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 .
Status of Claims
Claims 1 – 18 are pending.
Claims 1 - 18 are rejected.
Claim 19 is objected.
Information Disclosure Statement
The listing of references listed in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.”
Some of the references cited in the PCT international search report by the China National Intellectual Property Administration have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action.
The Chang Chinese Master’s Thesis references cited in the international search report have not been considered.
Applicant is advised that the date of submission of any item of information in the international search report will be the date of submission of the IDS for purposes of determining compliance with the requirements for the IDS with 37 CFR 1.97, including all timing statement requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
Claim 4 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 4, dependent on claim 3, recites “a solid-to-liquid ratio of terephthalic acid to DMF…” in line 2. However, claim 3 depends on claim 1 which references terephthalic acid and claim 3 makes reference to 2-amoniterephthalic acid. It is not clear from claim 4 which is being referenced, terephthalic acid or 2-amnoterephthalic acid. For this reason the claim lacks clarity and is indefinite.
Based upon the review of paragraphs [16] and [17] of Applicant’s disclosure it appears that the claim language should be amended to mirror the language of paragraph [17].
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang et al. (Molecular Catalysis, 2017).
The rejected claim covers, inter alia, Pt-based alloy/MOF.
Chang discloses PtCo@UiO-66(x:y) and PtCo/UiO-66. (pp.78, 2.1. & 2.2).
Applicant is reminded that claim 13 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
The PTO takes the following position with respect to Product- by-Process claims, As stated in ln re Thorpe, 777 F.2d 695, 697, 698,227 USPQ 964, 966 (Fed. Cir. 1985): Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
In Examination, “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221,223 (CCPA 1979). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Additionally, once the Examiner establishes that a product, recited in terms of its process of making, is prima facie unpatentable due to anticipation, Appellants bear the burden of proving "that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." Id. at 698 (quoting In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Chang. Therefore, the claim is anticipated by the prior art.
Claim Rejections - 35 USC § 102
Claim(s) 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 108097315A) (see English translation).
The rejected claim covers, inter alia, Pt-based alloy/MOF.
Liu discloses Pt/NH1-UiO-66 in Example 3. (pp. 6).
Applicant is reminded that claim 13 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Liu. Therefore, the claim is anticipated by the prior art.
Claim Rejections - 35 USC § 102
Claim(s) 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zahid et al. (Catalysis Science & Technology, 1/23/2021).
The rejected claim covers, inter alia, Pt-based alloy/MOF.
Zahid discloses Pt/MIL-101(Cr) and Pt-Co/MIL-101(Cr). (pp. 2435 left col. & pp.2436 Table 1).
Applicant is reminded that claim 13 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Zahid. Therefore, the claim is anticipated by the prior art.
Claim Rejections - 35 USC § 102
Claim(s) 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang et al. (Molecular Catalysis, 2017)..
The rejected claim covers, inter alia, application of the Pt-based alloy/MOF in a selective hydrogenation reaction.
Chang discloses PtCo@UiO-66(x:y) and PtCo/UiO-66. (pp.78, 2.1. & 2.2). Additionally, Chang discloses the liquid phase hydrogenation of nitrobenzene with PtCo@UiO-66. (pp. 78, rt. col. 2.4 &). Also, hydrogenation of 1-hexene and tetraphenylethylene. (pp. 81, left col. last para.).
Claim Rejections - 35 USC § 102
Claim(s) 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zahid et al. (Catalysis Science & Technology, 1/23/2021).
The rejected claim covers, inter alia, application of the Pt-based alloy/MOF in a selective hydrogenation reaction.
Zahid discloses Pt/MIL-101(Cr) and Pt-Co/MIL-101(Cr). (pp. 2435 left col. & pp.2436 Table 1). Additionally, Zahid discloses liquid phase selective hydrogenation of cinnamaldehyde (CAL) to cinnamyl alcohol (COL) with Pt-Co/MIL-101(Cr). (pp. 2440, 3.2).
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.
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.
Claim(s) 1, 2, 8, 9, 10, 11, 12, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (Molecular Catalysis, 2017), in view of Ye et al. (Applied Nano Materials, 2020), in view of Vakili et al. (Journal of Catalysis, 2020) and further in view of Lin et al. (CN 112108185) (see English translation).
The rejected claims cover, inter alia, a method for preparing a Pt-based alloy / MOFs catalyst, wherein the method comprising the following steps: adding a MOFs carrier to DMF, dispersing and stirring at room temperature, then adding platinum acetylacetonate and terephthalic acid, continuing to stir at room temperature, adding a certain amount of acetylacetone metal salt, then stirring at room temperature, placing the resulting solution at 140-160°C for continuous stirring for 10-15 h, and then performing centrifugation, washing and drying to obtain the Pt-based alloy / MOFs catalyst.
