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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/17/2026 has been entered.
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, 4, 6, 8, 11-21, and 59 are rejected under 35 U.S.C. 103 as being unpatentable over Takahara et al. (JP 2006239557 A) (Takahara).
The Examiner has provided a machine translation of JP 2006239557 A. The citation of the prior art in this rejection refer to the machine translation.
Regarding claims 1, 4, 6, and 8, Takahara teaches a catalyst consisting of copper oxide, zinc oxide, zirconium oxide (i.e., zirconium component; claim 8), aluminum oxide, manganese oxide, and alkali metal, wherein copper oxide is included in an amount of 20-70 wt%, aluminum oxide is included in an amount of 1 to 50 wt% (i.e., claim 6), zirconium oxide is included in an amount of 1 to 50 wt%, and manganese is included in an amount of 0 to 25 wt% (i.e., claim 4), which overlaps with the ranges of the presently claimed (Takahara, Abstract).
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, while Takahara does not explicitly teach the zirconium oxide being a “binder” as presently claimed, given the zirconium oxide in the catalyst of Takahara is identical to the binder in the present invention (i.e., claim 8), it is clear that the zirconium oxide in the catalyst of Takahara is capable of functioning as a binder in Takahara, as presently claimed.
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).
Further, while Takahara does not teach the catalyst comprises less than 1.5 wt% of silicon or an oxide thereof, Takahara does not have any teaching requiring silicon or any embodiments including silicon or an oxide thereof. Therefore, it is clear the catalyst of Takahara does not require or include silicon or an oxide thereof.
Further, while it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on the applicant to show that the additional ingredients in the prior art, i.e., zinc oxide, would in fact be excluded from the claims and that such ingredients would materially change the characteristics of the applicant’s invention, See MPEP 2111.03.
Further, while there is no disclosure that the catalyst is a “hydrogenation/hydrogenolysis catalyst” as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. as a hydrogenation/hydrogenolysis catalyst, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Further, the recitation in the claims that the hydrogen/hydrogenolysis catalyst is “useful for the production of fatty alcohols from fatty acid esters” is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Takahara discloses a catalyst as presently claimed, it is clear that the catalyst of Takahara would be capable of performing the intended use, i.e., for the production of fatty acid alcohols from fatty acid esters, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 11, Takahara teaches the hydrogenation/hydrogenolysis catalyst of claim 1, wherein the catalyst comprises aluminum oxide (i.e., alumina) (Takahara, Abstract). While Takahara does not teach the aluminum oxide as being “a binder”, as presently claimed, given the aluminum oxide in the catalyst of Takahara is identical to the binder used in the present invention, it is clear that the aluminum oxide in the catalyst of Takahara is capable of functioning as a binder in Takahara, as presently claimed.
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 claim 12, Takahara teaches the hydrogenation/hydrogenolysis catalyst of claim 1, wherein the catalyst includes an alkali metal component (Takahara, Abstract).
Regarding claim 13, Takahara teaches the hydrogenation/hydrogenolysis catalyst of claim 12, wherein the alkali metal element may be sodium (Takahara, p. 3, Paragraph 5).
Given that Takahara discloses the catalyst that overlaps the presently claimed hydrogenation/hydrogenolysis catalyst, including sodium as the alkali metal, it therefore would be obvious to one of ordinary skill in the art, to use the sodium, which is both disclosed by Takahara and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 14, Takahara teaches the hydrogenation/hydrogenolysis catalyst of claim 12, wherein the alkali metal is included in an amount of 0.5 to 10 wt% (Takahara, Abstract), 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 claims 15-21, Takahara teaches the hydrogenation/hydrogenolysis catalyst of claim 1, wherein the catalyst is calcined and tableted by an appropriate method (i.e., extruding) (Takahara, p. 3, Paragraphs 5 and 6) (i.e., claims 16 and 20), but does not explicitly teach (a) the hydrogenolysis catalyst is in an unreduced form and exhibits an X-ray powder diffraction profile with 2θ peaks at 18.9°, 31.1°, 32.5°, 36.0°, 36.8°, 38.8°, 44.6°, 48.8°, 53.6°, 58.3°, 59.1°, 61.7°, 64.9°, 66.8°, 68.1°, 72.2°, 75.1°, and 77.0°; (b) the hydrogenolysis catalyst exhibits a pore volume of greater than 0.25 cm3/g; (c) the hydrogenolysis catalyst exhibits a packed bulk density of about 0.8 g/cm3 to about 1.5 g/cm3; and (d) the hydrogenolysis catalyst has a BET surface area from about 15 m2/g to about 70 m2/g.
