DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This application is in response a RCE filed on 01/27/2026.
Claims 1-17 and claims 19-20 are pending and under examination. Applicant has amended Claims 1, 6-7, 10 and claims 3-5, 14-17,19-20 are withdrawn as non-elected groups.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/27/2026 has been entered.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
5. Claims 1-2 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tompers et al. (US PGPUB No.: US2014/0128643A1).
Regarding Claims 1-2 and 6-13, Tompers teaches process for producing a catalyst for the oxychlorination of ethylene to 1,2-dichloroethane (paragraph 0017) and further, Tompers teaches a process for preparing a catalyst by impregnating a solution of CuCl2.2H2O (reads on copper), KCl (reads on potassium), MgCl2.6H2O (reads on magnesium) and MnCl2.4H2O on alumina support ([0054-0055]). Tompers discloses 0 to 2 wt% of potassium (paragraph 0019, which reads on greater than 0.5 wt% of potassium of claim 1, reads on claim 9 of total amount of potassium from 1.05 to 1.6 wt%, reads on claim 11 of greater than 0.25 wt%, reads on claim 12 of greater than 1.0 wt%), discloses about 2 to 8 wt% of copper (paragraph 0019, overlaps claimed range of copper of claim 1 and claim 6), 0.2 to 2.0 wt% of magnesium (paragraph 0019) and further comprising of rare earth metal upto 2.75 moles/kg (paragraphs 0041, 0054, i.e., La, Ce, Pr, would read on claim 7 for 0.25 to 1.6 wt% of magnesium and 0.5 to 2.25 wt% of rare earth metal-reads also on claims 1 and 13). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tompers differs from the instant claims 1 and 10-12 in that Tompers teaches a single step impregnation whereas the instant claimed process is drawn to a two-step impregnation and thus, the order of mixing the metal solutions in the impregnation steps are different. However MPEP § 2144.04 states that any order of mixing ingredients is one of the examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below.
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Therefore, the instantly claimed two-step impregnation process is prima facie obvious over the single-step impregnation process of Tompers.
The instant claims 1, 3, 8, 10-12 further recites the limitation “where a second solution is substantially devoid of potassium (i.e., alkali metal)” and the specification defines the limitation in [0035] as the concentration of any alkali metal (i.e., potassium), or alkali metal salt (i.e., potassium salt), within the second solution of less than that amount that would provide the support, after drying, with an additional alkali metal (i.e., potassium) concentration of 0.5 wt% of claim 1, in other embodiments 0.3 of claim 11, in other embodiments 0.1 of claim 12. Thus, an amount of the alkali metal is still present in the second solution. However in view of the prima facie case of obviousness set forth above, since all the solutions in Tompers are impregnated in a single step, the alkali metal in the resulting solution of Tompers is present at a concentration of zero to about 2% by wt. ([0019]) which overlaps with the claimed amount of alkali metal of claims 1, 10-12 . Thus, the claimed amount of the alkali metal is prima facie obvious over that of Tompers. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further the claim recites “where the second aqueous solution includes a magnesium to copper molar ratio of greater than 0.19” of claims 1 and claim 10, ratio of 0.20 to 0.50 of claims 2 and 11. Again in view of the prima facie case of obviousness set forth above, since all the solutions in Tompers are impregnated in a single step, magnesium and copper in the resulting solution of Tompers are present at a concentration of from about 0.2 up about 2.0% by wt and from about 2 up to about 8% by wt., respectively (paragraph 0019). Thus, conversion of the weight% to the mole ratio of magnesium to copper, for example with 0.2wt% of magnesium and 2wt% of copper, obtains 0.26 which is greater than the claimed 0.19 of claims 1 and 10 and also encompasses range of 0.20 to 0.50 of claims 2 and 11. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tompers teaches that the catalyst is used in an oxychlorination process, thus a skilled artisan would have been motivated to use the methods of Tompers with a reasonable expectation of success in obtaining an oxychlorination catalyst and further providing good activity, good selectivity and low tendency to stickiness in fluidized bed as taught by Tompers (paragraph 0021).
