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 1-20 are pending. This is the first office action on the merits.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “10” and “15” in Fig. 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-4, 6-15, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,718,795 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the reference claims are directed to methods for producing fuel comprising C10-C18 alkanes, the methods comprising essentially the same process steps, including: hydrolysis of a primary feedstock comprising biologically-derived triglycerides and catalyst poisons, in the presence of water, in a first reaction chamber to produce (i) an aqueous fraction comprising glycerol and a first portion of the catalyst poisons and (ii) an intermediate feedstock fraction comprising a second portion of the catalyst poisons and free fatty acids; separation of the intermediate feedstock fraction from the hydrolysis effluent; distillation of the intermediate feedstock fraction to form a purified intermediate feedstock comprising free fatty acids and a bottom stream containing unreacted triglycerides, diglyceride, monoglyceride, free fatty acids, and remaining catalyst poisons; and hydrotreatment of the purified intermediate feedstock in a second reaction chamber comprising hydrogen and a metallic catalyst to produce fuel comprising C10 to C18 alkanes. The instant claims, particularly claims 1, 7, 11, and 12, differ from the reference claims in that they specify a source (SMR system) of water and hydrogen to be used in the hydrolysis and hydrotreatment, respectively. The reference claims are silent regarding the source of the water and hydrogen. However, the sources of the reactants do not appear to be critical in the instant invention, because (i) no unexpected results or benefits of using water or hydrogen originating from an SMR system have been shown, (ii) the reference claims do not restrict the source of the water or hydrogen, i.e., they encompass the use of water and hydrogen obtained from any suitable source, and (iii) one of ordinary skill in the art would reasonably expect that operating the method of the reference claims using water and hydrogen from any sources would yield the same result as the claimed invention, absent evidence to the contrary. Therefore, the instant claims are not patentably distinct from the reference claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,773,332 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the reference claims are directed to methods for producing fuel comprising C10-C18 alkanes, the methods comprising essentially the same process steps, including: hydrolysis of a primary feedstock comprising biologically-derived triglycerides and catalyst poisons, in the presence of water, in a first reaction chamber to produce (i) an aqueous fraction comprising glycerol and a first portion of the catalyst poisons and (ii) an intermediate feedstock fraction comprising a second portion of the catalyst poisons and free fatty acids; separation of the intermediate feedstock fraction from the hydrolysis effluent; distillation of the intermediate feedstock fraction to form a purified intermediate feedstock comprising free fatty acids and a bottom stream containing unreacted triglycerides, diglyceride, monoglyceride, free fatty acids, and remaining catalyst poisons; and hydrotreatment of the purified intermediate feedstock in a second reaction chamber comprising hydrogen and a metallic catalyst to produce fuel comprising C10 to C18 alkanes. The instant claims, particularly claims 1, 7, 11, and 12, differ from the reference claims in that they specify a source (SMR system) of water and hydrogen to be used in the hydrolysis and hydrotreatment, respectively. The reference claims are silent regarding the source of the water and hydrogen. However, the sources of the reactants do not appear to be critical in the instant invention, because (i) no unexpected results or benefits of using water or hydrogen originating from an SMR system have been shown, (ii) the reference claims do not restrict the source of the water or hydrogen, i.e., they encompass the use of water and hydrogen obtained from any suitable source, and (iii) one of ordinary skill in the art would reasonably expect that operating the method of the reference claims using water and hydrogen from any sources would yield the same result as the claimed invention, absent evidence to the contrary. Therefore, the instant claims are not patentably distinct from the reference claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,146,110 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims are directed to an apparatus that is capable of conducting essentially all of the process steps recited in the instant claims, the steps including: hydrolysis of a primary feedstock comprising biologically-derived triglycerides and catalyst poisons, in the presence of water, in a first reaction chamber to produce (i) an aqueous fraction comprising glycerol and a first portion of the catalyst poisons and (ii) an intermediate feedstock fraction comprising a second portion of the catalyst poisons and free fatty acids; separation of the intermediate feedstock fraction from the hydrolysis effluent; distillation of the intermediate feedstock fraction to form a purified intermediate feedstock comprising free fatty acids and a bottom stream containing unreacted triglycerides, diglyceride, monoglyceride, free fatty acids, and remaining catalyst poisons; and hydrotreatment of the purified intermediate feedstock in a second reaction chamber comprising hydrogen and a metallic catalyst to produce fuel comprising C10 to C18 alkanes. The instant claims, particularly claims 1, 7, 11, and 12, differ from the reference claims in that they specify a source (SMR system) of water and hydrogen to be used in the hydrolysis and hydrotreatment, respectively. The reference claims are silent regarding the source of the water and hydrogen. However, the sources of the reactants do not appear to be critical in the instant invention, because (i) no unexpected results or benefits of using water or hydrogen originating from an SMR system have been shown, (ii) the reference claims do not restrict the source of the water or hydrogen, i.e., they encompass the use of water and hydrogen obtained from any suitable source, and (iii) one of ordinary skill in the art would reasonably expect that operating the method of the reference claims using water and hydrogen from any sources would yield the same result as the claimed invention, absent evidence to the contrary. Therefore, the instant claims are not patentably distinct from the reference claims.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON Y CHONG/Examiner, Art Unit 1772
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