Dependent claim 2 further limits the MOFs UiO-66. Dependent claim 8 further limits the acetylacetone metal salt. Dependent claim 9 further limits the ratio of MOFs carrier to DMF. Dependent claim 10 further limits the ratio of Pt acetylacetonate to DMF and the ratio of terephthalic acid to DMF. Dependent claim 11 further acetylacetone metal salt to DMF. Dependent claim 12 further limits the purification process for the Pt-based alloy / MOFs catalyst.
Independent claim 13 clams Pt-based alloy / MOFs catalyst. Dependent claim 14 claims the catalyst PtFe2/Uio-66.
However, Chang on page 78 is section 2.2 discloses:
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The difference between the instantly claimed invention and Chang is as follows: defining room temperature stirring; the order of mixing the MOF, platinum acetylacetonate and terephthalic acid to the DMF; the order of adding the acetylacetone metal salt; the acetylacetone metal salt includes ferrous acetylate or nickel acetylacetonate; the ratio of MOFS to carrier DMF; the ratio of Pt acetylacetonate to DMF and the ratio of terephthalic acid to DMF; and acetylacetone metal salt to DMF
However, regarding room temperature stirring the can be considered a conventional technical means in the art. For instance, in the catalyst preparation method of Ye, the ZrCl4 and 1.4-benzenedicarboxylic acid were mixed and dissolved in N,N’dimethylformamide (DMF) under sonication. Then the solution of H2PtCl6•6H2O and glacial acetic acid were added to the mixture at room temperature. The mixture was stirred for 30 min and transferred into a Teflon-lined autoclave and further reacted at 160°C for 24 hr. These limitations of stirring at room temperature are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Regarding the order of mixing the MOF, platinum acetylacetonate and terephthalic acid to the DMF; and the order of adding the acetylacetone metal salt the Examiner turns to the teaching of Chang. In the process of Chang DMF is the solvent and a reducing agent. In claim 1 DMF is a solvent and reducing agent. Changing the sequence of adding ingredients is prima facia obvious. Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Selection of any order of mixing ingredients is prima facie obvious. (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
With regard to the acetylacetone metal salt includes ferrous acetylate or nickel acetylacetonate; the Examiner turns to the teachings of Vakili and Lin. Vakili discloses PtNi bimetallic structure supported on UiO-66. In the process of Vakili zirconium (IV) chloride, platinum (II) acetylacetonate, nickel (II) acetylacetonate and 4,4’-biphenyldicaroblyic acid were used to prepare the catalyst. (pp. 523, rt. col. 2.1). Lin discloses the preparation of the catalyst Fe/UiO-66 in Example 3. (pp. 6).
Because each of the references teach methods for preparing active metal supported on a zirconium-based MOFs as a catalyst, it would have been obvious to one skilled in the art to substitute the cobalt of Chang with the nickel of Vakili or the ferrous of Lin in the process of Chang, to achieve the predictable result of preparing a catalyst of Pt-M bimetallic nanoparticles encapsulated withing MOFs.
Therefore, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
With regard to the ratio of MOFS to carrier DMF, the ratio of Pt acetylacetonate to DMF and the ratio of terephthalic acid to DMF; and ratio of acetylacetone metal salt to DMF, the Examiner turns o the teaching of Chang. In the teaching of Chang one-step incorporation of Pt-Co alloy NPs into MOFs, the ZrCl4 (0.343mmol), benzene-1,4-dicarboxylic acid (0.343 mmol) with a required amount of acetic acid were dissolved in DMF (40mL). The platinum (II) acetylacetonate Pt(acac)2 and cobalt (II) acetylacetonate Co(acac)2 were added with different molar rations to the solution. (pp. 78, 2.1) In the instance wherein a pre-synthesized UiO-66 is used for doping with Pt-Co, 100 mg of UiO-66 was dispersed in 10 ML of DMF forming a solution that was subjected to ultrasonication at room temperature. According to the teaching of Chang, the desired amount of Pt(acac)2 and Co(acac)2 were added to the mixture. As such, from the teaching of Chang the various ratios between MOFs to DMF or Pt(acac)2 and Co(acac)2 to DMF or the ratio of ), benzene-1,4-dicarboxylic acid (0.343 mmol) to DMF can all be determined by routine experimentation based on the desires of one of ordinary skill in the art. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. “In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Claim Rejections - 35 USC § 103
Claim(s) 1, 2, 3 - 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (Molecular Catalysis, 2017), in view of Liu et al. (CN108097315) (see English translation).