6. Claims 1-2 and 6-13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kuhrs et al (US 2006/0270879 A1) in view of Van Rooijen et al (US 2009/0054708 A1).
Regarding claims 1-2, 6-12, Kuhrs teaches an oxychlorination process wherein ethylene is converted to 1,2-dichloroethane in the presence of a catalyst composition which increases the conversion of the starting materials ethylene and hydrogen chloride compared to the use of the catalyst compositions customary hitherto without the selectivity for formation of 1,2-dichloroethane being reduced and without the catalyst sticking together when used as a moving bed. This catalyst composition also minimizes the formation of chlorinated by-products. See paragraph 0010-0012.
Kuhrs have found that this object is achieved by a catalyst composition for the oxychlorination of ethylene, comprising a mixture of metal salts on a support, where said metal salts are applied to the support in such ratios that the catalyst composition comprises a) from 3 to 12% by weight of copper as copper salt (reads on claims 1, 6, 10 for about 8-12 wt% and about 8-10 wt% of copper), b) from 0 to 3% by weight of an alkaline earth metal as alkaline earth metal salt, wherein the component b) used is a magnesium salt c) from 0 to 3% by weight of an alkaline metal as alkaline metal salt, wherein the component c) used is a potassium salt (See abstract, paragraphs 0013-0016 and claims 1, 5-7, would read on potassium concentration greater than 0.5 wt of claim 1, greater than 0.25 of claim 11, greater than 1.0 of claim 12, in range from 1.05 to 1.6 of claim 9). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kuhrs teaches preparing an aqueous solution for impregnating the support substance, the required amounts of the appropriate metal compounds, preferably in the form of their hydrates, are dissolved in water. The aqueous solution is then applied to the support substance (aluminum oxide). The support substance which has been impregnated in this way is subsequently filtered off from the remaining aqueous phase if necessary and finally dried. Filtration is not necessary when the support substance is brought into contact with a volume of the aqueous solution which is no greater than that sufficient for saturating the support substance (See paragraphs 0023 and 0031).
The difference between Kuhrs and the instant claimed invention is that wherein impregnating the first catalyst component with a second aqueous solution including copper and alkaline earth metal (i.e., magnesium), where the second aqueous solution is substantially devoid of alkali metal (i.e., potassium). Applicant's disclosure describes the catalyst composition prepared according to the present invention using alkali metal greater than 1 wt.% can be advantageous without deleteriously impacting stickiness and catalyst composition used in the oxychlorination process yield higher HCl conversion and lower chlorinated products.
The catalyst composition prepared according to Kuhrs overcomes the catalyst stickiness (paragraph 0012) and the catalyst composition of Kuhrs leads to an oxychlorination process, which yield higher HCl conversion and lower chlorinated products (see examples). Therefore, the way of preparing the catalyst composition recited in the instant claims is an obvious variant of preparing the catalyst composition according to Kuhrs and it is not given any patentable weight barring any unexpected results.
Kuhrs does not teach more than one impregnation step.
Van Rooijen teaches oxychlorination catalyst comprising Cu (5.5-14 wt%, reads on claims 1, 6, 10), alkali metal (less than 1wt%, i.e., potassium reads on claims 1, 11) and alkali earth metal (0.2-5 wt%, i.e., magnesium) and alumina as support where more than one impregnation step is performed (see abstract, 0039-0047, reads on claims 1, 10 of two steps of impregnation). Van Rooijen discloses further containing rare earth metal (paragraph 0040, reads on claim 13). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would be obvious to one of the ordinary skill in the art at the time of invention to include more than one impregnation step of Van Rooijen with Kuhrs which provides high selectivity and conversion rates as taught by Van Rooijen (paragraph 0001).