However, Takahara teaches the method of making the catalyst comprises: (a) dissolving starting materials in water, (b) drying the precipitate; and (c) calcining the precipitate at 300-650°C (Takahara, p. 4, Example 1; p. 3, Paragraph 5). Takahara further teaches the catalyst may also be shaped (Takahara, p. 3, Paragraph 6).
While the instant disclosure teaches a method of making the hydrogenolysis catalyst comprises: (a) mixing a catalytic component with a binder system and water to obtain a material mixture (Specification, [0043]) and removing at least some of the water through drying (Specification, [0051]), which corresponds to steps (a) and (b) of Takahara; (b) forming the material mixture to obtain a formed material mixture (Specification, [0043]); and (c) calcining the formed material mixture at a temperature from about 200°C to about 1000°C to cure form the calcined hydrogenolysis catalyst (Specification, [0043]; [0048]), which corresponds to step (c) of Takahara.
Therefore, as Takahara teaches the catalyst and method of making that is substantially identical to the present claims and method of making disclosed in the Specification, the catalyst would inherently have (a) prior to reduction, an X-ray powder diffraction profile with 2θ peaks at 18.9°, 31.1°, 32.5°, 36.0°, 36.8°, 38.8°, 44.6°, 48.8°, 53.6°, 58.3°, 59.1°, 61.7°, 64.9°, 66.8°, 68.1°, 72.2°, 75.1°, and 77.0° (i.e., claims 15 and 21); (b) a pore volume of greater than 0.25 cm3/g (i.e., claim 17); (c) a packed bulk density of about 0.8 g/cm3 to about 1.5 g/cm3 (i.e., claim 18); and (d) a BET surface area from about 15 m2/g to about 70 m2/g (i.e., claim 19).
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 claim 59, Takahara teaches a catalyst consisting of copper oxide, zirconium oxide (i.e., zirconium component), aluminum oxide, and manganese oxide, wherein copper oxide is included in an amount of 20-70 wt% and zirconium oxide is included in an amount of 1 to 50 wt%, which overlaps with the ranges of the presently claimed (Takahara, Abstract).
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).
Takahara further teaches the catalyst includes an alkali element in an amount of 0.5 to 10 wt% (Takahara Abstract).
The only deficiency of Takahara is that Takahara discloses the use of an alkali metal in an amount of 0.5 to 10 wt%, while the present claims require an alkali metal component in an amount from about 0.01 wt% to 0.4 wt%.
It is apparent, however, that the instantly claimed amount of 0.4 wt% and that taught by Takahara of 0.5 wt% are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 0.5 wt% disclosed by Takahara and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of alkali metal component, it therefore would have been obvious to one of ordinary skill in the art that the amount of 0.4 wt% disclosed in the present claims is but an obvious variant of the amounts disclosed in Takahara, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Further, while Takahara does not teach the zirconium oxide being “a binder” as presently claimed, given the zirconium oxide in the catalyst of Takahara is identical to the binder in the present invention (i.e., claim 8), it is clear that the zirconium oxide in the catalyst of Takahara is capable of functioning as a binder in Takahara, as presently claimed.
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).
Further, while there is no disclosure that the catalyst is a “hydrogenation/hydrogenolysis catalyst” as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., as a hydrogenation/hydrogenolysis catalyst, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Response to Arguments
Applicant primarily argues:
“If one looks to claim 1 as amended, the claimed hydrogenation/hydrogenolysis catalyst is "… useful for the production of fatty alcohols from fatty acid esters". This is not in the preamble of the claim, but is in the body of the claim (support for this is found, inter alia, at paragraphs [0002] and [0023] of the original specification). This technical feature is not an intended use, but connotes chemical structure that has a specified capability, a capability which is not shown in the Takahara reference.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
While applicant states the addition of “wherein the hydrogenation/hydrogenolysis catalyst is useful for the production of fatty alcohols from fatty acid esters” adds support for the catalyst being a hydrogenation/hydrogenolysis catalyst, it is the examiners position that the language “useful for” is additional intended use language.