The rejected claims cover, inter alia, a method for preparing a Pt-based alloy / MOFs catalyst, wherein the method comprising the following steps: adding a MOFs carrier to DMF, dispersing and stirring at room temperature, then adding platinum acetylacetonate and terephthalic acid, continuing to stir at room temperature, adding a certain amount of acetylacetone metal salt, then stirring at room temperature, placing the resulting solution at 140-160°C for continuous stirring for 10-15 h, and then performing centrifugation, washing and drying to obtain the Pt-based alloy / MOFs catalyst.
Dependent claim 2 further limits the MOFs to UiO-66-NH. Dependent claim 3 discloses the method for preparing UiO-66-NH2 by adding zirconium tetrachloride and 2-aminoterephthalic acid to DMF, then adding acetic acid, stirring at room temperature, then reacting under high temperature of 110-130°C and high pressure for 10-15 h, and finally performing centrifugation, washing and drying to obtain the UiO-66-NH2. Dependent claim 4 further limits the ratio of terephthalic acid to DMF. Dependent claim 5 further limits the ratio of zirconium tetrachloride to DMF. Dependent claim 6 further limits the ratio of acetic acid to DMF. Dependent claim 7 further limits the purification process of the produced UiO-66-NH2.
However, Chang discloses on page 78 at 2.1:
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The difference between Chang and the instantly claimed invention is as follows: the MOF is UiO-66-NH2, the method of preparing UiO-66-NH2; the ratio of terephthalic acid to DMF; the ratio of zirconium tetrachloride to DMF; the ratio of acetic acid to DMF; and the purification process of the produced UiO-66-NH2.
However, with regard to the MOF is UiO-66-NH2, the method of preparing UiO-66-NH2; and the purification process of the produced UiO-66-NH2; the Examiner turns to the teaching of Liu, The prior art of Liu discloses the method for synthesizing UiO-66-NH2 that can be used to support precious metal salt hydrogenation catalyst. The method entails (1) Weigh 30-70 mg of zirconium source, 100-150 mg of organic ligand, 0.5-4 ml of acidic solution and 1-10 ml of dimethylformamide, mix them evenly, and then hydrothermally treat them at 100-150℃ for 1-5 h to obtain a mixture. (pp. 2 [0008]. The zirconium source mentioned in step (1) is one of zirconium chloride and zirconium nitrate; the organic ligand is one of 2-aminoterephthalic acid and 3-aminophthalic acid; and the acidic solution is one of hydrochloric acid and glacial acetic acid. (pp. 2 [0009]). (2) Let the mixture in step (1) stand at room temperature for 12-48 hours, then centrifuge to obtain the precipitate, and then wash it with dimethylformamide and anhydrous ethanol 2-4 times respectively. Finally, vacuum dry it at 50-80°C for 12-48 hours to obtain NH2-UiO-66. (pp. 2 -3 [0010]).
The NH2-UiO-66 obtained in step (2) is placed in a noble metal salt solution with a mass concentration of 1-2%, stirred for 10-48h, then washed with acetone, and vacuum dried at a temperature of 50-80℃ for 12-48h to finally obtain the supported NH2-UiO-66 hydrogenation catalyst. (pp. 3 [0011]). The precious metal salt mentioned in step (3) is one of ruthenium nitrate, rhodium chloride, palladium nitrate, and platinum chloride. (pp. 3 [0012]). The loaded noble metals can be applied to the hydrogenation catalytic reaction of vanillin. (pp.2, [0005]
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to modify the process of Chang and synthesize a MOF support of NH2-UiO-66 according to the teaching of Chang, by substituting the benzene 1,4-dicarboxylic acid of Chang with 2-aminoterephthalic acid of Liu to modify the one-step incorporation of the Pt-Co alloy NPs into the MOF of NH2-UiO-66. Motivation is found in the teaching of Liu wherein the NH2-UiO-66 is produced by a method similar to Chang wherein the base of the support is a zirconium chloride and like Chang an organic ligand is in use. Further, the NH2-UiO-66 is shown to support Nobel metals( i.e. platinum) that are used in selective hydrogenation of vanillin, a phenolic aldehyde. (abstract).
