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, 7, 10, 15, 17-20, 22, 25, 27-38 and 44-49 are currently under examination. Claims 3-4, 21 and 46 are withdrawn from consideration. Claims 2, 5-6, 8-9, 11-14, 16, 23-24, 26, and 39-43 have been cancelled. Claim 1 is amended. Claims 47-49 are newly added.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/12/2026 has been entered.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 1, 7, 10, 15, 17-20, 22, 25, 27-38 and 44-45 is withdrawn.
Regarding claim 27, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claim 27 is withdrawn.
Regarding claims 1, 7, 10, 15, 17-20, 22, 25, 27-38 and 44-45, in the light of the amendments, the rejection under 35 U.S.C. 103 as obvious over Jackson et al. and in view of Lin et al. (CN 108855238 A) is withdrawn.
New grounds of rejection are set forth below.
New Grounds Rejections
Claims 1, , 7, 10, 15, 17-20, 22, 25, 27-38 and 44-49 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 "the support" in step e). There is insufficient antecedent basis for this limitation in the claim.
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.
The limitation of “a level of…groups per nm2 “ recited in claims 22 and 25 is unclear and confused. The term "group" is not defined by the claims, 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.
Appropriated corrections are required.
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.
Claims 1, 7, 10, 15, 17-20, 22, 25, 27-38 and 44-45 are rejected under 35 U.S.C. 103 as obvious over Jackson et al. (US 2003/0233012 A1), and in view of Lopez et al. (Journal of Sol-Gel Science and technology, 24, 2002, 207-219), and further evidenced by Peter et al. (Journal of Sol-Gel Science and Technology, 5, 1995, 5-14).
Regarding claim 1, Jackson et al. teach a method for producing a porous material supported catalyst comprising impregnating an aqueous solution of zirconium alkoxide (i.e., zirconium n-butoxide) ([0019]-[0024]with a porous silica (the instant claimed step 1 a)), and followed by the addition of an aqueous CsCl solution (the instant claimed the catalytic metal of an alkali metal), calcining the resulted impregnated silica containing Zr and Cs in air at 650 0C for 3 hours(Abstract, [0009], [0024]-[0026], and [0034]).
The silica employed in the form of spheres of diameter in the range 2-4 mm having a purity of over 99%, a total surface area of about 300-350 m2/g and a pore volume of 1.04 cm3/g with 76% of the pore volume provided by pores having a diameter in the range 7-23 nm ([0033]). It reads on the instant claimed uncalcined metal modified porous support.
Although Jackson et al. do not specific teach mono- or dinuclear modifier metal zirconium as per applicant claim 1, Lopez et al. teach a method of making zirconium modified silica starting with a precursor of zirconium alkoxide such as Zr(n-OBu)4 or Zr tetrakisacetylacetone (Zr(acac)4) (pages 207-218).
It is known zirconium tetrakisacetylacetone (Zr(acac)4) is a monomer (mononuclear Zr), as evidenced by Peter et al. (right column on page 6).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the precursor zirconium alkoxide taught by Jackson et al. with Zr(acac)4 taught by Lopez et al. to obtain the invention as specified in the claim 1, motivated by the fact that atom distribution in the ZrO2-SiO2 system depended on zirconium incorporation in the silica lattice, which was higher with zirconium acetylacetonate than with zirconium alkoxide (page 218). In other words, zirconium acetylacetonate deposited more modified mononuclear zirconium metal onto the porous silica support.
Since both of Jackson et al. and Lopez et al. teach zirconium alkoxide for modifying silica, one would have a reasonable expectation of success.
Silica is impregnated in the solution of zirconium acetylacetonate Zr(acac)4 for the modification. As such, it would expect to all surface area and pores of the porous silica support are fully loaded with the Zr(acac)4. As such, at least 25% of modifier mononuclear of Zr is present on the silica porous support as the instant claim.
Regarding claim 7, as discussed above, the process taught by the combined references of Jackson et al. and Lopez et al. comprises heating a temperature at 450 0C which reads on the instant claimed ranges (Jackson et al. [0034]).
Regarding claim 10, although Jackson et al. and Lopez et al do not specifically teach hydrogel or xerogel as per applicant claim 10, the hydrogel or xerogel are known to be belongs to a single grouping of patentably indistinct species of obvious variants of silica.
Applicant was required on 03/12/2024 under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits.
Applicant elected a single grouping of patentably indistinct species Cs/Zr/SiO2.
According to MPEP that “Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.”
In this case, the examiner found SiO2 is the silica support species in the prior arts taught by the combined references of Jackson et al. and Lopez et al., they are used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Regarding claims 15 and 17, as discussed above, the process taught by the combined references of Jackson et al and Lopez et al. comprises Zr(acac)4 as the instant claimed modified metal impregnated and adsorbed on the surface silica as the instant claims (Lopez et al., pages 208-209).
