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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-18, drawn to a method of operating an oxidative dehydrogenation reactor system.
Group II, claims 19-26, drawn to an oxidative dehydrogenation reactor system.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a reactor system comprising a shell and tube reactor with three cooling section suitable for the oxidative dehydrogenation of ethane, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Bos et al. (US 11,401,220 B2). In particular, Bos teaches a reaction system for operating oxidative dehydrogenation of ethane, the system comprising: an ODH reactor comprising a first cooling section and a second cooling section, wherein the reactor is a multi-tubular fixed bed reactor, and wherein the reactor is configured to flow a first coolant and a second coolant into the first cooling section and the second cooling section, respectively (col. 9, line 42 – col. 10, line 35).
During a telephone conversation with Michael Krawzsenek on 07/02/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-26 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 103
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.
Claims 1-6 and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Bos et al. (US 11,401,220 B2, a US equivalent of WO 2017/144584 cited in IDS dated 10/29/2024).
Regarding claim 1, Bos teaches a process for the oxidative dehydrogenation of an C2-C6 alkane, the process comprising:
providing a feed comprising ethane, oxygen, and a diluent (steam or an inert gas) to a tube side of an oxidative dehydrogenation (ODH) reactor (Fig. 1, 1) that is a multi-tubular reactor having the tube side (6) and a shell side, wherein the ODH reactor comprises a first cooling section (14) and a second cooling section (24) (col. 8, lines 23-36; col. 9, line 27 – col. 10, line 13);
dehydrogenating ethane to ethylene in the feed via ODH catalyst (11, 21) on the tube side (col. 9, lines 4-8 and 61-64);
flowing a first coolant through the shell side in the first cooling section (col. 10, lines 7-11); and
flowing a second coolant through the shell side in the second cooling section (col. 10, lines 7-11).
Bos does not explicitly teach: maintaining the reaction mixture in the first cooling section at a first temperature, maintaining the reaction mixture in the second cooling section at a second temperature, wherein the first temperature is lower than the second temperature; and maintaining temperature increases of the first coolant and the second coolant at below a first threshold and a second threshold, respectively.
However, Bos teaches that the temperatures of the coolants supplied to the first and second cooling sections are selected such that the catalyst beds have the desired activity (col. 7, lines 39-43). Thus, Bos is interpreted to suggest maintaining the reaction mixture in the first and second cooling sections at desired temperature conditions and maintaining temperature increases of the first coolant and the second coolant at below desired thresholds, in order to maintain the reaction mixture at the desired temperature conditions. With regard to the limitation “wherein the first temperature is lower than the second temperature,” it would have been obvious for one of ordinary skill in the art to arrive at the claimed limitation through routine optimization. In particular, given that the reaction is exothermic, one of ordinary skill in the art would expect the temperature to increase in the flow direction. It is well established that discovering optimum or workable ranges by routine experimentation is not considered an inventive step when the general conditions of a claim are disclosed in the prior art. MPEP 21144.05 II.
Regarding claim 2, Bos further teaches that the coolant temperatures at the inlets to the first cooling section and to the second cooling section may be 250°C to 400°C and 300°C to 500°C, respectively (col. 7, line 61 – col. 8, line 2; see also cl. 3 and cl. 9). Bos discloses that the temperature of the catalyst bed may typically exceed that of the coolant by 1-30°C (col. 7, lines 48-53). Therefore, the claimed ranges for the first temperature and the second temperature of “300°C to 450°C” and “350°C to 500°C,” respectively, are considered to overlap with the corresponding temperature ranges taught by Bos and are considered prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05. I.
Bos does not explicitly teach that the temperature increases of the first and second coolants are each maintained at a threshold in a range of 2°C to 8°C. However, it is generally known in the art that temperature increase in oxidative dehydrogenation is an indicator of hot spots, which may cause side reactions, thermal runaway, and/or catalyst deactivation. Therefore, one would have been motivated to optimize the reaction parameters to operate the process without temperature increase, and it would have been obvious to one of ordinary skill in the art to arrive at the claimed range of “2°C to 8°C” by routine experimentation.
Bos further teaches that the coolants may comprise molten salt and that the diluent may comprise steam (col. 7, lines 28-31; col. 8, lines 31-36).
Regarding claim 3, Bos teaches discharging an effluent from the ODH reactor, the effluent comprising ethylene, acetic acid, water, carbon dioxide, and carbon monoxide, wherein the ODH reactor comprises a flow barrier (Fig. 1, 5) on the shell side separating the first cooling section and the second cooling section such that the first coolant and the second coolant do not combine on the shell side (col. 9, lines 4-26 and 42-61).
Bos further teaches heating water with the first coolant and/or the second coolant (col. 7, lines 35-38).
Regarding claim 4, Bos teaches heating water with the first coolant and/or the second coolant to generate steam (col. 7, lines 35-38).