Therefore, all the claimed elements were known in the prior art and one skilled in the art could have modified or combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the instantly claimed invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
With regard to the ratio of terephthalic acid to DMF; the ratio of zirconium tetrachloride to DMF; and the ratio of acetic acid to DMF, the Examiner turns to the teaching of Liu. In the method of Liu (1) Weigh 30-70 mg of zirconium source, 100-150 mg of organic ligand, 0.5-4 ml of acidic solution and 1-10 ml of dimethylformamide, mix them evenly, and then hydrothermally treat them at 100-150℃ for 1-5 h to obtain a mixture. (pp. 2 [0008]. As such, from the teaching of Liu Chang the various ratios between terephthalic acid to DMF, zirconium tetrachloride to DMF, the ratio of acetic acid to DMF, can all be determined by routine experimentation based on the desires of one of ordinary skill in the art. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. “In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Claim Rejections - 35 USC § 103
Claim(s) 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (Molecular Catalysis, 2017), in view of Zahid et al. (Catalysis Science & Technology, 1/23/2021).
The rejected claims cover, inter alia, a method for preparing a Pt-based alloy / MOFs catalyst as discussed in paragraph 42 above.
Dependent claim 2 further limits the MOFs to MIL-101(Cr).
The difference between Chang and the instantly claimed invention is that the MOF is MIL-101(Cr).
However, Zahid discloses Pt/MIL-101(Cr) and Pt-Co/MIL-101(Cr). (pp. 2435 left col. & pp.2436 Table 1). Additionally, Zahid discloses liquid phase selective hydrogenation of cinnamaldehyde (CAL) to cinnamyl alcohol (COL) with Pt-Co/MIL-101(Cr). (pp. 2440, 3.2).
It was known in the art before the effective filing date of the instantly claimed invention that MIL-101(Cr) based on the teaching of Zahid the MIL-101(Cr) bimetallic nanoparticles therein producing supported hydrogenation catalyst. Zahid teaches that MIL-101(Cr) is one of a finite number of metal-organic framework supports useful for supporting heterogenous catalyst comprised of transition metals and noble metals. Furthermore, Zahid teaches that Pt-Co catalyst support on MIL-101(Cr) are useful in the liquid phase selective hydrogenation of Cinnamaldehyde to cinnamyl alcohol. (pp. 2435 2.4).
In light of the higher yield and selectivity of the cinnamyl alcohol reported by the support catalyst of Zahid, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to try to include MIL-101(Cr) as support for bimetallic nanoparticles of transition metals and/or noble metals in place of the UiO-66 of Change..
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common senses. In this instance the fact that a combination was obvious to try might show that it was obvious under §103, KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Claim Rejections - 35 USC § 103
Claim(s) 13 and 15 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Zahid et al. (Catalysis Science & Technology, 1/23/2021).
Rejected claim 13 covers, inter alia, Pt-based alloy / MOFs catalyst prepared by the preparation method according to claim 1.
Rejected claim 15 covers, inter alia, application of the Pt-based alloy / MOFs catalyst according to claim 13 in a selective hydrogenation reaction.
Dependent claim 16 further limits the selective hydrogenation reaction of α, β-unsaturated aldehyde. Dependent claim 17 further limits the aldehyde to cinnamaldehyde. Dependent claim 18 further limits the hydrogenation reaction steps.
However, Applicant is reminded that claim 13 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Zahid.
Further, regarding claims 15 - 17, Zahid discloses liquid phase selective hydrogenation of cinnamaldehyde (CAL) to cinnamyl alcohol (COL) with Pt-Co/MIL-101(Cr). (pp. 2440, 3.2). Cinnamaldehyde is an α, β-unsaturated aldehyde. Also, disclosing the hydrogenation of furfural (FFL) for FOL. (
The difference between Zahid and the instantly claimed process is the method of hydrogenating the cinnamaldehyde. Zahid discloses
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(pp. 24335; see 3.2.2).
Changing the sequence of adding ingredients is prima facia obvious. Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Selection of any order of mixing ingredients is prima facie obvious. (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Claim Rejections - 35 USC § 103
Claim(s) 13, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (Metal-Organic Frameworks, 2020).
Rejected claim 13 covers, inter alia, Pt-based alloy / MOFs catalyst prepared by the preparation method according to claim 1.
Rejected claim 15 covers, inter alia, application of the Pt-based alloy / MOFs catalyst according to claim 13 in a selective hydrogenation reaction.
Dependent claim 16 further limits the selective hydrogenation reaction of 3-nitrostyrene.
However, Applicant is reminded that claim 13 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Xu.
Regarding claims 15 and 16 the Examiner turns the teaching of Xu. The prior art of Xu discloses Pt-Ni NF@Ni-MOF-74. (abstract). The Pt-Ni NF@Ni-MOF-74 is used in the selective hydrogenation of p-nitrostyrene by ammonia borane.
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art of record teaches or suggest the hydrogenation of 3-nitrostyrene in the presence of ethanol and wherein the catalyst was a Pt-based alloy/MOF, and under the disclosed reaction conditions..
Conclusion
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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