DETAILED ACTION
Claim 1 is amended.
Claim 18 is newly added.
Claims 1-15 and 17-18 are pending, with claims 11-15 and 17 being withdrawn.
Claims 1-10 and 18 are rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/24/2025 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 1-2, 4, 6, 9-10, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Francis et al. (WO 2017/064498 A1) (Francis), as provided in the IDS filed 05/20/2022, in view of Foedde et al. (US 5,670,441) (Foedde), Yu et al. (CN 106732634 A) (Yu), and Sparks et al. “Supported bismuth oxide catalysts for the selective reduction of NO with propene in lean conditions” (Sparks).
Regarding claims 1, 6, 10 and 18, Francis teaches an oxidation catalyst comprising a support material (Francis, Title and Abstract).
Francis further teaches methods of preparing the support material (Francis, pages 44-54, Examples), where the support material comprises bismuth (Francis, page 2, lines 18-28) and a composite oxide of silica-alumina (i.e., a method to prepare an alumina bismuth catalyst support; the method comprising: providing an aluminum containing composition, wherein the aluminum containing composition comprises a silica containing aluminum oxide) (Francis, page 9, lines 9-20).
Francis further teaches in Example 15 the impregnating of a silica-alumina powder using incipient wetness method with bismuth nitrate dissolved in 2M nitric acid (corresponding to providing a bismuth solution, the bismuth solution comprising a bismuth salt; contacting the aluminum containing composition with the bismuth solution to form an aluminum bismuth intermediate, wherein the contacting is carried out by impregnating the aluminum containing composition is in dried powder form with the bismuth solution to form the aluminum bismuth intermediate; the impregnation of the aluminum containing composition comprises incipient wetness impregnation) (Francis, page 50, lines 29-page 51, line 5).
Francis further teaches the coating (i.e., intermediate) being calcinated at 500 °C (Francis, pages 45-55, Examples 1-20) (i.e., calcining the aluminum bismuth intermediate to form an alumina bismuth catalyst support).
Francis does not explicitly teach (1) a bismuth aqueous solution (2) having a pH value between 4 and 9; and (3) the bismuth salt having an anion, the anion being an organic acid, as presently claimed.
With respect to the difference (1), Foedde teaches preparation of a bismuth catalyst (Foedde, Title and Abstract; column 1, lines 61-63).
As Foedde expressly teaches, bismuth oxide dissolves in strong acids with the formation of the corresponding salts; on dilution or neutralization with water, however, bismuth hydroxide is deposited as a flocculent precipitate. The solutions of the salts of strong acids are markedly acidic, and on addition to cataphoretic deposition coating baths they shift the pH to below the permissible lower limit. The pH must accordingly be readjusted by addition of bases. If attempts are made to make the bismuth salt solution (i.e., a bismuth aqueous solution) less strongly acidic, then bismuth hydroxide is precipitated, immediately or after a short time, leading to a fall in or disappearance of the catalytic activity (Foedde, column 1, lines 36-45).
Foedde is analogous art as it is drawn to a method of preparing a catalyst.
In light of the motivation of adjusting the pH value of the bismuth solution disclosed by Foedde, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the pH of the bismuth salt solution of Francis to an appropriate range, in order to achieve optimized catalytic activity.
With respect to the difference (2), Yu teaches a catalyst comprising active component and heat transfer medium (Yu, Title and Abstract).
Yu further teaches preparing the catalyst, which comprises preparing an aqueous solution containing bismuth nitrate (i.e., a bismuth aqueous solution) (Yu, pages 5-6, “Preparation of Catalyst”, first full paragraph).
Yu further teaches preparing the catalyst, which comprises dissolving the water-soluble or acid-soluble compound containing Bi (i.e., bismuth) element in water or diluted acid, mixing them uniformly, and using ammonia water to adjust a pH value of the bismuth containing solution to be 0.5-7 (Yu, page 4, second full paragraph).
Yu is analogous art as it is drawn to a method of preparing a catalyst.
In light of the disclosure of adjusting the pH value of the bismuth solution disclosed by Foedde and Yu as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the pH of the bismuth salt solution of Francis to an appropriate range, including over the amounts presently claimed, in order to achieve optimized catalytic activity.
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).
Alternatively, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, given that the pH value of the bismuth solution is recognized in both Foedde and Yu as a variable affecting the composition during the catalyst preparation and may therefore be treated as a result-effective variable for routine optimization within the claimed range, and therefore, it would have been obvious to one of ordinary skill in the art to vary the pH value of the bismuth solution, including over the amounts presently claimed, in order to optimize the reaction environment during the catalyst preparation process, and thereby arrive at the claimed invention.
With respect to the difference (3), Sparks teaches supported bismuth oxide catalysts for the selective reduction of NO with propene in lean conditions (Sparks, Title and Abstract).
Sparks further teaches the Bi2O3/Al2O3 materials being prepared using a solution of bismuth citrate (i.e., a bismuth salt having an anion, the anion being an organic acid, i.e., citric acid; the bismuth salt is bismuth citrate) and tested as catalysts (Sparks, Abstract; page 123, 2.1. Catalyst preparation, first full paragraph).
