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 .
Claim Rejections - 35 USC § 103
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 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.
Claims 29-31, 41-42, 45, 49-52-55 are rejected under 35 U.S.C. 103 as being unpatentable over Boldingh et al. (US 7,423,190 B2) (Boldingh) in view of Wu et al. (US 5,905,051 A) (Wu).
Regarding claim 29, 31, 41-42, and 49-51, Boldingh teaches a catalyst containing rhenium and germanium (i.e., components (i) and (ii)) (Boldingh, Abstract) (i.e., claims 41 and 42, comprising the germanium). Boldingh further teaches a refractory binder or matric utilized to facilitate fabrication of the catalyst (i.e., carrier), wherein the binder includes inorganic oxides such as zirconia and titania (Boldingh, Col. 6, lines 1-7) (i.e., a carrier on which the metal component is supported, the carrier comprising an oxide of a Group 4 metal of the periodic table; claim 31).
However, Boldingh does not explicitly teach (a) a sulfate ion present in the catalyst in a range of from 0.01 to 10% by mass, relative to a total catalyst mass; or (b) sulfur, present in the catalyst in at least 0.35% by mass, relative to the total catalyst mass.
With respect to the difference (a) and (b), Wu teaches a catalyst composition comprising rhenium and germanium supported on a zeolite (Wu, Abstract; Col. 2, lines 1-9). Wu teaches the catalyst may be used for hydrotreating processes such as transalkylation (Wu, Col. 3, lines 52-55). Wu specifically teaches the inclusion of an activity promoter such as sulfur (Wu, Abstract), and wherein as the sulfur compound, ammonium hydrogen sulfate (i.e., comprising sulfate ions) may be used (Wu, Col. 10, lines 12-25).
As Wu expressly teaches, the sulfur is used as an activity promoter in the catalyst (Wu, Abstract), as in the sulfur improves the catalytic activity of the catalyst.
Wu is analogous art as it is drawn to a transalkylation catalyst comprising rhenium and germanium (Wu, Abstract; Col. 2, lines 1-9).
In light of the motivation of including sulfur in the form of ammonium hydrogen sulfate as disclosed by Wu, it therefore would have been obvious to one of ordinary skill in the art to modify the catalyst of Boldingh by incorporating ammonium hydrogen sulfate in order to improve the catalytic activity of the catalyst, and thereby arrive at the claimed invention.
Although there are no disclosures on the amounts of sulfate ion being present in a range of from 0.01 to 10% by mass, or in a range of from 0.30 to 10% by mass (i.e., claim 50) relative to the total catalyst mass; and sulfur being present in the catalyst in at least 0.35% by mass, or by 0.57% by mass (i.e., claim 49), or in a range of from 0.35 to 3% by mass (i.e., claim 51) relative to the total catalyst mass as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of sulfur in the form of ammonium hydrogen sulfate, including over the amounts presently claimed, in order to improve the activity of the catalyst.
Given that Boldingh, in view of Wu discloses the catalyst that overlaps the presently claimed catalyst, including sulfate ions in the form of ammonium hydrogen sulfate (Wu, Col. 10, lines 12-25), it therefore would be obvious to one of ordinary skill in the art, to use the ammonium hydrogen sulfate, which is both disclosed by Boldingh in view of Wu and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Given that Boldingh, in view of Wu, discloses the catalyst that overlaps the presently claimed catalyst, including titania and zirconia (Group 4 metal oxides) in the carrier (Boldingh, Col. 6, lines 1-7), it therefore would be obvious to one of ordinary skill in the art, to use the titania or zirconia, which is both disclosed by Boldingh in view of Wu and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Further, Boldingh, in view of Wu, teaches the refractory binder, i.e., titania or zirconia, may be present in a range of from 1 to 95 mass percent, and the molecular sieve may be present in a range of from 5 to 99 percent (Boldingh, Col. 6, lines 8-10). Therefore, the amount of refractory binder, i.e., titania or zirconia, overlaps with the range of the carrier “primarily comprising” an oxide of a Group 4 metal of the periodic table.
