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 .
Response to Arguments
Applicant’s arguments, see Page 2, line 6 - Page 5, line 12 of Remarks, filed May 27th, 2026, with respect to claims 1, 5-7, 9, 11, 19, 33, 39, and 46-48 have been fully considered and are persuasive. As Applicant argues convincingly on Page 4, lines 4-6 of Remarks, filed May 27th, 2026, the fifth stream 28 of James does not combine with the first stream and the second stream. While a portion of the fifth stream 28 of James becomes recycle acid stream 34 and is directed to streams 31, 36, and 37, (James, Fig. 1, Col. 5, lines 1-3,) stream 37 is discharged and does not combine with the first stream 1 and the second stream 6 in the combustion furnace 7. The rejection of claims 1, 5-7, 9, 11, 19, 33, 39, and 46-48 under 35 U.S.C. 102(a)(1) has been withdrawn.
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 1, 17, 19, 33, 39-40, 46, and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,297,106 (“‘106”). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claims 1-30 of ‘106 overlap with the scope of each of instant claims 1, 17, 19, 33, 39-40, 46, and 48.
Allowable Subject Matter
Claims 2-7, 9-11, 14, 41, and 47 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.
Claims 1, 17, 19, 33, 39-40, 46, and 48 would be allowable if the Double Patenting rejection of record were overcome.
The following is a statement of reasons for the indication of allowable subject matter: James (U.S. 3,455,652), Steinrotter (U.S. 4,010,246 A), Sprouse (U.S. 5,306,577), Hakala (U.S. 2,849,496), Shapleigh (U.S. 1,605,004), Anderson (U.S. 2006/0129016), Stiles (U.S. 2,862,791), McAlister (U.S. 2003/0012985 A1), Milam (U.S. 2013/0123556 A1), Watson (EP 0218411 A1), and Guth (U.S. 3,803,297, 1974) are considered to be the closest prior art to the instant claims.
Regarding claim 1, James teaches a method of producing a product (James, Col. 1, line 38, sulfur trioxide and sulfuric acid), the method comprising:
providing a first stream comprising oxygen (James, Fig. 1, Col. 1, lines 41-42, oxygen-containing gas stream; Col. 3, line 21, oxygen-containing gas stream 1);
providing a second stream comprising sulfur (James, Fig. 1, Col. 1, lines 40-41, sulfur-containing feed stream; Col. 3, line 42, sulfur-containing feed stream 6);
contacting the first stream and the second stream to produce a third stream, the third stream comprising sulfur dioxide (James, Fig. 1, Col. 3, lines 50-55), wherein the contacting of the first stream and the second stream comprises contacting a molar amount of oxygen that exceeds a molar amount of sulfur (James, Fig. 1, Col. 3, line 54, excess free oxygen); and
subjecting the third stream to an oxidation reaction to produce a fourth stream (James, Fig. 1, Col. 3, line 73 – Col. 4, line 1, process gas stream 11), the fourth stream comprising sulfur trioxide (James, Col. 4, line 1);
separating the fourth stream into (i) a fifth stream comprising gaseous sulfur trioxide, oxygen, or a combination thereof (James, Fig. 1, Col. 4, lines 55-57, stream 28, and (ii) a sixth stream comprising liquid sulfur trioxide (James, Fig. 1, Col. 4, lines 52-54, liquid sulfur trioxide stream 27); and
recycling the fifth stream (James, Col. 4, line 55 – Col. 5, line 5, recycle acid stream 34).
However, as Applicant argues in Remarks, filed May 27th, 2026, James does not teach either of the following recited limitations with respect to recycling the fifth stream (see Response to Arguments above):
contacting the first stream and the second stream in the presence of at least a portion of the fifth stream, or
contacting the second stream and at least a portion of the fifth stream to produce a modified second stream, wherein the contacting of the first stream and the second stream comprises contacting the first stream and the modified second stream.
Guth teaches recycling of combustion-derived SO3 into a sulfur combustion chamber (Guth, Col. 4, lines 1-4), but this is done with the express design of being coupled with a substoichiometric quantity of oxygen to decrease the reaction temperature to a permissible level (Guth, Col. 4, lines 1-10). Integrating Guth’s SO3 recycling into James’ method which uses excess oxygen would negate the benefits of doing so as taught by Guth. As none of the cited prior art references teach or suggest recycling the fifth (sulfur trioxide-containing) stream into the combustion reactor of sulfur with oxygen with oxygen in stoichiometric excess with a reasonable expectation of success, the claim contains allowable subject matter.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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