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 .
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.
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Claims 1 and 2 — Over Claim 5 of Application No. 18/700,153
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/700,153. Although the claims at issue are not identical, they are not patentably distinct for the reasons set forth below.
Reference claim 5 depends from claim 4, which in turn depends from claim 1. Accordingly, reference claim 5 incorporates the aldol reaction, aldol extraction, aldol purification, HPA hydrogenation, and NPG purification operations of reference claim 1, together with saponification of the catalyst-salt-containing raffinate under reference claim 4 and recovery and recycle of the catalyst under reference claim 5.
Claim 1
Instant claim 1 recites aldol condensation of aqueous formaldehyde and isobutyl aldehyde in the presence of catalyst to form hydroxypivaldehyde; extraction to provide an HPA-containing extract and catalyst-salt-containing raffinate; saponification of the raffinate to regenerate catalyst; supplying the extract and regenerated catalyst to aldol purification; separation of HPA from unreacted isobutyl aldehyde and catalyst; hydrogenation of the HPA; and obtaining NPG.
Reference claim 1 recites the same formaldehyde/isobutyl-aldehyde aldol reaction, extraction of HPA into an extract with formation of a catalyst-salt-containing raffinate, aldol purification of the extract, HPA hydrogenation and NPG purification. Reference claim 4 expressly adds saponification of the raffinate to reduce the catalyst salt to catalyst. Reference claim 5 expressly adds distillation of the catalyst regenerated in the saponification process and circulation of the separated catalyst to the aldol purification process.
The additional wastewater-treatment limitations incorporated into reference claim 5 do not patentably distinguish instant claim 1 because instant claim 1 is open-ended and does not exclude additional wastewater recovery or treatment operations. The process defined by reference claim 5 therefore contains the material process sequence recited in instant claim 1. Claim 1 is not patentably distinct from reference claim 5.
Claim 2
Instant claim 2 further requires supplying the saponification-reactor discharge to a catalyst recovery column, separating a stream including the catalyst, and supplying the separated catalyst stream to the aldol purification column.
Reference claim 5 expressly requires distilling the catalyst regenerated during saponification to separate wastewater and catalyst and circulating the separated catalyst to the aldol purification process.
Thus, both claims require a post-saponification catalyst-separation operation followed by return of the recovered catalyst to aldol purification. Characterizing the distillative catalyst-recovery equipment as a “catalyst recovery column” does not establish a patentable distinction from reference claim 5. Claim 2 is therefore not patentably distinct.
Claim 3 — Over Claims 3 and 5 of Application No. 18/700,153
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 5 of copending Application No. 18/700,153.
Instant claim 3 depends from claim 1 and further requires circulating the upper discharge stream from the aldol purification column to the aldol reactor.
Reference claim 3 expressly requires circulating the separated unreacted isobutyl aldehyde and catalyst from aldol purification to the aldol reaction process. Reference claim 5, through its dependency from claims 4 and 1, supplies the saponification and catalyst-recovery limitations additionally present in instant claim 1.
Claims 3 and 5 of the reference application are compatible refinements of the same process defined by reference claim 1: claim 3 concerns recycle of the unreacted aldehyde/catalyst fraction, whereas claim 5 concerns recovery and return of regenerated catalyst. Combining these expressly claimed process features would merely employ each recovery operation for its stated purpose in the common NPG-production process. The resulting process contains the limitations of instant claim 3. Claim 3 is therefore an obvious variation of the inventions defined by reference claims 3 and 5 and is not patentably distinct.
Claim 4 — Over Claims 3 and 5 of Application No. 18/700,153 in View of Morris et al.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 5 of copending Application No. 18/700,153 in view of Morris et al., U.S. Patent No. 4,855,515.
Morris et al., U.S. Patent No. 4,855,515, “Process for the Production of Neopentyl Glycol,” issued August 8, 1989, and therefore qualifies as prior art for purposes. Morris identifies Don L. Morris, Billy W. Palmer, and Thomas W. McAninch as inventors.