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 30, Boldingh, in view of Wu, teaches the catalyst of claim 29, wherein the atomic ratio of germanium to rhenium is at least about 2:1, about 2:1 to 50:1, preferably between 2.5:1 to 25:1 (Boldingh, Col. 3, lines 25-26) (i.e., 0.975:1 to 9.75:1, which falls within the claimed range; see conversion below).
The mass ratio of germanium to rhenium is obtained by multiplying the atomic ratio by the molecular weight of germanium (i.e., 72.64 g/mol) and rhenium (i.e., 186.21 g/mol). After conversion, the atomic ratio of germanium to rhenium of 2.5:1 corresponds to a mass ratio of Ge to Re of 181.6 g: 186.21 g (i.e., 2.5 * 72.64 g/mol: 1 * 186.21 g/mol), or 0.975 g: 1g. Additionally, after conversion, the atomic ratio of 25:1 corresponds to a mass ratio of Ge to Re of 1816 g: 186.21 g (i.e., 25 * 72.64: 1 * 186.21), or 9.75 g: 1 g.
Regarding claim 45, Boldingh, in view of Wu, teaches the catalyst of claim 29, wherein the suitable binders include inorganic oxides such as one or more of chromia and zinc oxide, and wherein the inorganic oxides may be present in a range from about 1 to 95 mass percent (Boldingh, Col. 6, lines 1-11), which overlaps with the range of the presently claimed.
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 52, Boldingh, in view of Wu, teaches the catalyst of claim 29, wherein as Boldingh does not disclose the addition of silicon, the mass ratio of silicon to rhenium is less than 1, which falls within the claimed range.
Regarding claim 53, Boldingh, in view of Wu, teaches the catalyst of claim 29, wherein the activity promoter, i.e., sulfur-containing compounds such as ammonium hydrogen sulfate, is included in the zeolite, i.e., a type of molecular sieve (Wu, Abstract), which includes the surface of the carrier.
Further, as Boldingh, in view of Wu, teaches the catalyst that is substantially identical to the claimed catalyst, the sulfate ion present in a surface of the carrier would inherently form acid sites on the surface of the catalyst.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claims 54 and 55, Boldingh, in view of Wu, teaches the catalyst of claim 29, wherein the refractory binder, i.e., titania or zirconia, may be present in a range of from 1 to 95 mass percent, and the molecular sieve may be present in a range of from 5 to 99 percent (Boldingh, Col. 6, lines 8-10). Therefore, the amount of refractory binder, i.e., titania or zirconia, overlaps with the range of the presently claimed 70% by mass or more and in a range of 90 to 100% by mass.
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).
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Boldingh in view of Wu, as applied to claim 29 above, and further in view of Oudart et al. (US 2011/0105313 A1) (Oudart).
Regarding claim 43, Boldingh, in view of Wu, teaches the catalyst of claim 29, but does not explicitly teach wherein the metal component further comprises (iii) a Group 8 to 10 metallic element of the periodic table, other than iron or nickel, and wherein a (iii)/(i) mass ratio, of the Group 8 to 10 metallic element to the rhenium (i) in the catalyst, is less than 0.2.
Claims 46-48 are rejected under 35 U.S.C. 103 as being unpatentable over Boldingh in view of Wu, as applied to claim 29 above, and further in view of Chattha et al. (US 5,922,294 A) (Chattha).
Regarding claims 46-48, Boldingh, in view of Wu, teaches the catalyst of claim 29, wherein the support is referred to as a particle (Boldingh, Col. 8, lines 4-5). However, Boldingh, in view of Wu, does not explicitly teach the carrier particles have a specific surface of 50 m2/g or more, 3000 m2/g or less or 1000 m2/g or less.
With respect to the difference, Chattha teaches a catalyst support comprising titania and alumina (Chattha, Abstract), wherein the support generally carries precious metals such as platinum (Chattha, Col. 1, lines 13-18). Chattha specifically teaches the support having a specific surface area of preferably at least 50 m2/g (Chattha, Col. 5, Example 1, lines 47-48), and in specific embodiments, the specific surface area is 181 m2/g (Chattha, Col. 5, Example 1, lines 47-48), and 121 m2/g (Chattha, Col. 6, Example 2, lines 4-5), which fall within the claimed range of greater than 50 m2/g and less than 1000 m2/g.
