DETAILED ACTION
This action is in response to the initial filing dated 3/7/2025. Claims 1-27 are pending.
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 .
Information Disclosure Statement
The information disclosure statements filed 3/7/2025, 3/7/2025, 3/7/2025, 3/7/2025, 3/7/2025, 3/7/2025, 3/7/2025, 3/7/2025, 3/10/2025, and 6/17/2025 are acknowledged and have been considered by the examiner.
Several references on the information disclosure statement filed 3/7/2025 have been lined through for not including a date. These references include:
Non-Patent Literature Documents Citation Number 6 to “BT-750”;
Non-Patent Literature Documents Citation Number 14 to “Criterion; Top Bed Catalysts and Support”;
Non-Patent Literature Documents Citation Number 15 to “Crystaphase Products, Inc”.
A reference on the information disclosure statement filed 3/7/2025 has been amended to include the date. This reference includes:
Non-Patent Literature Documents Citation Number 11 has the dated added of “4/95”.
Several references on the information disclosure statement filed 3/7/2025 have been lined through for not including a date. These references include:
Non-Patent Literature Documents Citation Number 3 to “GKN Sinter Metals”;
Non-Patent Literature Documents Citation Number 6 to “Haldor Topsoe; Topsoe Graded Bed Solutions”;
Non-Patent Literature Documents Citation Number 8 to “HI-TECH CERAMICS”;
Non-Patent Literature Documents Citation Number 12 to “KOCH”;
Non-Patent Literature Documents Citation Number 17 to “Natural Food Foams”;
Non-Patent Literature Documents Citation Number 29 to “PETRO WARE, INCL; 86 Catalyst Support Media”;
Non-Patent Literature Documents Citation Number 34 to “RAUSCHERT”;
Non-Patent Literature Documents Citation Number 35 to “SAXONBURG CERAMICS INCORPORATED:”.
Drawings
The drawings were received on 3/7/2025. These drawings are not acceptable.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “one or more of the treating elements have a quasi ellipsoid shape” (claim 15), “one or more of the treating elements have a triaxial ellipsoid shape” (claim 16), “one or more of the treating elements have an oblate spheroid shape” (claim 17), “one or more of the treating elements have a prolate spheroid shape” (claim 18), “one or more of the treating elements have a briquette shape” (claim 19), “one or more of the treating elements have an asymmetrical spheroid shape” (claim 20), “one or more of the treating elements have an aspherical ellipsoid shape” (claim 21), “one or more of the treating elements have an aspherical ellipsoid shape” (claim 21), “one or more of the treating elements have at least one opening formed therein” (claim 22), “one or more of the treating elements have at least one opening formed therethrough” (claim 23), “one or more of the treating elements have one or more asperities formed on the surfaces thereof” (claim 24), and “wherein asperities comprise one or more of flutes, fins, struts, filaments, spikes or hairs” (claim 25) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 27 contains the following informalities:
Claim 27 recites the limitation “the treating elements s in” in line 9. It appears that the recitation should be “the treating elements in”.
Clarification and appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 10-13, 26 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pyzel (US 2006078).
Regarding claim 1, the Pyzel reference discloses the structure wherein one of ordinary skill in the art would perform the method of making and/or using a process vessel (see figure) in which flow from one or more streams is distributed through an upstream processing zone (3) and a downstream processing zone (5) within the process vessel, the upstream processing zone (3) and the downstream processing zone (5) each containing one or more beds of processing materials (a fine catalyst is provided in the layers 3 and 5; see col. 1, lines 45-52); and
passing the one or more streams (see flow lines in the figure that depict the streams) through a redistribution treating zone (4) located between the upstream processing zone and downstream processing zone (see figure), wherein the redistribution treating zone contains treating elements (a course catalyst is provided in the layer 4; see col. 1, lines 45-52) and wherein the redistribution treating zone mitigates stream channeling of the streams exiting the upstream processing zone and affects lateral redistribution of the flow of the one or more streams within the downstream processing zone (see figure; see also, col. 1, line 55 to col. 2, line 25).
In regards to claim 2, the Pyzel reference discloses wherein the redistribution treating zone is directly adjacent to the upstream processing zone (see figure for layer 4 being directly adjacent to layer 3) such that certain of the processing materials from the upstream processing zone are capable of migrating into the redistribution treating zone to create a combo-zone having both processing zone functionality and treating zone functionality (it is considered that the gas flow through the fine catalyst of layer 3 would carry some of the fine catalyst into the course catalyst layer 4; see also col. 1, lines 31-34).
