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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 15, the recitation “wherein the releasing of the first molecular sieve regenerant in step (e) provides up to about 80% energy required to operate the second rectifier” is an approximation that has unclear metes and bounds with use of “up to about”, see MPEP 2173.05(b) (III), and the claim is unclear how this step “provides…energy”, and should more specifically recite what is providing energy, i.e. “by direct transfer of energy”, see applicant’s specification [0030].
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonnek et al (US 2012/0312385) taken in combination with Lucas (US 2019/0076751).
Regarding claim 1, Sonnek teaches a molecular sieve depressurization recovery method and system of use of the method in an ethanol production system (title, abstract), Sonnek teaches introducing a fermented mash of ethanol and water into multi-column distillation, with final rectifier column 12 being shown (Fig 1, [0015]), the 190 proof azeotropic vapor 14 is pumped to condenser 16, where it is routed to storage tank 20, economizer 22 heats up liquid pumped to vaporizer 24 and pressured molecular sieve 26, making 200 proof ethanol vapor passed to condenser 28, pumped through flash tank 30, back through economizer and into storage tank 40 (fig 1, [0016]), when molecular sieve has enough extracted moisture and needs to be regenerated it is taken off line 42 and despressuirzed, with water vapor generated fed back to condenser 16 as reverse flow and fed to vaporizer 24 for energy recuperation (Fig 1, [0017]), when the offline molecular sieve 42 is extracted as reverse flow via line 44, the vapor is provided to a sweeten off condenser to pump high value ethanol to storage tank 40 (Fig 2, [0018-0021], claim 1).
However Sonnek teaches only first rectifier and therefore does not teach both first and second rectifiers arranged as claimed.
Lucas teaches a system and method of use of the system for expanded distillation for ethanol production (title, abstract), Lucas teaches the improvement upon the base system 100 of a beer column 120 and rectifier 130 comprises over head drier 150 (Fig 1, [0010-0014]) are expanded into two distillation beer columns 120/220, as well as first rectifier 130 and second rectifier 230, with molecular sieve system 250 for drying of the 190 proof ethanol vapors in overheads 135 and 235, wherein a portion of second rectifier overhead stream 235 is routed to vapor condensing system 295 to use steam condensate to absorb heat from vapors, the steam condensate 275 may then be used as energy input for processing 240 (Fig 2, [0015-0021]), the advantage being increasing overall capacity without significant energy increase [0021].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of Sonnek in view of Lucas to comprise first and second rectifiers as claimed, and introduced further molecular sieve dryers in the configuration as claimed to increase overall capacity of ethanol distillation in Sonnek without significant energy increase as taught by Lucas.
Regarding claim 2, in modified Sonnek, Sonnek has taught routing regenerant vapors back to condenser (see Sonnek Fig 2, vapor through 46 to condenser 16).
Regarding claims 3-6, the concentrations in proofs of modified Sonnek are expected to be substantially overlapping with the instantly claimed ranges since the values in Sonnek are substantially overlapping.
Regarding claims 7-14, Sonnek is silent to the operating pressure and temperatures as claimed, however ethanol-water azeotrope distillation separations are well-known and optimization of the known results effective variables of pressure and temperatures was routine and therefore the skilled artisan would be expected to find through routine optimization the optimum temperatures and pressure without unexpected results.
Regarding claim 15, in modified Sonnek, Lucas has taught using regenerant to supply energy requirement, as Lucas has taught overhead stream 235 is routed to vapor condensing system 295 to use steam condensate to absorb heat from vapors, the steam condensate 275 may then be used as energy input for processing 240 (Fig 2, [0015-0021]).
Regarding claims 16-19, in modified Sonnek, Lucas teaches first rectifier 130 azeotrope stream 138 is provided to second rectifier 230, and routing vapors for energy input as set forth above, and the skilled artisan would be motivated to include additional molecular sieve and regenerant streams in view of Lucas and through routine experimentation motivated by the teachings of Lucas to improve capacity of ethanol production while keep energy consumed increase minimal as taught by Lucas (see Lucas [0015-0021]).
Regarding claim 20, Sonnek teaches a molecular sieve depressurization recovery method and system of use of the method in an ethanol production system (title, abstract), Sonnek teaches introducing a fermented mash of ethanol and water into multi-column distillation, with final rectifier column 12 being shown (Fig 1, [0015]), the 190 proof azeotropic vapor 14 is pumped to condenser 16, where it is routed to storage tank 20, economizer 22 heats up liquid pumped to vaporizer 24 and pressured molecular sieve 26, making 200 proof ethanol vapor passed to condenser 28, pumped through flash tank 30, back through economizer and into storage tank 40 (fig 1, [0016]), when molecular sieve has enough extracted moisture and needs to be regenerated it is taken off line 42 and despressuirzed, with water vapor generated fed back to condenser 16 as reverse flow and fed to vaporizer 24 for energy recuperation (Fig 1, [0017]), when the offline molecular sieve 42 is extracted as reverse flow via line 44, the vapor is provided to a sweeten off condenser to pump high value ethanol to storage tank 40 (Fig 2, [0018-0021], claim 1).
However Sonnek teaches only first rectifier and therefore does not teach both first and second rectifiers arranged as claimed.
Lucas teaches a system and method of use of the system for expanded distillation for ethanol production (title, abstract), Lucas teaches the improvement upon the base system 100 of a beer column 120 and rectifier 130 comprises over head drier 150 (Fig 1, [0010-0014]) are expanded into two distillation beer columns 120/220, as well as first rectifier 130 and second rectifier 230, with molecular sieve system 250 for drying of the 190 proof ethanol vapors in overheads 135 and 235, wherein a portion of second rectifier overhead stream 235 is routed to vapor condensing system 295 to use steam condensate to absorb heat from vapors, the steam condensate 275 may then be used as energy input for processing 240 (Fig 2, [0015-0021]), the advantage being increasing overall capacity without significant energy increase [0021].
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of Sonnek in view of Lucas to comprise first and second rectifiers as claimed, and introduced further molecular sieve dryers in the configuration as claimed to increase overall capacity of ethanol distillation in Sonnek without significant energy increase as taught by Lucas.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 19/374,773 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/374,773 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are substantially overlapping and if amended in either case would still be considered overlapping and therefore be directed to substantially overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hilaly (US 2007/0088182) teaches ethanol production with distillation and molecular sieve. Sylvester et al (US 207/0144886) teaches ethanol production system. Vander Griend (US 7,297,236) teaches ethanol production system. Zaiser (US 10,220,371) teaches ethanol production system. Andrade (US 2019/0336882) teaches ethanol production system. Anderson (US 11,135,568) teaches ethanol production system. Righi (US 2023/0010850) teaches ethanol production system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN MILLER whose telephone number is (571)270-1603. The examiner can normally be reached Monday - Friday 9 - 5.
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/JONATHAN MILLER/Primary Examiner, Art Unit 1772