As Chattha expressly teaches, high surface area is important because it allows maximum contact between the exhaust gases and catalyst material like platinum (Chattha, Col. 1, lines 23-26).
Chattha is analogous art as it is drawn to alumina and titania supports for catalytic metals (Chattha, Col. 1, lines 13-30).
In light of the motivation of having a carrier with a specific surface area larger than 50 m2/g and less than 1000 m2/g as disclosed by Chattha, it therefore would have been obvious to one of ordinary skill in the art to modify the catalyst of Boldingh in view of Wu to have a carrier surface area of Chattha in order to allow maximum contact between reactant gases and catalyst material, and thereby arrive at the claimed invention.
Response to Arguments
Applicant primarily argues:
“Thus, the claims have been amended to recite that the largest fraction of the weight of the carrier is an oxide of a Group 4 metal.
…
Unlike the claims, zeolites are aluminosilicates, rather than Group 4 metal oxides (Ti, Zr, Hf, etc.). While Boldingh's col. 6, ll.1 to 7, indeed describes the option of its binder being "inorganic oxides such as one or more of alumina, magnesia, zirconia, chromia, titania, boria, thoria, phosphate, zinc oxide and silica," not only does this not require zirconia or titania, but it fails to indicate that a Group 4 metal oxide would be the primary portion of Boldingh's carrier (to the extent it is a carrier at all).”
Remarks, p. 7
The examiner respectfully traverses as follows:
While applicant argues that the inorganic oxides are not the primary composition of the carrier, and rather the zeolite is the primary composition, Boldingh teaches the molecular sieve, i.e., zeolite, is from 5 to 99 mass percent and the refractory inorganic oxide, i.e., titania or zirconia, is 1 to 95 mass percent (Boldingh, Col. 6, lines 8-10). Therefore, the amount of refractory inorganic oxide overlaps with the range of primary composition.
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, given that Boldingh, in view of Wu, discloses the catalyst that overlaps the presently claimed catalyst, including titania and zirconia (Group 4 metal oxides) in the carrier (Boldingh, Col. 6, lines 1-7), it therefore would be obvious to one of ordinary skill in the art, to use the titania or zirconia, which is both disclosed by Boldingh in view of Wu and encompassed within the scope of the present claims and thereby arrive at the claimed invention. Therefore, it is clear that a Group 4 metal oxide being a primary component is an embodiment of the invention of Boldingh in view of Wu.
Applicant further argues:
“As indicated in the attached declaration, the carrier in Wu appear to be a complicated combination of two zeolites, as described, e.g., in Wu's col. 3,11. I to 45 (esp. 11. 37 to 45), col. 4,1l. 19 to 26, col. 4, 1.58, to col. 5, 1. 8, col. 5, ll. 31 to 44, col. 6, 11. 37 to 67, etc. This construction appears to be necessary to avoid the coking effect that Wu describes as "a zeolite catalyst is generally deactivated in a rather short period, especially in a high sulfur and/or polyaromatics environment, because of depositions of carbonaceous material, generally coke, on the surface of the catalyst," on Wu's col. 1,11. 41 to 45. Wu's binder does not appear to be open to the components described by Boldingh, as indicated in Wu's col. 4, 11.30 to 43. Wu's examples show that single zeolite catalysts used in Runs 1 to 4, have worse results, and the coking described in Wu's background section, than the dual zeolite systems in Runs 5 and 6. It is noted that Wu's Run 4 also appears to show relatively good results, but still requires a zeolite carrier.
Wu's examples show no indication of the use of Group 4 metals or metal oxides in either Wu's binder or Wu's carrier, must less as the primary component.
There should have been no reasonable expectation that using a carrier in a catalyst that primarily comprises oxide(s) of Group 4 metal(s), since doing so should have been expected to cause coking among any other unpredictable effects known in the art to occur by completely changing the carrier of a catalyst. There should have been no reasonable expectation that such a modification would have maintained Boldingh's quality.”
