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 .
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 2, 3, 9-11, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,172,890. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a process for producing nitrogen tetroxide starting from the reaction of copper and nitric oxide to produce a mixture comprising nitrogen dioxide, applying oxygen to convert nitric oxide into nitrogen dioxide, removing impurities, and condensing (dimerizing) nitrogen dioxide to produce nitrogen tetroxide. The difference is that the instant claims do not expressly recite formation of a reaction slurry and desorption of gas from the slurry; the claims in the ‘890 patent do not expressly recite refluxing the nitrogen tetroxide.
In both sets of claims, the primary reactions are the same, i.e., reacting copper and nitric acid to produce nitrogen dioxide, converting nitrogen oxide in the reaction mixture to produce more nitrogen dioxide, and condensing nitrogen dioxide to produce nitrogen tetroxide. Any specific parameters or steps not specifically or not fully recited in one claim set or the other does not render the claim sets patentably distinction since both sets of claims describe a method “comprising” the listed steps. In other words, both sets of claims use open-ended language. Therefore, any steps not expressly recited in the instant claims, or in the claims in the ‘890 patent, are not precluded from the method claimed. Therefore, the instant claims are rendered obvious by the claims of the ‘890 patent.
Claims 2-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-13 of U.S. Patent No. 11,208,326. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a process for producing nitrogen tetroxide starting from the reaction of copper and nitric oxide to produce a mixture comprising nitrogen dioxide, applying oxygen to convert nitric oxide into nitrogen dioxide, removing impurities, and condensing (dimerizing) nitrogen dioxide to produce nitrogen tetroxide.
The independent claim in the ‘326 patent includes parameters and steps not expressly recited in the claims of the instant independent claim. This is not a patentable distinction because dependent claims in the present invention include the missing limitations. Any steps or parameters recited in the claims of the ‘326 patent that are not expressly recited in the instant claims are not precluded from the method of the present invention due to the open-ended language used in the instant independent claim. Therefore, the instant claims are obvious over the claims of the ‘326 patent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
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