In regards to claim 4, the Pyzel reference discloses there is no physical equipment disposed in the vessel between the upstream processing zone and the downstream redistribution treating zone (see figure).
In regards to claim 10, the Pyzel reference discloses wherein the redistribution treating zone (layer 4) contains a plurality of treating elements (it is considered that the particles of the course catalyst of layer 4 constitute a plurality of treating elements).
In regards to claim 11, the Pyzel reference discloses wherein the treating elements are individual treating elements (it is considered that each particle of the course catalyst layer 4 constitutes an individual treating element).
In regards to claim 12, the Pyzel reference discloses wherein the individual treating elements are form fitted to the interior dimensions of the bed vessel (the elements of the course catalyst layer 4 fit within the bed layer as depicted in the figure).
In regards to claim 13, the Pyzel reference discloses wherein the treating elements are randomly-packed treating elements (it is considered that the elements of the course catalyst layer 4 are placed and packed within the bed layer as depicted in the figure).
Regarding claim 26, the Pyzel reference discloses the structure wherein one of ordinary skill in the art would perform the method of making and/or using a process vessel (see figure) in which flow from one or more streams is distributed through at least two processing zones (3, 5) containing beds of solid processing materials (a fine catalyst is provided in the layers 3 and 5; see col. 1, lines 45-52) disposed therein;
disposing at least one redistribution treating zone (4) between the processing zones (see figure), the redistribution treating zone containing a plurality of treating elements (a course catalyst is provided in the layer 4; see col. 1, lines 45-52) operable to mitigate stream channeling and to redistribute the flow of streams thru the redistribution treating zone (see at least col. 1, line 55 to col. 2, line 25), wherein the processing materials are commingling with the treating elements in the redistribution treating zone to form a combo-zone with both processing materials and treating elements (it is considered that the gas flow through the fine catalyst of layer 3 would carry some of the fine catalyst into the course catalyst layer 4; see also col. 1, lines 31-34).
Regarding claim 27, the Pyzel reference discloses the structure wherein one of ordinary skill in the art would perform the method of making and/or using a process vessel (see figure) in which flow from one or more streams is distributed through at least two processing zones (3, 5) containing beds of solid processing materials (a fine catalyst is provided in the layers 3 and 5; see col. 1, lines 45-52) disposed therein;
disposing at least one redistribution treating zone (4) between the processing zones (see figure), the redistribution treating zone containing a plurality of treating elements (a course catalyst is provided in the layer 4; see col. 1, lines 45-52) operable to mitigate stream channeling and to redistribute the flow of streams thru the redistribution treating zone (see figure; see also, col. 1, line 55 to col. 2, line 25), wherein the processing materials in the processing zone disposed upstream of the redistribution treating zone are capable of migrating into the redistribution treating zone and commingling with the treating elements in the redistribution treating zone to form a combo-zone with both processing materials and treating elements (it is considered that the gas flow through the fine catalyst of layer 3 would carry some of the fine catalyst into the course catalyst layer 4; see also col. 1, lines 31-34).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pyzel (US 2006078) in view of Lee et al. (US Pre-Grant Publication 2003/0056649 A1).
In regards to claim 3, the Pyzel reference discloses wherein the redistribution treating zone (4) is directly adjacent to the upstream processing zone (3).
The Pyzel reference does not disclose wherein a permeable membrane is disposed between the redistribution treating zone and the upstream processing zone such that the processing materials from the upstream processing zone cannot migrate into the redistribution treating zone but the stream flow may pass through the membrane.
However, the Lee et al. reference teaches a process vessel (1) having a porous membrane (flexible porous basket 13) having an inlet (9) and an outlet (15) and a redistribution treating zone (19) located adjacent an upstream processing zone (11) wherein a flexible porous basket (13) is located between the upstream processing zone and the redistribution treating zone in order to prevent the co-mingling of the materials of the upstream processing zone (11) and the redistribution treating zone (19) (see paragraph [0053]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to provide a porous membrane between the upstream processing zone and the redistribution treating zone of the Pyzel reference as taught by the Lee et al. reference in order to prevent the co-mingling of the materials of the upstream processing zone and the redistribution treating zone and to maintain the materials of the layers in the desired location.