Since the combined references teach all of the claimed reagents, composition and method of making a catalyst, the physical properties of the modified metal (i.e., as being an adsorbate on the silica support surface, etc.) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 18, as discussed above, the process taught by the combined references of Jackson et al and Lopez et al. comprises an alkali metal Cs as the instant claim (Jack et al., [0034]).
Regarding claims 19, 22 and 25, although the combined references of Jackson et al and Lopez et al do not specifically teach <5 Zr atoms/nm2 as per applicant claim 19, or >0.025 and <2.5 as per applicant claim 25, since the combined references teach all of the claimed reagents (Zr(acac)4, Cs and porous silica support), composition and method of making a catalyst, the physical properties of the modified metal (i.e., <5 Zr atoms/nm2, or >0.025 and <2.5 groups /nm2) would necessarily follow as set forth in MPEP 2112.01(II)
Regarding claims 20 and 47-49, as discussed above, the process of taught by the combined references of Jackson et al. and Lopez et al. comprises impregnation of silica in zirconium acetylacetonate Zr(acac)4 solution for the modification.
As such, it would expect to all surface area and pores of the porous silica support are fully loaded (at least 95%) with the Zr(acac)4. It reads on the instant claimed limitations of at least 25%, 50%, 75% or 95% respectively of modifier mononuclear of Zr present on the silica porous support.
Regarding claim 27, as discussed above, the process of the combined references of Jackson et al. and Lopez et al. comprises over 99% purity of uncalcined porous silica as the instant claim in the catalyst ([0045], claims 1 and 7).
Regarding claim 28, as discussed above, Jackson et al teach the silica employed in the form of spheres of diameter in the range 2-4 mm having a purity of over 99%, a total surface area of about 300-350 m2/g and a pore volume of 1.04 cm3/g with 76% of the pore volume provided by pores having a diameter in the range 7-23 nm ([0033]). It reads on the instant claimed uncalcined metal modified porous support.
Although the combined references of Jackson et al and Lopez et al do not specifically teach an average pore size between 2 and 1000 nm as per applicant claim 28, the silica with the pore size is belongs to a single grouping of patentably indistinct species of obvious variants of silica taught by the combined references of Lopez et al. and Jackson et al.
Applicant was required on 03/12/2024 under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits.
Applicant elected a single grouping of patentably indistinct species silica.
According to MPEP that “Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.”
In this case, the examiner found SiO2 is the silica support species in the prior art of Lopez et al. and Jackson et al., they are used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Regarding claim 29, as discussed above, the process taught by the combined references of Jackson et al. and Lopez et al. teach all of the claimed reagents, composition and method of making a catalyst, the physical properties of the modified metal (i.e., as being an adsorbate on the silica support surface, etc.) would necessarily follow as set forth in MPEP 2112.01(II).
Regarding claims 30 and 32-36, as discussed above, the process taught by the combined references of Jackson et al. and Lopez et al. comprises 1-10%wt of Cs based on the total amount of silica. And the modified metal zirconium is 0.25-2gram atoms/per 100 moles silica (Jackson et al., claims 1 and 9).
The differences in concentration will not support the patentability of subject matter, this is a case of prima facie obviousness, as one having ordinary skill in the art at the time the invention was made, given the general conditions taught by Jackson et al. and Lopez et al.
Regarding claim 31, as discussed above, the process taught by the combined references of Jackson et al. and Lopez et al. comprises 1-10%wt of Cs based on the porous silica. And the modified metal zirconium is 0.25-2gram atoms/per 100 moles silica (Jackson et al., claims 1 and 9).
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988). MPEP 2144.
Regarding claims 37-38, as discussed above, Jackson et al teach the silica employed having a pore volume of 1.04 cm3/g with 76%of the pore volume provided by pores having a diameter in the range 7-23 nm ([0033]). It reads on the instant claimed uncalcined metal modified porous support.
Regarding claim 44, as discussed above, the process taught by the combined references of Jackson et al. and Lopez et al. comprises Zr(acac)4 as mononuclear of Zr as the instant claim.
Regarding claim 45, as discussed above, the combined references of Jackson et al Lopez et al. teach a method of making uniform distribution silicon ions when they are surrounded by hydroxyls, even when they are on surface (Lopez et. al. page 218).
As such, when the silica is impregnated in Zr(acac)4, the zirconium ion would expect to uniformly distributed throughout the surface of the silica support as the instant claim.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 06/04/2026 have been considered but are moot in view of the new grounds of rejections.
Conclusion
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/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).
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