Regarding claim 5, Bos teaches heating water with the first coolant and/or the second coolant to generate steam, wherein the water is boiler feed water (col. 7, lines 35-38).
Regarding claim 6, Bos further teaches discharging an effluent from the ODH reactor, the effluent comprising ethylene, acetic acid, water, carbon dioxide, and carbon monoxide, wherein the second cooling section is operationally downstream of the first cooling section in flow direction of the reaction mixture, and wherein the second cooling section is separated from the first cooling section by a flow barrier (Fig. 1, 5) on the shell side (col. 9, lines 4-26 and 42-64).
Regarding claim 9, Bos teaches a process for the oxidative dehydrogenation of an C2-C6 alkane, the process comprising:
providing a feed comprising ethane, oxygen, and steam to a tube side of an oxidative dehydrogenation (ODH) reactor (Fig. 1, 1) that is a multi-tubular reactor having the tube side (6) and a shell side, wherein the ODH reactor comprises a first cooling section (14) and a second cooling section (24) arranged downstream of the first cooling section (col. 8, lines 23-36; col. 9, line 27 – col. 10, line 13);
dehydrogenating ethane to ethylene in the feed via ODH catalyst (11, 21) on the tube side (col. 9, lines 4-8 and 61-64);
flowing a first coolant through the shell side in the first cooling section (col. 10, lines 7-11); and
flowing a second coolant through the shell side in the second cooling section (col. 10, lines 7-11).
Bos does not explicitly teach maintaining the feed outside of flammability limits. However, one of ordinary skill in the art would have recognized that operating outside flammability limits is a matter of common sense and routine optimization in chemical engineering to prevent explosions, avoid thermal runaways, and/or control product selectivity.
Bos does not explicitly teach maintaining the reaction mixture in the first cooling section at a first temperature, maintaining the reaction mixture in the second cooling section at a second temperature, wherein the first temperature is lower than the second temperature; and maintaining temperature increases of the first coolant and the second coolant at below a first threshold and a second threshold, respectively.
However, Bos teaches that the temperatures of the coolants supplied to the first and second cooling sections are selected such that the catalyst beds have the desired activity (col. 7, lines 39-43). Thus, Bos is interpreted to suggest maintaining the reaction mixture in the first and second cooling sections at desired temperature conditions and maintaining temperature increases of the first coolant and the second coolant at below desired thresholds, in order to maintain the reaction mixture at the desired temperature conditions. With regard to the limitation “wherein the first temperature is lower than the second temperature,” it would have been obvious for one of ordinary skill in the art to arrive at the claimed limitation through routine optimization. In particular, given that the reaction is exothermic, one of ordinary skill in the art would expect the temperature to increase in the flow direction. It is well established that discovering optimum or workable ranges by routine experimentation is not considered an inventive step when the general conditions of a claim are disclosed in the prior art. MPEP 21144.05 II.
Regarding claim 10, Box teaches that the ODH reactor comprises a flow barrier (Fig. 1, 5) on the shell side separating the first cooling section and the second cooling section such that the first coolant and the second coolant do not combine on the shell side (col. 9, lines 4-26 and 42-61).
Bos further teaches that the coolant temperatures at the inlets to the first cooling section and to the second cooling section may be 250°C to 400°C and 300°C to 500°C, respectively (col. 7, line 61 – col. 8, line 2; see also cl. 3 and cl. 9). Bos discloses that the temperature of the catalyst bed may typically exceed that of the coolant by 1-30°C (col. 7, lines 48-53). Therefore, the claimed ranges for the first temperature and the second temperature of “300°C to 450°C” and “350°C to 500°C,” respectively, are considered to overlap with the corresponding temperature ranges taught by Bos and are considered prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05. I.
Bos does not explicitly teach that the temperature increases of the first and second coolants are each maintained at a threshold in a range of 2°C to 8°C. However, it is generally known in the art that temperature increase in oxidative dehydrogenation is an indicator of hot spots, which may cause side reactions, thermal runaway, and/or catalyst deactivation. Therefore, one would have been motivated to optimize the reaction parameters to operate the process without temperature increase, and it would have been obvious to one of ordinary skill in the art to arrive at the claimed range of “2°C to 8°C” by routine experimentation.
Bos further teaches that the feed may comprise steam (col. 8, lines 31-36).
Regarding claim 11, Bos recognizes that the oxidative dehydrogenation may produce carbon monoxide and carbon dioxide by-products (col. 1, lines 50-56; col. 8, lines 9-18). Thus, it would have been obvious for one of ordinary skill in the art to select optimal the temperature conditions, such as the claimed limitations, that would minimize side reactions producing carbon monoxide and carbon dioxide, since it is well established that discovering optimum or workable ranges by routine experimentation is not considered an inventive step when the general conditions of a claim are disclosed in the prior art. MPEP 21144.05 II.