Claim(s) 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pyzel (US 2006078).
In regards to claim 5, the Pyzel reference discloses the structure wherein the processing materials (the materials of the fine catalyst layer 3) would migrate into the layer of treating elements (the materials of the course catalyst layer 4) contained in the redistribution layer (it is considered that the gas flow through the fine catalyst of layer 3 would carry some of the fine catalyst into the course catalyst layer 4; see also col. 1, lines 31-34).
The Pyzel reference does not expressly disclose wherein the processing materials migrate to a depth of a few inches into the layer of treating elements contained in the redistribution treating zone.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the processing materials of the Pyzel reference to migrate to a depth of a few inches into the layer of treating elements contained in the redistribution treating zone since it has been held that “where the only different between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the processing materials would migrate to the depth of a few inches into the layer of treating elements contained in the redistribution treating zone based on the sizes of the processing materials (the materials of the fine catalyst layer) and the treating elements of the redistribution treating zone (the materials of the course catalyst layer) and would function appropriately having the claimed migration.
In regards to claim 6, the Pyzel reference discloses the structure wherein the processing materials (the materials of the fine catalyst layer 3) would migrate into the layer of treating elements (the materials of the course catalyst layer 4) contained in the redistribution layer (it is considered that the gas flow through the fine catalyst of layer 3 would carry some of the fine catalyst into the course catalyst layer 4; see also col. 1, lines 31-34).
The Pyzel reference does not expressly disclose wherein the processing materials occupy at least 20% of the volume of that portion of the layer of treating elements contained in the redistribution treating zone into which the processing materials have migrated.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the processing materials of the Pyzel reference to occupy at least 20% of the volume of that portion of the layer of treating elements contained in the redistribution treating zone into which the processing materials have migrated since it has been held that “where the only different between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the processing materials would migrate into the redistribution treating layer to occupy at least 20% of the volume of that portion of the layer of treating elements contained in the redistribution treating zone based on the sizes of the processing materials (the materials of the fine catalyst layer) and the treating elements of the redistribution treating zone (the materials of the course catalyst layer) and would function appropriately having the claimed migration.
In regards to claims 7-9, the Pyzel reference discloses the structure wherein the redistribution treating zone has a depth (see at least the figure).
The Pyzel reference does not expressly disclose wherein the depth of the redistribution treating zone has a depth of one foot or less, a depth of two feet or less, or a depth of four feet or less.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to design the redistribution treating zone of the Pyzel reference as having a depth of one foot or less (considered to encompass both a depth of two feet or less and a depth of four feet or less) since it has been held that “where the only different between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the depth of the redistribution treating zone being one foot or less would not operate differently based on the sizing of the process vessel and would still permit the one or more streams to be distributed to the downstream processing zone as desired and would function appropriately having the claimed depth.
Claim(s) 14-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pyzel (US 2006078) in view of Glover et al. (US Pre-Grant Publication 2004/0225085 A1).
In regards to claim 14, the Pyzel reference does not disclose wherein one or more of the treating elements are ceramic reticulates.
However, the Glover et al. reference teaches a process vessel (22) having a redistribution treating layer (considered the layer having filter elements 15) having treating elements made of a ceramic material (see paragraph [0050]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to make the treating elements of the Pyzel reference as a ceramic reticulates as taught by the Glover et al. reference in order to provide a desired interaction based on the material properties between the one or more streams and the treating elements.
In regards to claims 15-21, the Pyzel reference does not expressly disclose the shape of the treating elements to be a quasi ellipsoid shape, a triaxial ellipsoid shape, an oblate spheroid shape, a prolate spheroid shape, a briquette shape, an asymmetrical spheroid shape, or an aspherical ellipsoid shape.