Further, the claim recites “were the second aqueous solution includes an alkaline earth metal (i.e., magnesium) to copper molar ratio of greater than 0.19” of claims 1, 10 or “0.20-0.50” of claims 2 and 11. Again in view of the prima facie case of obviousness set forth above, since all the solutions in Kuhrs are impregnated in a single step, the alkaline earth metal and copper in the resulting solution of Kuhrs are present at a concentration of from about 0 up to about 3.0% by wt and from about 3 up to about 12% by wt., respectively. Thus, the mole ratio of alkaline earth metal to copper, would result greater than 0.19.
Van Rooijen teaches 5.5-14 wt% of copper and 0.2-5wt% of alkaline earth metal which includes Mg thus would also result mole ratio of alkaline earth metal to copper greater than 0.19. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 7, Van Rooijen teaches alkaline earth metal (i.e., magnesium) from about 0.2-5 wt.% and 0.2-5.0 wt% of rare earth can be present on supported catalyst (paragraph 0042, reads on claim 7). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
7. Applicant’s arguments filed on 01/27/2026, with respect to the rejection(s) of claim(s) 1-2 and 6-13 over Tompers et al (US PGPUB No.: 2014/0128643) and Claims 1-2 and 6-13 over Kuhrs et al (US PGPUB No.: 2006/0270879) in view of Van Rooijen et al (US PGPUB No.: 2009/0054708) been fully considered and are not persuasive. Therefore, the rejection has been maintained.
Applicant argues:
“As noted in the copied portion of Table 1 below, Samples 1 and 3 of Van Rooijen do not include magnesium (Mg) and Sample 4 includes only 0.03 wt.% of potassium (K). Therefore, the lack of stickiness reported for Sample catalysts 1, 3, and 4 of Van Rooijen is believed to be based on different compositions than presently claimed”.
“The Examples 1-3 disclose the presence of ruthenium chloride, and the conclusions are noted at paragraph [0038], for example. Also of note, the Examples 1-3 of Kuhrs only disclose the use of 4.5% by weight of Cu. In this regard, independent claims 1 and 10 now recite the supported catalyst includes from about 8 to about 12 weight percent of the copper. Lastly, as acknowledged by the Advisory Action "... all solutions in Kuhrs are impregnated in a single step ..." Nothing in Kuhrs suggests the alleviation of stickiness for a two-step impregnation, as evidenced in the present Inventive Samples 1-5. Therefore, the Office has not established a prima facie case of obviousness and all claims are patentable over Kuhrs and Van Rooijen”.
See Remarks on pages 6-8.
The examiner respectfully traverse as follow:
Examiner disagrees with applicant response in related to Van Rooijen, it is noted that applicant merely point to Van Rooijen examples in table 1 to support the position, however, applicant must look to the whole reference for what it teaches. Applicant can not merely rely on the examples and argue that the reference did not tech others, In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). In addition, MPEP 2123 states that patents are relevant as prior art for all they contain and that “disclosed examples of preferred embodiments do not constitute a teaching away from broader disclosure”. In this instance, Van Rooijen samples 4 which discloses potassium of 0.03 and samples 1-2 does not disclose any amount of Mg which does not constitute teaching away from the broader amount of alkaline earth (i.e., includes Mg) in an amount from 0.2-5 wt%, copper present in amount 5.5-14 wt% and alkali metal (potassium) present less than 1 wt% (see paragraphs 0039-0047). Accordingly the broader amount of Mg and K of Van Rooijen reads on overall presently claimed invention as disclosed above. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989), MPEP 2123 I.