The recitation in the claims that the catalyst is “useful for the production of fatty alcohols from fatty acid esters” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Takahara discloses a catalyst as presently claimed, it is clear that the catalyst of Takahara would be capable of performing the intended use, i.e., for the production of fatty alcohols from fatty acid esters, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Applicant further argues:
“The main structural difference (and there are others) between the Takahara reference and the presently claimed invention, is the presence of 10-60 wt% of ZnO in Takahara: the Takahara reference contains 10-60 wt% of ZnO, and that major structural difference makes its catalyst a water-gas shift catalyst, and not a hydrogenation/hydrogenolysis catalyst. The presence of significant quantities of zinc oxide in Takahara's catalyst confers a structural difference relative to the instant catalyst, which lacks zinc oxide. This traversed material needs to be answered, as required by MPEP 707.07(f). This is an important point to answer, since such structural difference would be one reason to consider the case/judicial law of In re Best to be inapplicable. Owing to this structural difference, no prima facie case of obviousness has been made.
…
To further clarify that the instantly claimed catalyst of claim 1 lacks zinc oxide, the claim has been amended to recite that the hydrogenation/hydrogenolysis catalyst is "consisting essentially of" the named components, thus excluding zinc oxide. The transitional phrase "consisting essentially of' limits the scope of a claim to the specified materials and those that do not materially affect the basic and novel characteristics of the claimed invention. The prior art Takahara composition has manifestly different basic and novel characteristics (it is a water-gas shift catalyst and there is no evidence that it is a hydrogenation/hydrogenolysis catalyst and indeed the Action has not provided scientific or engineering reasoning as to why it would be capable of behaving as a hydrogenation/hydrogenolysis catalyst). The publicly known characteristics of Takahara's catalyst -- on its face -- discharge any burden to show what the reference already teaches about itself. Owing to the exclusion of zinc oxide from instant claim 1, no prima facie case of obviousness has been made.
It is respectfully submitted that the Examiner appears to be using the disclosure of the Applicant to support the idea that Takahara's catalyst might behave as a hydrogenation/hydrogenolysis catalyst. That is the only possible source of "evidence" that Takahara's catalyst might behave as hydrogenation/hydrogenolysis catalyst, because that idea is certainly not present in the Takahara reference. And if so, this is not a permissible source of evidence (except in the case of an identical disclosure, which Takahara is admittedly not).”
Remarks, p. 9
The examiner respectfully traverses as follows:
Claim 1 recites “consisting essentially of” which is recognized to narrow the scope of the claim to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Therefore, the claim does not exclude zinc oxide.
Further, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the inclusion of zinc oxide causing a structural difference must be supported by a declaration or affidavit. As set forth in MPEP 716.01(c), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant further argues:
“Takahara teaches a carefully formulated catalytic composition for the water-gas shift reaction. The presence of zinc in the composition of Takahara is an "essential component" that materially affects the "basic and novel characteristics" of the composition. The Applicant has amended claim 1 to recite the transitional phrase "consisting essentially of” without including zinc in the composition. Because Takahara does not teach use of the composition without zinc, it is believed that the Examiner had not met the burden to present a prima facie case of unpatentability that the ordinarily skilled artisan would have found it obvious based on Takahara (or any other cited reference) to make the claimed subject matter composition. In re Herz, 537 F.2d 549, 551-552 (CCPA 1976). It is respectfully submitted that the Examiner has not adequately established why a person of skill in the art would remove zinc from Takahara's composition, and thus there is reversible error in the rejection.”
Remarks, p. 10
The examiner respectfully traverses as follows:
As stated above, the claim does not exclude zinc oxide, as “consisting essentially of” is construed as equivalent to “comprising”. Therefore, it is not necessary to establish why zinc oxide would not be included, and further there is no teaching in the instant application that teaches away from the inclusion of zinc oxide as having negative effects.
