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 44-45 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 Claims 3-4, 21 and 46 are withdrawn from consideration.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. Claims 15 and 27 are amended.
Previous Grounds of Rejection
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as using the word “moiety” with respect to claim 1 is withdrawn because applicant arguments/Remarks filed on 12/15/2025 is persuasive.
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claim 1 is withdrawn because applicant stated the modified metal is present in mono- or dinuclear modifier metal moieties in both step a) and after step e) in Arguments/Remarks filed on 12/15/2025.
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the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claim 15 is withdrawn.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 stands.
Regarding claims 19, 30 and 33-36, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being the using the phase “a level of” is withdrawn because applicant arguments/Remarks filed on 12/15/2025 is persuasive.
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 amended as set forth below.
Previous & Amended Grounds 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, , 7, 10, 15, 17-20, 22, 25, 27-38 and 44-45 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.
It unclear the limitation of “at least 25% , of the said modifier meal on the uncalcined metal modified porous support or catalyst” is calculated based on a weight percent or a mole percent. Clarification and 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 Lin et al. (CN 108855238 A, Machine-generated English translation is attached).
Regarding claim 1, Jackson et al. teach a method for producing a porous material supported catalyst comprising impregnating an aqueous solution of zirconium nitrate 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 cm2/ 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, Lin et al. teach a method for producing a porous material supported catalyst comprising forming a carrier containing alumina with auxiliary agent containing at least one silicon oxide and zirconium additive selected from zirconium nitrate and zirconium oxalate (the claimed modified metal in mono or dinuclear catalytic metal with the dicarboxylic acid ligands) ([0025]-[0032], [0045], claims 1-12). It is known silicon dioxide can be porous or non-porous forms.
In light of the disclosure of Lin et al. of the equivalence and interchangeability of zirconium nitrate as disclosed in Jackson et al. ([0034]), with a modifier metal o zirconium oxalate as presently claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filling date of the claimed invention to substitute the zirconium nitrate of Lin et al. and Jackson et al. with the zirconium oxalate taught by Lin et al. as an modified metal to obtain the invention as specified in the claim 1, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Regarding claim 7, as discussed above, the process taught by the combined references of Jackson et al. and Lin 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 Lin et al do not specifically teach hydrogel or xerogel as per applicant claim 10, the hydrogel or xerogel are belongs to a single grouping of patentably indistinct species of obvious variants of silica taught by Lin 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 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 Lin 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 Lin et al. comprises zirconium oxalate as the instant claimed modified metal impregnated and adsorbed on the surface silica as the instant claims ([0009], [0012], and [0024]).
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 Lin et al. comprises an alkali metal Cs as the instant claim (Jack et al., [0034]).
Regarding claims 19 and 25, as discussed above, the process taught by the combined references of Jackson et al and Lin et al. comprises <5%wt. of zirconium in the catalyst (Jack et al. [0035]-[0059]; Lin et al. claims 1 and 7).
Although the combined references of Jackson et al and Lin 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, the modifier metal Zr at a level of <5 metal atoms/nm2 are belongs to a single grouping of patentably indistinct species of obvious variants of Zr taught by Lin 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 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 zirconium species in the prior art of Lin 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 20, as discussed above, the process of Lin et al. comprises up to 5%wt. of zirconium in the catalyst (claims 1 and 7).
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 claim 22, although the combined references of Jackson et al. and Lin et al do not specifically teach silanol at a level of <2.5 groups/nm2 as per applicant claim 22, the silanol at a level of<2.5 groups/nm2 is belongs to a single grouping of patentably indistinct species of obvious variants of silica taught by Lin 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 Lin 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 27, as discussed above, the process of the combined references of Jackson et al. and Lin 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 cm2/ 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 Lin 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 Lin 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 Lin 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 Lin 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 Lin 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 Lin et al.
Regarding claim 31, as discussed above, the process taught by the combined references of Jackson et al. and Lin 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 cm2/ 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 Lin et al. comprises zirconium oxalate as mononuclear of Zr as the instant claim (Lin et al. [0045).
Regarding claim 45, as discussed above, the combined references of Jackson et al Lin et al. teach a method of making uniform distribution auxiliary agent of zirconium into the carrier (Lin et al., Abstract).