As disclosed above, Van Rooijen teaches oxychlorination catalyst comprising Cu (5.5-14 wt%), alkali metal (less than 1wt%, i.e., potassium) and alkali earth metal (0.2-5 wt%, i.e., magnesium) and alumina as support where more than one impregnation step is performed (see abstract, 0039-0047, reads on claims 1, 10 of two steps of impregnation). Van Rooijen discloses further containing rare earth metal (paragraph 0040). Van Rooijen also discloses reduction of stickiness and therefore one can not make any final conclusion based on the examples of Van Rooijen for samples 1, 2, 4 that since samples 1-2 did not disclose any amounts of Mg and sample 4 discloses only potassium of 0.03 would indeed result in stickiness. Applicant needs to show side by side comparison to show indeed that Van Rooijen catalyst composition would indeed result in stickiness. Therefore the rejection is maintained.
Further Examiner disagrees with applicant’s argument related to Kuhrs as Kuhrs clearly discloses an oxychlorination process wherein ethylene is converted to 1,2-dichloroethane in the presence of a catalyst composition which increases the conversion of the starting materials ethylene and hydrogen chloride compared to the use of the catalyst compositions customary hitherto without the selectivity for formation of 1,2-dichloroethane being reduced and without the catalyst sticking together when used as a moving bed. Further Kuhrs broadly teaches copper present in amount of 3-12 wt% which reads on presently claimed limitation of copper. Therefore It is noted that applicant merely point to Kuhrs examples to support the position for amount of copper, however, applicant must look at the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). In addition argument related to Kuhrs discloses one step impregnation but examiner has added Van Rooijen which discloses multiple impregnation steps therefore combination of Kuhrs and Van Rooijen discloses presently claimed invention as disclosed above and the rejection is maintained. Again, Applicant is advised to show unexpected results of the claimed two step impregnation of Kuhrs in view of Van Rooijen to obviate the prima facie case of obviousness.
Applicant argues:
"... all the solutions in Tompers are impregnated in a single step." Nothing in Tompers suggests the alleviation of stickiness for a two-step impregnation, as evidenced in the present Inventive Samples 1-5. Further, the Examples of Tompers only disclose the use of 4.3% by weight of Cu. As mentioned above, independent claims 1 and 10 now recite the supported catalyst includes from about 8 to about 12 weight percent of the copper. Still further, Tompers concludes "... the Mn [manganese] formulation is much more resistant to becoming sticky under the conditions of low operating temperature and low HCl conversion when compared to the Rare Earth formulation." That is, this conclusion suggests that the presence of rare earth metal tends toward stickiness. In this regard, independent claim 1 and dependent claim 13 recite that the first aqueous solution includes rare earth metal.”
See remarks on pages 76-8.
The examiner respectfully traverse as follow:
As previously mentioned before, Tompers differs from the instant claim in that Tompers teaches a single step impregnation whereas the instant claimed process is drawn to a two-step impregnation and thus, the order of mixing the metal solutions in the impregnation steps are different. However, MPEP § 2144.04 states that any order of mixing ingredients is one of the examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below.
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Therefore, the instantly claimed two-step impregnation process is prima facie obvious over the single-step impregnation process of Tompers in the absence of unexpected results.
Accordingly, even though the claimed process recites the two separate impregnation steps to obtain the above amount of potassium (i.e., alkali metal) in the supported catalyst, the claimed process with the two impregnation steps is prima facie obvious over the single step impregnation for reasons set forth above. Again, Applicant is advised to show unexpected results of the claimed two step impregnation over the single step impregnation of Tompers to obviate the prima facie case of obviousness.
Further, applicant argues examples of Tompers only disclose the use of 4.3% by weight of Cu and that Mn use with rare earth tends to become sticky but however, Tompers do disclose about 2 upto about 8 wt% of copper (See abstract, overlaps presently claimed range of Cu). Further Tompers teaches addition of low amount of rare earth element in the catalyst composition which provides low tendency to stickiness. Therefore, It is noted that applicant merely point to Tompers examples in to support the position, however, applicant must look to the whole reference for what it teaches. Applicant can not merely rely on the examples and argue that the reference did not tech others, In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Therefore the rejection is maintained.
Conclusion
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 03/13/2026