Instant claim 4 depends from claim 3 and further requires supplying the aldol-purification upper discharge stream to a raw-material recovery column, distilling that stream, and circulating an upper discharge stream including unreacted isobutyl aldehyde and catalyst to the aldol reactor.
Reference claim 3 already requires recycle of separated unreacted isobutyl aldehyde and catalyst to the aldol reaction process. Reference claim 5 supplies the saponification/catalyst-recovery portion of the underlying process. The reference claims do not, however, expressly require an intervening raw-material recovery distillation before the recycle.
Morris teaches a distillation section containing columns D2–D6, including extractive-distillation column D3 for alcohol recovery and separation of unreacted starting material (Morris, col. 5, ll. 6–12; Fig. 3). Morris further teaches that column D1 recovers unreacted isobutyraldehyde and triethylamine and that the recovered isobutyraldehyde is used in subsequent extractive distillation D3 for triethylamine recovery; the isobutyraldehyde and triethylamine recovered from D3 are then fed back to the aldol unit (col. 5, ll. 24–37). Morris additionally teaches that water from the NPG distillation is fed to D3, recovered isobutyraldehyde/TEA is introduced into D3, and the column overhead removes triethylamine and isobutyraldehyde for recycle to the aldol reactor (col. 6, ll. 20–29).
Thus, Morris does not use the exact nomenclature “raw-material recovery column,” but it expressly teaches the claimed function: an intervening distillation/recovery column recovering unreacted isobutyraldehyde and amine catalyst for recycle to the aldol reactor.
It would have been obvious to one of ordinary skill in the art to subject the unreacted isobutyl-aldehyde/catalyst stream recycled by reference claim 3 to the recovery distillation taught by Morris before returning that material to the aldol reaction. Morris expressly provides the reason for the additional distillation—to recover reusable unreacted raw material and triethylamine catalyst for recycle. Employing the known recovery column in the reference process therefore would have predictably yielded the process of instant claim 4.
Claim 4 is accordingly not patentably distinct from reference claims 3 and 5 in view of Morris.
Claims 5 and 6 — Over Claims 5, 7, and 8 of Application No. 18/700,153
Claims 5 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7, and 8 of copending Application No. 18/700,153.
Reference claims 5, 7, and 8 are compatible refinements of the common NPG process of reference claim 1. Claim 5 concerns saponification/catalyst recovery; claim 7 concerns catalyst/extractant separation and recycle; and claim 8 concerns HPNE separation and purification with NPG recycle. These operations concern different process streams and do not impose technically inconsistent requirements.
Claim 5
Instant claim 5 requires that the second reaction product include catalyst, NPG, extractant and hydroxypivalic-acid-neopentyl-glycol ester (HPNE), followed by NPG purification, catalyst/extractant recovery, separation of an HPNE-containing stream, and distillation of the HPNE-containing stream to obtain HPNE.
Reference claim 1 requires NPG purification with separation of extractant, catalyst, catalyst-containing wastewater and NPG, followed by supplying the separated catalyst and extractant to an extractant-recovery column. Reference claim 7 expressly requires separation of wastewater, catalyst and extractant, return of the catalyst to aldol purification, and return of extractant to aldol extraction. Reference claim 8 expressly requires further separating HPNE from the second reaction product, distilling the HPNE-containing stream, obtaining HPNE, and circulating a small amount of NPG to the NPG-purification process. Reference claim 5 supplies the saponification and catalyst-recovery limitations inherited through instant claim 1.
Accordingly, the material recovery operations of instant claim 5 are expressly claimed as compatible portions of the same NPG process in reference claims 5, 7, and 8. Combining those claimed process refinements would have yielded no unexpected change in function; each recovery operation would continue to operate on its respective stream for its expressly claimed purpose. Claim 5 is therefore an obvious variation of the collectively claimed subject matter and is not patentably distinct.