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments with respect to claims 1, 7, 10, 15, 17-20, 22, 25, 27-38 and 44-45 filed on 12/15/2025 have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Regarding claim 20 rejected under 35 USC 112 (b), Applicant argued that the skilled person understands that the proportion of modifier metal could be measured using either weight (wt%) or moles (mol%), which is within the common general knowledge, and in any case would result in the same %.
The Office respectfully submits, as discussed in the previous office action dated on 08/15/2025, mole percent and weight percent are differ fundamentally in their basis of calculation application. These differences are crucial for accurate representation and manipulation of chemical composition in the claim.
Therefore, the rejection is proper and stands.
Applicant further argued Lin et al. relates to a different carrier (alumina vs silica), a different catalyst (silver vs alkali metal), and a different reaction (production of ethylene oxide vs unsaturated acids or ester). A skilled person would simply not combine the teaches of these different system.
Lin does not disclose mono- or dinuclear modifier metal moieties. Lin discloses an additive may be “at least one of an alkaline earth metal additive, a silicon additive and a zirconium additive” ({0031]). Therefore, in addition to selecting a silicon additive above under (1), the Examiner also requires selecting a zirconium additive. The nuclearity of the zirconium additive in Lin is not disclosed.
Annex 1, submitted by applicant, is evidence that zirconium oxalate cannot be assumed to be mononuclear (Remarks, pages 13-16).
In response to applicant's argument that Lin et al. is nonanalogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
The Office respectfully disagrees. Jackson et al. teach a method for producing a porous material supported catalyst comprising impregnating an aqueous solution of zirconium nitrate 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 cm2/ 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, Lin et al. teach a method for producing a porous material supported catalyst comprising forming a carrier containing alumina with auxiliary agent containing at least one silicon oxide and zirconium additive selected from zirconium nitrate and zirconium oxalate (the claimed modified metal in mono or dinuclear catalytic metal with the dicarboxylic acid ligands) ([0025]-[0032], [0045], claims 1-12). It is known silicon dioxide can be porous or non-porous forms.
The porous material supported catalyst taught by Jackson et al. and Lin et al. include silica and alumina (Jackson et al. [0011]; Lin et al. claims 1-7) and modifier meal compound of zirconium nitrate.
In light of the disclosure of Lin et al. of the equivalence and interchangeability of zirconium nitrate as disclosed in Jackson et al. ([0034]), with a modifier metal o zirconium oxalate as presently claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filling date of the claimed invention to substitute the zirconium nitrate of Lin et al. and Jackson et al. with the zirconium oxalate taught by Lin et al. as an modified metal to obtain the invention as specified in the claim 1, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
As set forth in the previous Office Action dated on 08/15/2025, Lin et al. states that “Auxiliary agent containing Zr oxalate (Lin et al. [0045 ]) having dicarboxylic acid oxalate ligand with lone pair containing oxygen atoms able to form 5 membered rings which reads on the instant claimed mono-nuclear modifier zirconium metal moieties”. It corresponds to the instant Specification description “Typically, the modifier metal complex is an organic complex, with one or more organic polydentate chelating ligands, or alternatively a complex with sterically bulky monodentate ligands effective to stabilize the nuclearity”, and “Suitable chelating ligands herein may be non-labile ligands optionally selected from molecules with lone pair containing oxygen or nitrogen atoms able to form 5 or 6 membered rings with a modifier metal atom” ([0023] and [0034], PGPUB US 2022/0184593 A1).
Annex 1 and references cited in (Gable et al. reference #32) clearly teach the preparation of mononuclear anhydrous oxalate Zr(C2O4)2 by precipitation from a methanol solution (lines 28-29 from the bottom on the left column on page 21262). Dihydroxide zirconium oxalate Zr(OH)2(C2O4) (ZrOx) recited in Annex 1 is zirconium-based oxalate, is not the mononuclear anhydrous oxalate Zr(C2O4)2 taught by Lin et al.
Applicant’s arguments against the reference of Lin et al. are not found persuasive.
Because, note that while Jackson et al. do not disclose all the features of the present claimed invention, Lin 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 Zr(C2O4)2, and in combination with the reference of Jackson et al, discloses the presently claimed invention as set forth in the office action mailed on 08/15/2025.
As such, the rejection of claims 1 as set forth in the office action above, is proper and stands.
The rejection for the remaining claims were either directly or indirectly dependent thereon stands.
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 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).