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 .
Status of Claims
Claims 23-42, filed on 10/17/2024, are under consideration.
Examiner’s Notes
At first look, it was believed that the instant claims contained two groups of inventions: claims 23-29 directed to metathesis of C6 oligomers to decenes, and isomerizing the decenes to 1-decene with presence of photochemical irradiation, and claims 30-42 directed to metathesis of olefins to make internal olefins which are then isomerized with photochemical irradiation to make alpha-olefins with 4-19 carbons. The Attorney Mr. Todd Obijeski kindly elected claims 30-42 with traverse. However, after further review, the potential for election/restriction is withdrawn because the inventive concepts of metathesis and isomerization in presence of photochemical irradiation are included in both sets of claims.
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 23-25, 29, 30-31, 33-38, and 40-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-13 and 20 of U.S. Patent No. 12,151,993. Although the claims at issue are not identical, they are not patentably distinct from each other because:
For pending claim 23, the reference application in claim 10 recites the following: A process comprising: a) separating a composition comprising an oligomer product, the oligomer product comprising at least 85 mol % C6 olefins and at least 5 mol % C8+ olefins, into i) a first oligomer composition comprising C6 alkanes and at least 90 mol % C6 olefins, the C6 olefins comprising at least 90 mol % 1-hexene, and ii) a heavies stream comprising C8+ olefins; b) contacting a metathesis catalyst system with all or a portion of the first oligomer composition to form a first composition comprising C10 linear internal olefins; c) contacting all or a portion of the C10 linear internal olefins with a catalytic isomerization catalyst system in the presence of photochemical irradiation to form a second composition comprising 1-decene; and d) purifying the second composition to isolate a third composition comprising at least 90 mol % 1-decene.
The disclosed amount of at least 85 mol% C6 olefins in the oligomer product overlaps, and includes, the instantly claimed amount of at least 91 mol% C6 olefins. The reference application suggests amounts of up to 94 mol% C6 olefins (claims 11-13) which reads on pending claims 24-25 and 29.
For claims 30 and 37, the reference application (claim 20) teaches self-metathesis and/or cross metathesis of olefins to make metathesis product comprising internal olefins with 4-19 carbons, and then isomerizing the internal olefins to alpha olefins with isomerization in presence of photocatalytic irradiation. The disclosed types of olefins overlaps those recited in pending claims 31, 33-36, 38, and 40-42.
Allowable Subject Matter
Claims 26-28, 32 and 39 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: a search of metathesis and isomerization art did not locate a teaching or suggestion for methods that include metathesis of olefins to internal olefins, and isomerizing the internal olefins in presence of photochemical irradiation to provide alpha olefins.
US 2015/0141721 discloses isomerizing olefins to make internal olefins, and metathesis of the internal olefins to make desired olefins such as propene, butenes, or hexenes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI Z FADHEL whose telephone number is (571)270-0267. The examiner can normally be reached M-F 9am-6pm PST.
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/ALI Z FADHEL/Primary Examiner, Art Unit 1772
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