Remarks, p. 7-8
The examiner respectfully traverses as follows:
Firstly, Boldingh does not limit the carrier to one zeolite (Boldingh, Col. 5, lines 40-67). Additionally, Wu teaches overlapping binders including alumina (Wu, Col. 4, lines 27-38), and further wherein a metal, including titanium and zirconium, that can be, and generally is, chemically bonded to oxygen or sulfur is impregnated onto the zeolite (Wu, Col. 2, lines 50-58), it is clear that the compositions of Wu and Boldingh are analogous compositions, as well as both being used as transalkylation catalysts (Boldingh, Abstract; Wu, Col. 3, lines 53-55).
Further, it is noted that while Wu does not disclose all the features of the present claimed invention, Wu is used as a teaching reference, namely to teach the use of sulfur and sulfates, in order to improve the catalytic activity of the catalyst, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Further, applicant points to examples in Wu to state that Wu could not be combined with Boldingh, however, “applicant must look to 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).
Lastly, as Wu teaches the addition of sulfur improves the catalytic activity of transalkylation catalysts, and as Boldingh is a transalkylation catalyst, and as both teach catalysts with overlapping compositions, there is a reasonable expectation of success when adding sulfur to the catalyst of Boldingh. It is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
Applicant further argues:
“In addition to the above, as noted in the attached declaration, a person of ordinary skill in the art would have been concerned about the well-known poisoning effect of sulfur with noble-metal catalysts, such as those using Re as claimed or in Boldingh. For this further reason, even though Wu has a general discussion implausibly equating oxygen with sulfur, and basically indicating that its exemplified catalyst can perform similarly across the gamut of metals, including "nickel, palladium, molybdenum, gallium, platinum, chromium, rhodium, rhenium, tungsten, cobalt, germanium, zirconium, titanium, ruthenium, and combinations of two or more thereof." The notion that consistent performance with any combination of these metals and with sulfur equally to oxygen, and then further substitute the carrier, is unscientific and changes the mode of operation of the hypothetical catalysts. Such modifications cannot have been predictable, let alone have a reasonable expectation of succeeding in maintaining Boldingh's function. Thus, the claims should not be obvious over the cited art.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
While applicant argues that the teachings of Wu could not have consistent performance across all taught composition combinations, and would have no reasonable expectation of success, the fact remains that Wu does teach that these compositions are successful, and therefore, there is a reasonable expectation of success that if the addition of sulfur in the transalkylation catalysts Wu, which comprises overlapping components with Boldingh, improves the catalytic activity, that the transalkylation catalyst of Boldingh would also have improved catalytic activity by the addition of sulfur.
Applicant further argues:
“9. Wu's Examples | and I, however are molybdenum-based catalysts, as seen on col. 13, H, 26, 28, 45, 47, 48, 59, 62, and 63, and col. [4, 11. 4, 6. and 7, rather than rhenium-based catalysts.
…
13. Wu's col. 10, IL 13 to 34, describes that any sulfur-containing compound that can be converted to a sulfur oxide upon calcining can be employed in the present invention,” and exemplifies numerous suitable compounds, but the examples in Wu do not describe using sulfur, other than Table 1 indicating 658 ppmw sulfur in the BTX feed.”
Declaration – Items #9 and #13
The examiner respectfully traverses as follows:
While applicant states that the examples of Wu only teach the use of molybdenum and do not teach rhenium-based catalysts, as well as not teaching the use of sulfur-containing compounds, “applicant must look to 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).
Applicant further argues:
“14. Wu's col. 15, II. 40 to 60, describes that silica-bound beta zeolites promoted with Mo have higher conversion rates of C9+ aromatics and reduced coking, but that a two-stage transalkylation significantly improved conversion of C9+ aromatics from naphthalenes to xylenes.
15. Wu provides no evidence that sulfur-containing catalysts or rhenium-containing catalysts perform equivalently, much less combining sulfur with Boldingh’s Re-Ge-Sn catalyst would perform equivalently.
16. There is no evidence that the combination hypothesized in the office action would predictably maintain Boldingh’s quality.”
Declaration – Items #14-16
The examiner respectfully traverses as follows:
While applicant argues that because Wu states that a specific combination has high conversion rates in transalkylation, that there is no evidence that other combinations including sulfur-containing catalysts and rhenium-containing catalysts would perform equivalently, “applicant must look to 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).