However, the Glover et al. reference teaches a process vessel (22) having a redistribution treating layer (considered the layer having filter elements 15) having treating elements that can be of various shapes including three dimensional bodies including substantially spherical shaped balls (FIG. 4), raschig rings (FIG. 10), saddle shaped pieces (FIG. 9), cubes (FIG. 18), rectangular shaped pieces (FIG. 13), trapezoidal shaped pieces (FIG. 14), dodecahedral shaped pieces (FIG. 15), rhomboidal shaped pieces (FIG. 16), conical shaped pieces (FIG. 17), briquette shaped pieces (FIG. 12), hollow cylinders (FIG. 6), cylinders (FIG. 5), and disks (FIG. 8). Sizes for the shapes used can include substantially spherical balls of about 1/8 to 2-inch diameters; monoliths with widths of about 1/8 to 2-inches and lengths of about 1/8 to 2-inches; bodies with widths of about 1/8 to 2-inches and lengths of about 1/8 to 2-inches; raschig rings with inside diameters of about 1/8 to 1 inch and outside diameters of about 1/4 to 11/2 inches, and heights of about 1/4 to 2 inches; saddle shapes with radii of about 1/4 to 2 inches; hollow cylinders having inside diameters of about 1/8 to 11/4 inches, outside diameters of about 1/4 to 2 inches, and heights of about 1/4 to 3 inches; and cylinders having diameters of about 1/8 to 1 inch and heights of about 1/4 to 2 inches (see paragraph [0052]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to design the shape of the treating elements of the Pyzel reference as any of a quasi ellipsoid shape, a triaxial ellipsoid shape, an oblate spheroid shape, a prolate spheroid shape, a briquette shape, an asymmetrical spheroid shape, or an aspherical ellipsoid shape as taught by the Glover et al. reference in order to obtain a desired treating surface of the treating elements to obtain a desired interaction of the treating elements with the one or more streams.
In regards to claims 22-23, the Pyzel reference does not disclose wherein the treating element having at least one opening formed therein or at least one opening formed therethrough.
However, the Glover et al. reference teaches a process vessel (22) having a redistribution treating layer (considered the layer having filter elements 15) having treating elements that can include a random pattern of openings or passageways or a more uniform pattern of openings or passageways (see paragraph [0046]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to design the shape of the treating elements of the Pyzel reference to include at least one opening formed therein or at least one opening formed therethrough as taught by the Glover et al. reference in order to obtain a desired treating surface of the treating elements to obtain a desired interaction of the treating elements with the one or more streams.
In regards to claims 24-25, the Pyzel reference does not disclose wherein one or more of the treating elements have one or more asperities formed on the surfaces thereof and wherein asperities comprise one or more of flutes, fins, struts, filaments, spikes or hairs.
However, the Glover et al. reference teaches a process vessel (22) having a redistribution treating layer (considered the layer having filter elements 15) having treating elements that can include a flute (it is considered that the groove inn the saddle of the treating element depicted in figure 9 constitutes a flute).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to design the shape of the treating elements of the Pyzel reference to include one or more flutes as taught by the Glover et al. reference in order to obtain a desired treating surface of the treating elements to obtain a desired interaction of the treating elements with the one or more streams.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-27 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-27 of copending Application No. 19/076,710 (reference application).
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 3, 6, 9-11 and 13-25 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 4-20 of prior U.S. Patent No. 9,732,774. This is a statutory double patenting rejection.
Claim 3 of the instant Application is claimed in claim 4 of U.S. Patent No. 9,732,774.
Claim 6 of the instant Application is claimed in claim 20 of U.S. Patent No. 9,732,774.
Claim 9 of the instant Application is claimed in claim 1 of U.S. Patent No. 9,732,774.
Claim 10 of the instant Application is claimed in claim 5 of U.S. Patent No. 9,732,774.
Claim 11 of the instant Application is claimed in claim 6 of U.S. Patent No. 9,732,774.
Claim 13 of the instant Application is claimed in claim 7 of U.S. Patent No. 9,732,774.
Claim 14 of the instant Application is claimed in claim 8 of U.S. Patent No. 9,732,774.
Claim 15 of the instant Application is claimed in claim 9 of U.S. Patent No. 9,732,774.
Claim 16 of the instant Application is claimed in claim 10 of U.S. Patent No. 9,732,774.
Claim 17 of the instant Application is claimed in claim 11 of U.S. Patent No. 9,732,774.
Claim 18 of the instant Application is claimed in claim 12 of U.S. Patent No. 9,732,774.
Claim 19 of the instant Application is claimed in claim 13 of U.S. Patent No. 9,732,774.
Claim 20 of the instant Application is claimed in claim 14 of U.S. Patent No. 9,732,774.
Claim 21 of the instant Application is claimed in claim 15 of U.S. Patent No. 9,732,774.
Claim 22 of the instant Application is claimed in claim 16 of U.S. Patent No. 9,732,774.
Claim 23 of the instant Application is claimed in claim 17 of U.S. Patent No. 9,732,774.
Claim 24 of the instant Application is claimed in claim 18 of U.S. Patent No. 9,732,774.