Regarding claim 12, Bos recognizes that the oxidative dehydrogenation may produce acetic acid, carbon monoxide, carbon dioxide by-products (col. 1, lines 50-56; col. 8, lines 9-18; col. 9, lines 23-25).
Regarding claim 13, it would have been obvious to optimize the reaction parameters to maximize ethylene selectivity and simultaneously minimize the undesirable byproducts through routine experimentation, since it is well established that discovering optimum or workable ranges by routine experimentation is not considered an inventive step when the general conditions of a claim are disclosed in the prior art. MPEP 21144.05 II.
Regarding claim 14, Bos further teaches discharging an effluent from the ODH reactor, the effluent comprising ethylene, acetic acid, water, carbon dioxide, and carbon monoxide (col. 9, lines 4-26). It would have been obvious to operate the process such that the first temperature is maintained to be lower than the second temperature via routine optimization, as discussed above. In particular, given that the reaction is exothermic, one of ordinary skill in the art would expect the temperature to increase in the flow direction
Regarding claim 15, Bos teaches heating water with the first coolant and/or the second coolant to generate steam, wherein the water is boiler feed water (col. 7, lines 35-38).
The claimed step of maintaining temperature increases at below predetermined threshold values would have been obvious to one of ordinary skill in the art to avoid the undesirable formation of hot spots that cause side reactions, thermal runaway, and/or catalyst deactivation.
Regarding claim 16, Bos teaches heating water with the first coolant and/or the second coolant to generate steam, wherein the water is boiler feed water (col. 7, lines 35-38).
Regarding claim 17, Bos teaches that the reactor tubes may have an internal tube diameter of from 10 to 80 millimeters (col. 4, lines 49-53). It would have been obvious to one skilled in the art to optimize the diameter as to achieve a desired ethylene selectivity.
Regarding claim 18, Bos teaches that the reactor tubes may have an internal tube diameter of from 10 to 80 millimeters (col. 4, lines 49-53). The claimed diameter of 1.25 inch (31.75 mm) falls within the diameter range taught by Bos and is considered prima facie obvious. Bos does not explicitly teach a linear velocity of 150-500 cm/s and a gas hourly space velocity of 1,500-10,000 hr-1. However, it would have been obvious to one skilled in the art to arrive at the claimed limitations through routine optimization, since it is well established that discovering optimum or workable ranges by routine experimentation is not considered an inventive step when the general conditions of a claim are disclosed in the prior art. MPEP 21144.05 II.
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18,862,788 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims disclose each and every limitation of the instant claims, i.e., operating an oxidative dehydrogenation of ethane in a multi-tubular reactor comprising a tube side and a shell side, wherein the reactor comprises a first cooling section and a second cooling section; flowing a first coolant through the shell side in the first cooling section at a first temperature; and flowing a second coolant through the shell side in the second cooling section at a second temperature, wherein the first temperature is lower than the second temperature. The reference claims differ from the instant claims in that they recite two ODH reactors (“a first ODH reactor” and “a second ODH reactor”) arranged in series. However, the process steps regarding the first ODH reactor in the reference claims read on the process steps of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Schoonebeek et al. (US 10,752,564 B2, a US equivalent of WO 2018/019760 cited in IDS dated 10/29/2024) teach that the formation of hot spots in catalyst beds in oxidative dehydrogenation processes may increase the risk of a reactor runway (col. 2, lines 58-65; col. 10, lines 50-55).
Allowable Subject Matter
Claims 7-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter. No prior art of record, individually or in combination, teaches an oxidative dehydrogenation method in accordance with claim 1, in conjunction with the limitation of claim 7 that requires flowing a third coolant through the shell side in a third cooling section of the ODH reactor, thereby maintaining the reaction mixture on the tube side in the third cooling section at a third temperature, wherein the third cooling section is operationally downstream of the second cooling section in the flow direction and is separated from the second cooling section by a second flow barrier on the shell side, and wherein the third temperature is lower than the second temperature. Bos et al. (US 11,401,220 B2), applied in the above rejection, teaches that the application of two cooling sections allows for independent control of the catalyst bed temperature using the coolants supplied to the respective cooling sections (col. 7, lines 4-53). As discussed in the rejection, the second cooling section, downstream of the first cooling section, is expected to be at a higher temperature due to the exothermic nature of the oxidative dehydrogenation reaction. However, there is no sufficient hint or guidance which would have reasonably motivated one of ordinary skill in the art to modify Bos by having a third cooling section, downstream of the second cooling section, wherein the third cooling section is maintained at a lower temperature (the third temperature) than the second cooling section (the second temperature).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Y Chong whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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/JASON Y CHONG/Examiner, Art Unit 1772
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