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 .
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.
Status of Claims
Claims 1 and 3-9 are currently under examination. Claims 10-14 are withdrawn from consideration. Claim 2 has been cancelled. Claim 1 is amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/04/2025 has been entered.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, with respect to claims 1 and 3-9 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Toyota et al. (WO 2018/178763 A1, applicants submitted in IDS) with respect to claims 1, 3-4 and 7-9 is amended as set forth below.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Toyota et al., and further in view of Ying et al. (US 6,544, 922 B1) with respect to claims 5-6 is amended as set forth below.
New grounds of rejections are set forth below.
Amended & New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “aligned crystal orientations in one direction" in line 12 is unclear and confused because the term "crystal orientations" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What are the other directions? Appropriated corrections are required.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(b) for the reasons set forth above.
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 1, 3-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Toyota et al. (WO 2018/178763 A1, applicants submitted in IDS).
Regarding claim 1, Toyota et al. teach a catalyst 52 comprising a monolithic base material 52a having a honeycomb structure made of cordierite (the instant claimed honeycomb support) , ferroelectric material as an electromagnetic wave-absorbing layer 52b which is stacked (applied) on the surface of the base support material 52a. (the instant claimed polarization layer) and a catalyst-coating layer 52c including ferroelectric material laminated on a separator surface thereof. The ferroelectric material as an electromagnetic wave-absorbing layer 52b is between the monolithic base material having a honeycomb structure made of cordierite 52a, and a catalyst-coating layer 52c including ferroelectric material laminated on a separator surface as the instant claim 1 ([0044]-[0046], FIG.2):
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The ferroelectric material is the same as the instant claimed material, therefore it would expect to spontaneous polarization in the natural state and the polarization layer being an orientational polarization layer having aligned crystal orientations.
Although Toyota et al. do not specifically the phrase of "wherein the catalyst member has a structure for allowing the catalyst member to receive charged liquid raw materials to carry out a reaction using the catalyst layer in either a batch or a flow method.” as per applicant claim 1, the reference of Toyota et al. teach all of the claimed reagents (honeycomb support, polarization layer ferroelectric material as an electromagnetic wave-absorbing layer and catalyst layer), and composition of the catalyst member, the physical properties of the resulting catalyst member (i.e., allowing the catalyst member to receive charged liquid raw materials to carry out a reaction using the catalyst layer in either a batch or a flow method, honeycomb support having appositive charge, the catalyst layer having a negative charge, the polarization layer having aligned crystal orientations in one direction) necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 3, Toyota et al. teach a catalyst 52 comprising a catalyst-coating layer 52c including ferroelectric material laminated on a separator surface thereof ([0044]-[0046], FIG.2).
Regarding claim 4, Toyota et al. teach a catalyst 52 comprising metal including Ru metal used as the catalytic metal ([0048]).
Regarding claims 7-9, as discussed above, Toyota et al. teach a catalyst 52 comprising a monolithic base material 52a having a honeycomb structure made of cordierite ceramic, silica which does not comprising polarization layer and the catalyst layer, and a catalyst-coating layer 52c including ferroelectric material laminated on a separator surface thereof ([0044]-[0046], FIG.2).
Silica is a material that can be used for the monolithic base material that has transmittance to at least light of certain wavelengths (translucent).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Toyota et al. as applied to claim 1 above, and further in view of Ying et al. (US 6,544, 923 B1).
Regarding claims 5-6, although Toyota et al. do not specific teach a metal complex catalyst as per applicant claims 5-6, Ying et al. surface-confined catalytic composition comprising an asymmetric organometallic complex (S-BINAP)RuCl2 covalently bind immobilized on ultra-large silicate material (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the (S-BINAP)RuCl2 taught by Ying et al. in the catalyst taught by Toyota et al.to obtain the invention as specified in the claims 5-6, motivated by the fact that it exhibits high activity and selectivity though immobilization of the catalysts to a surface capable of being easily recovered from solution. It produces products having high stereoselectivities (Abstract, col. 1, line 20-col. Line 7).