Applicant further argues:
“Furthermore, there is no reasonable expectation for success for Takahara's catalyst to be capable of acting as a hydrogenation/hydrogenolysis catalyst. A reasonable expectation for success must be based on what is known to the person having ordinary skill in the art -- a person who does not have benefit of the instant claims. Without the roadmap of the instant claims and disclosure, a person having ordinary skill in the art at the time the invention was made, would not have reasonably expected that Takahara's catalyst would be capable of acting as a hydrogenation/hydrogenolysis catalyst. Owing to the lack of a reasonable expectation for success for Takahara's catalyst to be capable of acting as a hydrogenation/hydrogenolysis catalyst (and especially, one that is " useful for the production of fatty alcohols from fatty acid esters", no primafacie case of obviousness has been made.”
Remarks, p. 11-12
The examiner respectfully traverses as follows:
As stated above, the catalyst acting as a hydrogenation/hydrogenolysis catalyst is merely an intended use, and as Takahara teaches a catalyst that comprises each of the components in the claimed range, Takahara meets the limitations of the claimed invention and therefore there is a reasonable expectation for success absent evidence, i.e., data, to the contrary.
Applicant further argues:
“The Examiner has tried to shift the initial burden to the Applicant by stating that "It is the examiner's position that the arguments provided by the applicant regarding zinc oxide making the catalyst of Takahara incapable of acting as a hydrogenation/hydrogenolysis catalyst must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g) [sic: no such section exists in MPEP], 'the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001'. As there is no evidence, i.e., data, to support that the catalyst of Takahara could not be used as a hydrogenation/hydrogenolysis catalyst, there is a reasonable expectation of success as all of the other components in Takahara are substantially identical to the claimed components".
This is respectfully traversed. The initial burden of production is on the Office to satisfy a prima facie case of obviousness.
In accordance with controlling Supreme Court precedent in Graham v. John Deere Co., 383 U.S. 1, 86 S. Ct. 684 (1966) & KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727 (2007), MPEP 2142 explains that the legal concept of prima facie obviousness is a procedural tool that allocates who has the burden of going forward with production of evidence in each step of the examination process. At the outset of examination, the patent examiner who issues an obviousness rejection bears the burden of explaining how a preponderance of the evidence supports the conclusion that the claims would have been obvious. The examiner bears the initial burden of using facts and reasoning to establish a prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence to show nonobviousness.
It is respectfully submitted that the examiner has, however, not used scientific or
technical facts and reasoning, but rather has repeatedly taken "positions", which does not evade the initial burden of making a prima face case of obviousness.”
Remarks, p. 12-13
The examiner respectfully traverses as follows:
Firstly, the examiner acknowledges the MPEP section 716.02(g) has been relocated to MPEP section 716.01(c).
Secondly, as the claims do not exclude zinc oxide, and Takahara teaches a catalyst comprising the components in the same weight percentage ranges as presently claimed, the catalyst of Takahara meets the limitations of the claimed invention absent evidence to the contrary, which is sufficient for a prima facie case of obviousness.
Applicant further argues:
“Also, the Takahara reference does not state that its water-gas shift catalyst "comprises less than 1.5 wt% of silicon or an oxide thereof'. It appears to be the examiner's position that the catalyst does not include silicon or an oxide thereof. But, the Takahara reference itself takes no steps to limit the presence of silicon or its oxide to such a low level. There is no evidentiary basis for asserting that Takahara does not include silicon or an oxide thereof. No steps have been performed in Takahara to exclude silicon or oxide thereof, and there is no evidentiary basis for any assertion that the absence of silicon or oxide thereof is "inherent" or "natural" in the catalyst of Takahara. No reasoning has been set forth for such absence, or for a level within the scope of or overlapping with the levels of the present claims. For at least this reason, it is respectfully requested that the Examiner reconsider the rejection set forth in the Action and withdraw it.”
Remarks, p. 13
The examiner respectfully traverses as follows:
As there is no teaching requiring silicon or any embodiments including silicon or an oxide thereof in Takahara, it is clear that silicon or an oxide thereof is not required and steps to limit silicon would be unnecessary as silicon is not required.
Applicant further argues:
“Claim 59 is even further removed from Takahara. In independent claim 59, the
hydrogenation/ hydrogenolysis catalyst of the instant claims requires the presence of an alkali metal component in an amount from about 0.01 wt% to 0.4 wt% (n.b.: the upper limit is not qualified with the word "about"). The Action admits that Takahara merely discloses the use of an alkali metal in an amount of 0.5 to 10 wt%, but alleges that "the instantly claimed amount of about 0.4 wt% and that taught by Takahara of 0.5 wt% are so close to each other" as to be not patentably distinct.