Claim 6
Instant claim 6 further requires recovering catalyst from an upper fraction of the extractant recovery column and supplying it to aldol purification, while recovering extractant from a lower fraction and supplying it to aldol extraction.
Reference claim 7 expressly requires separating catalyst and extractant in the recovery column and introducing the recovered catalyst to aldol purification and the recovered extractant to aldol extraction. Reference claim 8 supplies the HPNE-purification limitations inherited from instant claim 5, and reference claim 5 supplies the saponification/catalyst-recovery limitations inherited from instant claim 1.
The designation of the separated catalyst and extractant streams as respective upper and lower fractions represents the ordinary physical result of distillative fractionation of components having different volatilities and does not change the recovery or recycle function expressly claimed in reference claim 7. Claim 6 is therefore not patentably distinct from reference claims 5, 7, and 8.
Claim 7 — Over Claims 5, 7, and 8 of Application No. 18/700,153 in View of Wittwer et al.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7, and 8 of copending Application No. 18/700,153 in view of Wittwer et al., EP 0 763 517 A1.
EP 0 763 517 A1 identifies Arnold Wittwer and Manfred Sauerwald as inventors and BASF Aktiengesellschaft as applicant and was published March 19, 1997. (Patent Images)
Instant claim 7 requires recovering NPG from an upper discharge stream of the HPNE purification column and refluxing the recovered NPG to the NPG purification column.
Reference claim 8 expressly requires distillation of an HPNE-containing stream and circulation of a small amount of NPG from the HPNE purification operation to the NPG purification process. The reference claim, however, does not expressly characterize the NPG recycle stream as an “upper discharge stream.”
Wittwer concerns the same chemical ester, identified therein as hydroxypivalic-acid neopentyl-glycol ester or HPN. Wittwer expressly teaches that a mixture containing primarily water, neopentyl glycol and unreacted HPA distills from the top of the column; after condensation/further distillation, NPG may be recovered as a valuable product; and HPN is withdrawn from the bottom of the column (EP 0 763 517 A1, p. 3, ll. 1–8). (Patent Images)
It would therefore have been obvious to recover the NPG already recycled by reference claim 8 from the upper discharge of the HPNE purification column because Wittwer expressly teaches that NPG reports to the column overhead while the higher-boiling HPNE/HPN product is withdrawn from the bottom. The modification merely employs the conventional outlet dictated by the relative volatility of the materials and would predictably provide the upper-discharge NPG recycle required by instant claim 7.
Claim 7 is therefore not patentably distinct.
Claim 8 — Over Claims 5 and 9 of Application No. 18/700,153
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 9 of copending Application No. 18/700,153.
Instant claim 8 depends from claim 1 and requires the catalyst to include triethylamine (TEA).
Reference claim 9 expressly requires that the catalyst include TEA. Reference claim 5 supplies the saponification and catalyst-recovery limitations present in instant claim 1.
Claims 5 and 9 define compatible refinements of the same process of reference claim 1. Selection of the expressly claimed TEA catalyst in the process expressly claimed with saponification and catalyst recovery would have been no more than the use of the claimed catalyst species in the claimed recovery process according to its established function. Claim 8 is therefore not patentably distinct.
Claim 9 — Over Claims 5 and 10 of Application No. 18/700,153
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 10 of copending Application No. 18/700,153.
Instant claim 9 requires the extractant to include 2-ethylhexanol (2-EH).
Reference claim 10 expressly recites an extractant including 2-EH. Reference claim 5 supplies the additional saponification/catalyst-recovery limitations incorporated through instant claim 1.
Use of the expressly claimed 2-EH extractant in the otherwise compatible process of reference claim 5 therefore does not provide a patentable distinction. Claim 9 is not patentably distinct.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -6:30 pm).
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/DEBORAH D CARR/Primary Examiner, Art Unit 1691
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