MMA product and recycled to the reactor for further reaction, thus increasing the efficiency of the process. Also see MPEP 2143(I)(A).
Conclusion
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/AMY C BONAPARTE/ Primary Examiner, Art Unit 1692
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