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 .
The examiner has considered the amendment and response filed by applicants on July 2, 2025. Applicants canceled claims 19 and 20, rendering the rejection under 35 U.S.C. 102 moot. Applicants canceled claims 1-18 in the reference application relied upon for the non-statutory double patenting rejection of record, thereby overcoming said rejection; however, the following new rejection are being made.
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 1-3, 78, 8, 10, and 14-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-9, and 13-16 of U.S. Patent No. 12,054,455. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of the ‘455 patent recite a process wherein a linear C4-C36 alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The difference between the two sets of claims is that this instant claims recite an isomerized olefin reaction product comprising at least 20 wt.% internal olefins, and a branched aldehyde hydroformylation product comprising at least 25 wt.%. Such limitations are not recited in the claims of the ‘455 patent. However, since both sets of claims conduct the isomerization step at a first pressure, and the hydroformylation steps at a second, higher pressure, it would be reasonable to expect that the content of isomerized olefin and branched aldehyde product would be similar in both instances. Therefore, the instant claims are rendered obvious by the claims of the ‘455 patent.
Claims 1-3, 7-13, 17, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-18, and 20 of copending Application No. 18/655,285 (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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The difference between the two sets of claims is that this instant claims recite an isomerized olefin reaction product comprising at least 20 wt.% internal olefins, and a branched aldehyde hydroformylation product comprising at least 25 wt.%. Such limitations are not recited in the claims of the reference application. However, since both sets of claims conduct the isomerization step at a first pressure, and the hydroformylation step at a second, higher pressure, it would be reasonable to expect that the content of isomerized olefin and branched aldehyde product would be similar in both instances, specifically since both sets of claims recite the similar pressure ranges for the first and second pressures. Therefore, the instant claims are rendered obvious by the 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 1-3, 7, 8, and 10-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9, 10, and 15-18 of copending Application No. 18/198,809 (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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure. The difference between the two sets of claims is that this instant claims recite an isomerized olefin reaction product comprising at least 20 wt.% internal olefins, and a branched aldehyde hydroformylation product comprising at least 25 wt.%. Such limitations are not recited in the claims of the reference application. However, since both sets of claims conduct the isomerization step at a first pressure, and the hydroformylation step at a second, higher pressure, it would be reasonable to expect that the content of isomerized olefin and branched aldehyde product would be similar in both instances, specifically since both sets of claims recite the similar pressure ranges for the first and second pressures. Therefore, the instant claims are rendered obvious by the 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, 2, 4-8, 16, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 20 of copending Application No. 17/928,368 (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, wherein a linear alpha olefin is isomerized at a first pressure to produce an isomerized olefin; followed by hydroformylation of the isomerized olefin at a second pressure that is different from the first pressure.
The difference between the two claim sets lies in the amount of branched aldehyde product produced after the hydroformylation step; the instant claims recite at least 25 wt. % while the reference application recites 40 wt.% to 100 wt.%. This is not a patentable distinction since the parameters of the instant claims encompass those 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