On the contrary, Takahara has a minimum content of alkali metal element of 0.5 wt% (lower limit of a range of 0.5 to 10% by weight for alkali metal element as an essential component). The minimum quantity of alkali metal in Takahara is greater than the maximum quantity of alkali metal component in instant claim 59. Therefore, for this reason and for the relevant reasons explained above, claim 59 should be considered allowable: the Takahara reference does not teach or suggest a hydrogenation/ hydrogenolysis catalyst; and the Takahara reference does not state that its water-gas shift catalyst "comprises less than 1.5 wt% of silicon or an oxide thereof; and does not teach or suggest the presence of an alkali metal component in an amount from about 0.01 wt% to 0.4 wt%. There is no motivation to modify the reference' value to be outside the scope of the reference' range. Allowance is therefore respectfully solicited.”
Remarks, p. 13-14
The examiner respectfully traverses as follows:
The fact remains the only deficiency of Takahara is that Takahara discloses the use of an akali metal in an amount of 0.5 to 10 wt%, while the present claims require 0.01 to 0.4 wt%.
It is apparent, however, that the instantly claimed amount of 0.4 wt% and that taught by Takahara of 0.5 wt% are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 0.5 wt% disclosed by Takahara and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of alkali metal component, it therefore would have been obvious to one of ordinary skill in the art that the amount of 0.4 wt% disclosed in the present claims is but an obvious variant of the amounts disclosed in Takahara, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Applicant further argues:
“This is respectfully traversed. Inherency requires certainty. This much is repeatedly spoken of in the MPEP, with bold in the original. The following is a quote from MPEP 2112(W)-Requirements of Rejection Based on Inherency; Burden of Proof:
"The Action has found generic parallels between the method-of-making in Takahara and that of the instant disclosure, where (significantly differing) catalytic precursors are mixed with binders and dried and calcined. However, it is respectfully submitted that the Action has neglected to note that the method-of-making of Takahara employs coprecipitation of a mixture of metal salts that comprise Zn2+ (zinc) salts in large quantities, the latter which is conspicuously absent from the examples of the presently claimed invention. Therefore, taking into account the very different chemistries, one would simply have no certainty that the same pore volume, or packed bulk density, or BET surface area, or X-ray diffraction pattern, would be obtained. It is not chemically reasonable to state that Takahara teaches a catalyst and method of making that is "substantially identical" to the present claims and method of making disclosed in the Specification. It is respectfully requested that the Examiner take these differences into account and find the dependent claims to be allowable.
The Examiner has persisted in rejections based on "inherency" and has not found the
above reasoning persuasive, even though Applicant has pointed out the incontrovertible fact that Takahara employs coprecipitation of a mixture of metal salts that comprise Zn2+ (zinc) salts in large quantities. The Examiner then reminds the Applicant to "... 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)".
It is respectfully submitted that the caselaw of In re Courtright is inapplicable, since it appears that the entirety of Takahara comprises Zn2+ (zinc) salts in large quantities, not just its examples.”
Remarks, p. 15-16
The examiner respectfully traverses as follows:
While applicant points to the inclusion of zinc to cause a lack of inherency, the fact remains that zinc is not excluded from the claims, and therefore, as the rest of the components are included in the catalyst of Takahara in the weight percentage ranges claimed, then there is a basis for inherency of the same characteristics in the catalyst of Takahara as those claimed.
Allowable Subject Matter
Claims 60-61 are allowed.
Takahara discloses a catalyst consisting of copper oxide, zinc oxide, zirconium oxide, aluminum oxide, manganese oxide, and alkali metal, wherein copper oxide is included in an amount of 20-70 wt%, aluminum oxide is included in an amount of 1 to 50 wt%, zirconium oxide is included in an amount of 1 to 50 wt%, and manganese is included in an amount of 0 to 25 wt% (Takahara, Abstract).
Takahara does not disclose or suggest that the catalyst consists of these components. Rather, Takahara discloses zinc oxide as an essential component (Takahara, Abstract) which is not included as part of the claimed components in claim 61 which recites “consisting of”.
Further, claim 60 is allowable as it is dependent on allowable claim 61.
Conclusion
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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