Since both of Ying et al. and Toyota et al. teach Ru catalysts immobilized on silica, one would have a reasonable expectation of success.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 11/04/2025 with respect to claims 1 and 3-9 have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Applicant argued the device of Toyota '763 does not necessarily have a structure to receive charged liquid raw material to carry out a reaction. Moreover, Toyota '763 does not disclose or suggest a polarization layer being polarized with a positive charge on the support side and a negative charge on the catalyst layer side, let alone where the polarization layer is an orientational polarization layer having aligned crystal orientations in one direction.
Ying '923 is directed to a catalytic system, having a mesoporous substrate, used for asymmetric reactions. The Applicant reiterates that one of ordinary skill in the art would not have combined the teachings of Ying '923 with the Toyota '763 exhaust heating device. Further, the addition of Ying '923 to Toyota '763 does not result in a disclosure of all of the elements of Claim 1.
As described in the specification of the instant application, the polarization layer polarized as in Claim 1 can be bonded to the catalyst layer having a positive charge by electrostatic interaction, so that it is difficult to release the catalyst layer from the polarization layer. No such advantageous effects can be found from the disclosure of Toyota '763 or Ying '923, or a combination thereof.
Because the cited prior art, even in combination, is missing multiple elements of Claim 1 of the instant application, the prior art does not render the invention of Claim 1 obvious (Remarks, pages 4-6).
The Office respectfully disagrees. As discussed above, Toyota et al. teach a catalyst 52 comprising a monolithic base material 52a having a honeycomb structure made of cordierite (the instant claimed honeycomb support) , ferroelectric material as an electromagnetic wave-absorbing layer 52b which is stacked (applied) on the surface of the base support material 52a. (the instant claimed polarization layer) and a catalyst-coating layer 52c including ferroelectric material laminated on a separator surface thereof. The ferroelectric material as an electromagnetic wave-absorbing layer 52b is between the monolithic base material having a honeycomb structure made of cordierite 52a, and a catalyst-coating layer 52c including ferroelectric material laminated on a separator surface as the instant claim 1 ([0044]-[0046], FIG.2):
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The ferroelectric material is the same as the instant claimed material, therefore it would expect to spontaneous polarization in the natural state and the polarization layer being an orientational polarization layer having aligned crystal orientations.
Although Toyota et al. do not specifically the phrase of "wherein the catalyst member has a structure for allowing the catalyst member to receive charged liquid raw materials to carry out a reaction using the catalyst layer in either a batch or a flow method.” as per applicant claim 1, the reference of Toyota et al. teach all of the claimed reagents (honeycomb support, polarization layer ferroelectric material as an electromagnetic wave-absorbing layer and catalyst layer), and composition of the catalyst member, the physical properties of the resulting catalyst member (i.e., allowing the catalyst member to receive charged liquid raw materials to carry out a reaction using the catalyst layer in either a batch or a flow method, honeycomb support having appositive charge, the catalyst layer having a negative charge, the polarization layer having aligned crystal orientations in one direction) necessarily follow as set forth in MPEP 2112.01(II).
Applicant’s arguments against the reference of Ying et al. are not found persuasive.
Toyota et al. the catalytic metal including Pt, Rh, Ir and Ru ([0048]).
Although Toyota et al. do not specific teach a metal complex catalyst, Ying et al. surface-confined catalytic composition comprising an asymmetric organometallic complex (S-BINAP)RuCl2 covalently bind immobilized on ultra-large silicate material (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the (S-BINAP)RuCl2 taught by Ying et al. in the catalyst taught by Toyota et al.to obtain the invention as specified in the instant claims, motivated by the fact that it exhibits high activity and selectivity though immobilization of the catalysts to a surface capable of being easily recovered from solution. It produces products having high stereoselectivities (Abstract, col. 1, line 20-col. Line 7).
Since both of Ying et al. and Toyota et al. teach Ru catalysts immobilized on silica, one would have a reasonable expectation of success.
Because, note that while Toyota et al. do not disclose all the features of the present claimed invention, Ying et al. is used as teaching reference, and therefore, it is not necessary for this 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, namely an asymmetric organometallic complex (S-BINAP)RuCl2, and in combination with the reference of Toyota et al, discloses the presently claimed invention as set forth in the office action above.
As such, the rejection of claim 1 as set forth above is proper and stands.
The rejection for the remaining claims, 3 through 9, were either directly or indirectly dependent thereon stands.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).