Claim 25 of the instant Application is claimed in claim 19 of U.S. Patent No. 9,732,774.
Claim 9 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 23 of prior U.S. Patent No. 10,161,428. This is a statutory double patenting rejection.
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, 2 and 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 20 of U.S. Patent No. 9,732,774.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3 and 20 of U.S. Patent No. 9,732,774 “anticipates” Application claims 1, 2 and 7-8. Accordingly, Application claims 1, 2, and 7-8 are not patentably distinct from Patent claims 1-3 and 20.
It is apparent that the more specific Patent claim 1 encompasses Application
claim 1. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 1 is anticipated by Patent claim 1 and since
anticipation is the epitome of obviousness, then Application claim 1 is obvious over
Patent claim 1.
It is apparent that the more specific Patent claim 20 encompasses Application
claim 2. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 2 is anticipated by Patent claim 20 and since
anticipation is the epitome of obviousness, then Application claim 2 is obvious over
Patent claim 20.
It is apparent that the more specific Patent claim 2 encompasses Application
claim 7. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 7 is anticipated by Patent claim 2 and since
anticipation is the epitome of obviousness, then Application claim 7 is obvious over
Patent claim 2.
It is apparent that the more specific Patent claim 3 encompasses Application
claim 8. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 8 is anticipated by Patent claim 3 and since
anticipation is the epitome of obviousness, then Application claim 8 is obvious over
Patent claim 3.
Claims 1-4, and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20, 23-26 and 28 of U.S. Patent No. 10,161,428.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 20, 23-26 and 28 of U.S. Patent No. 9,732,774 “anticipates” Application claims 1-4 and 6-8. Accordingly, Application claims 1-4, and 6-8 are not patentably distinct from Patent claims 20, 23-26 and 28.
It is apparent that the more specific Patent claim 23 encompasses Application
claim 1. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 1 is anticipated by Patent claim 23 and since
anticipation is the epitome of obviousness, then Application claim 1 is obvious over
Patent claim 23.
It is apparent that the more specific Patent claim 20 encompasses Application
claim 2. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 2 is anticipated by Patent claim 20 and since
anticipation is the epitome of obviousness, then Application claim 2 is obvious over
Patent claim 20.
It is apparent that the more specific Patent claim 26 encompasses Application
claim 3. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 3 is anticipated by Patent claim 26 and since
anticipation is the epitome of obviousness, then Application claim 3 is obvious over
Patent claim 26.
It is apparent that the more specific Patent claim 28 encompasses Application
claim 6. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 6 is anticipated by Patent claim 28 and since
anticipation is the epitome of obviousness, then Application claim 6 is obvious over
Patent claim 28.
It is apparent that the more specific Patent claim 24 encompasses Application
claim 7. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 7 is anticipated by Patent claim 24 and since
anticipation is the epitome of obviousness, then Application claim 7 is obvious over
Patent claim 24.
It is apparent that the more specific Patent claim 25 encompasses Application
claim 8. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 8 is anticipated by Patent claim 25 and since
anticipation is the epitome of obviousness, then Application claim 8 is obvious over
Patent claim 25.
Claims 1-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 12,247,596.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-27 of U.S. Patent No. 9,732,774 “anticipates” Application claims 1-27. Accordingly, Application claims 1-27 are not patentably distinct from Patent claims 1-27.
It is apparent that the more specific Patent claim 1 encompasses Application
claim 1. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 1 is anticipated by Patent claim 1 and since
anticipation is the epitome of obviousness, then Application claim 1 is obvious over
Patent claim 1.
Similarly, Application claims 2-25 are rejected on the grounds of nonstatutory double patenting as being unpatentable over Patent claims 2-25, respectively.
It is apparent that the more specific Patent claim 26 encompasses Application
claim 26. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 26 is anticipated by Patent claim 26 and since
anticipation is the epitome of obviousness, then Application claim 26 is obvious over
Patent claim 26.
It is apparent that the more specific Patent claim 27 encompasses Application
claim 27. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 27 is anticipated by Patent claim 27 and since
anticipation is the epitome of obviousness, then Application claim 27 is obvious over
Patent claim 27.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew J. Rost whose telephone number is (571) 272-2711. The examiner can normally be reached on Monday-Friday from 8:00 am to 4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached at 571-272-3607 or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/ANDREW J ROST/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
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