Further, as Wu teaches the addition of sulfur improves the catalytic activity of transalkylation catalysts, and as Boldingh is a transalkylation catalyst, and as both teach catalysts with overlapping compositions, there is a reasonable expectation of success when adding sulfur to the catalyst of Boldingh. It is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
Applicant further argues:
“17. In my experience, the addition of sulfur to noble metals, such as rhenium, is ordinarily expected to reduce the efficiency of a catalyst.
18. In my opinion, such a modification of Boldingh, based on Wu, as proposed in the office based on disconnected general disclosure in Wu, would not have been predictable, and instead would have been expected to harm Boldingh’s quality.
21. Moreover, in my experience, which Wu also describes in its Background section, i.e., Wu's col. 1, II. 41 to 45, sulfur typically poisons catalysts, including transalkylation catalysts, and the statement in Wu's col. 2, II. 56 to 57, that “metal can be, and generally is, chemically bonded to oxygen or sulfur,” could not be predictably extrapolated to Boldingh’s catalyst.”
Declaration – Items #17-18 and #21
The examiner respectfully traverses as follows:
While applicant argues that ordinarily the addition of sulfur reduces the efficiency of a catalyst and that the addition of sulfur, based on Wu, to Boldingh would be expected to harm the quality of Boldingh’s catalyst, the fact remains that Wu teaches it improves the catalytic activity of catalysts including transalkylation catalysts. Therefore, absent evidence, i.e., data, to the contrary, it is the examiner’s position that the addition of sulfur, based on the teachings of Wu, would improve the catalytic activity of the transalkylation catalyst of Boldingh.
It is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
Applicant further argues:
“22. Although Boldingh describes using a zeolite, i.e., an “acidic molecular sieve” (col. 5, l. 40), Boldingh’s carrier is described as any of 4 variety of zeolites (col. 5, ll. 41 to 67), and Boldingh does not describe using two separate zeolites.
23. As Wu exemplifies in its Table II+HU a, the best results with the least coking are not Runs 1, 2, or 3, with single zeolite-based catalysts, but Runs 4, 5, and 6, using an alumina-bound beta zeolite impregnated with molybdenum (Run 4, catalyst D) and the dual catalyst mixtures in Runs 5 and 6.
25. In my opinion, the simple addition of sulfur to Boldingh-—-which itself does not describe a tolerance to sulfur, nor a specialized carrier—would not have predictably maintained the function of Boldingh’s catalyst.
26. Furthermore, regarding the claim feature that the carrier “primarily comprises” an oxide of a Group 4 metal, the indication of both Boldingh and Wu of particular zeolite systems as carriers, in my opinion, could not have been simply substituted to be primarily based on Group 4 metal oxide(s) with a predictable effect.”
Declaration – Items #22-23 and #25-26
The examiner respectfully traverses as follows:
While Boldingh does not describe using two separate zeolites, Boldingh does not teach away from using two separate zeolites.
Further, while Wu shows examples having the best results using an alumina-bound zeolite impregnated with molybdenum and the dual catalyst mixtures in Rungs 5 and 6, “applicant must look to 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).
Further, these examples have specific conditions with widely varying compositions and therefore, it cannot be determined based on these examples that only alumina-bound zeolite impregnated with molybdenum and the dual catalyst mixtures have the best results.
Further, while applicant argues that the simple addition of sulfur to Boldingh would not have predictably maintained the function of Boldingh’s catalyst, the fact remains that absent evidence, i.e., data, to the contrary, it is the examiner’s position that the addition of sulfur, based on the teachings of Wu, would improve the catalytic activity of the transalkylation catalyst of Boldingh.
Lastly, as stated above, Boldingh teaches a mass percentage of refractory inorganic oxide, i.e., titania or zirconia, is 1 to 95 mass percent (Boldingh, Col. 6, lines 8-10) which overlaps with the range of the presently claimed. Additionally, Wu teaches metals such as zirconium and titanium bonded to oxygen are impregnated on the zeolite (Wu, Col. 2, lines 50-58). Therefore, absent evidence, i.e., data, to the contrary, it is the examiner’s position that there is a reasonable expectation of success combining these two references.
It is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732