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
Claim 1 is pending.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 is objected to because “value” instead of “valve” is recited in lines 9 and 16. Appropriate correction is required.
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 1 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.
With respect to claim 1, the limitations are rendered indefinite, as the pressure conditions within the charging system are defined with respect to the operating pressure of a high-pressure reactor; however, the high-pressure reactor does not appear to be part of the claimed system, even though the charging uses energy from the high-pressure reactor as recited in the preamble limitations, and the vessel receives air from the high-pressure reactor into the second air pocket. Additionally, whether or not a pressure is considered to be at a lower or higher pressure than the operating pressure of the high-pressure reactor (see second clause of claim 1 is also unclear because "high-pressure" (reactor and gas from the reactor) contains a relative term that is not defined by the claims ("high"). The Specification discloses that the reactor is a supercritical water oxidation reactor that is operated at a temperatures above 374°C and pressures above 3210 psi (Paragraph [0039]). These are the pressure conditions and type of reactor that will be interpreted as meeting the limitations of "high-pressure reactor", as there do not appear to be other embodiments of the reactor discussed in the Specification.
The Examiner also suggests actively reciting the reactor in the system claim body to overcome this rejection, as reciting comparative pressures in the vessel to a reactor which is not part of the system is unclear. Actively reciting a reactor that operates at temperatures above 374°C and pressures above 3210 psi has the added benefit of more clearly distinguishing over the Coney reference cited on the IDS and in the ISR/Written Opinion of corresponding International Application PCT/US2021/070227.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,084,365. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of instant claim 1 is encompassed by the scope of claim 1 of Patent (‘365).
With respect to instant claim 1, claim 1 of Patent (‘365) recites the charging system in its entirety, the first difference being that in instant claim 1 “high-pressure rector” corresponds to the “oxidation reactor” as recited in claim 1 of Patent (‘365). The limitations “high-pressure reactor” of claim 1 are rejected under 35 USC 112(b) for the use of the relative term “high” and are interpreted as being consistent with an oxidation reactor (see above).
Instant claim 1 recites “values” in lines 9 and 16, which are interpreted as meaning “valves”, as consistent with the parent application from which Patent (‘365) issued.
Lastly, instant claim 1 recites “high pressure gas” in lines 12 and 20, while claim 1 of Patent (‘365) recites gas in these instances; however, these limitations are indefinite, as discussed above, and furthermore, it has been held that any differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters, including pressure.
The Examiner advises careful amendment to claim 1 to overcome the 112(b) issues raised above: if Applicant amends instant claim 1 in the same manner as claim 1 of the parent application 17/249,505, the instant claims will be subject to a Statutory Double Patenting rejection.
Allowable Subject Matter
Claim 1 is allowed pending resolution of the claim objections, the 112(b) rejections, and the Double Patenting rejection set forth above, as none of the prior art teaches that system for charging a reactor as recited in claim 1.
The Examiner acknowledges the Coney reference (cited in the International Search Report and Written Opinion of the International Search Authority in PCT/US2021/070227), which teaches a liquid slug within a vessel 2 with first and second air pockets, as well as a plurality of valves (Fig. 2 embodiment); however, Coney does not teach that the vessel 2 receives high-high pressure gas from a high-pressure reactor according to the interpretation made in the above 112(b) rejections. Coney does not teach a reactor at all; not the recited controller.
Kershaw, also cited in the Written Opinion of the international application, teaches liquid slug 50 within a vessel, receiving charge gas and high-pressure gas in the air pocket S (Column 7, line 49 through Column 8, line 2; Fig. 3, items 54 and 58), injecting pressurized gas from pocket S into pressure vessel 11 ("reactor"), but does not teach a second air pocket, and the claims differ from Kershaw in that in (b) the high-pressure gas is received in the second air pocket and not the first, and in that the charge gas is injected in the same high-pressure reactor from which the high-pressure gas of (b) is received and not to another pressure vessel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 08 October 2026