As set forth in MPEP 2144.06, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
At the time of the invention, given that bismuth citrate is used as the bismuth salt in the solution in Sparks for the same purpose, i.e., preparing the alumina bismuth catalyst, and therefore, it would have been obvious to one of ordinary skill in the art to combine the bismuth solution of Francis with the bismuth citrate of Sparks, in order to form a composition to be used for the same purpose, i.e., preparing the catalyst, and thereby arrive at the claimed invention.
Regarding claim 2, as applied to claim 1, Francis further teaches the alumina being doped with a dopant selected from an oxide of: silicon (Si), magnesium (Mg), barium (Ba), lanthanum (La), cerium (Ce), titanium (Ti), zirconium (Zr), a combination of two or more thereof (i.e., the aluminum containing composition further comprises at least one dopant, wherein the at least one dopant comprises oxides of alkaline earth metals, transition metals, rare-earth metals or mixtures) (Francis, page 33, lines 24-32).
Regarding claim 4, as applied to claim 1, Francis further teaches the weight of silica in the silica-alumina is 0.5 to 45 % by weight of silica (Francis, page 9, lines 14-15).
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 claim 9, as applied to claim 1, while Francis in view of Foedde, Yu, and Sparks does not explicitly disclose calcining for a period of at least 0.5 hours as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the period of time the calcining is performed for, including over the presently claimed, in order to ensure the catalyst is reduced, oxidized or desiccated to the desired amount for the intended purpose of the catalyst.
Claims 1-5, 8-10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Francis in view of Foedde et al. (US 5,670,441) (Foedde), Yu et al. (CN 106732634 A) (Yu), Sparks et al. “Supported bismuth oxide catalysts for the selective reduction of NO with propene in lean conditions” (Sparks), and Nampi et al. "High-Surface-Area Alumina–Silica Nanocatalysts Prepared by a Hybrid Sol–Gel Route Using a Boehmite Precursor" (Nampi).
This rejection is done in the alternative to establish Francis in view of Foedde, Yu and Sparks teaches both species of the aluminum containing composition.
Regarding claims 1, 3, 10 and 18, Francis teaches an oxidation catalyst comprising a support material (Francis, Title and Abstract).
Francis further teaches methods of preparing the support material (Francis, pages 44-54, Examples), where the support material comprises bismuth (Francis, page 2, lines 18-28) and a composite oxide of silica-alumina (Francis, page 9, lines 9-20, and claim 12) (i.e., a method to prepare an alumina bismuth catalyst support; the method comprising: providing an aluminum containing composition).
Francis further teaches a method comprising mixing a solution of bismuth nitrate with a silica-alumina slurried in water to form a washcoat (i.e., intermediate) (i.e., providing an aluminum containing composition, providing a bismuth aqueous solution; contacting the aluminum containing composition with the bismuth aqueous solution to form an aluminum bismuth intermediate) (Francis, pages 45-46, Example 3).
Francis further teaches the coating (i.e., intermediate) being calcinated at 500 °C (i.e., calcining the aluminum bismuth intermediate to form an alumina bismuth catalyst support) (Francis, pages 45-55, Examples 1-20).
Francis does not explicitly teach (1) a bismuth aqueous solution (2) having a pH value between 4 and 9; and (3) the bismuth salt having an anion, the anion being an organic acid, and (4) the aluminum containing composition comprising boehmite, as presently claimed.
With respect to the difference (1), Foedde teaches preparation of a bismuth catalyst (Foedde, Title and Abstract; column 1, lines 61-63).
As Foedde expressly teaches, bismuth oxide dissolves in strong acids with the formation of the corresponding salts; on dilution or neutralization with water, however, bismuth hydroxide is deposited as a flocculent precipitate. The solutions of the salts of strong acids are markedly acidic, and on addition to cataphoretic deposition coating baths they shift the pH to below the permissible lower limit. The pH must accordingly be readjusted by addition of bases. If attempts are made to make the bismuth salt solution (i.e., a bismuth aqueous solution) less strongly acidic, then bismuth hydroxide is precipitated, immediately or after a short time, leading to a fall in or disappearance of the catalytic activity (Foedde, column 1, lines 36-45).
Foedde is analogous art as it is drawn to a method of preparing a catalyst.
In light of the motivation of adjusting the pH value of the bismuth solution disclosed by Foedde, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the pH of the bismuth salt solution of Francis to an appropriate range, in order to achieve optimized catalytic activity.
With respect to the difference (2), Yu teaches a catalyst comprising active component and heat transfer medium (Yu, Title and Abstract).
Yu further teaches preparing the catalyst, which comprises preparing an aqueous solution containing bismuth nitrate (i.e., a bismuth aqueous solution) (Yu, pages 5-6, “Preparation of Catalyst”, first full paragraph).
Yu further teaches preparing the catalyst, which comprises dissolving the water-soluble or acid-soluble compound containing Bi (i.e., bismuth) element in water or diluted acid, mixing them uniformly, and using ammonia water to adjust a pH value of the bismuth containing solution to be 0.5-7 (Yu, page 4, second full paragraph).
Yu is analogous art as it is drawn to a method of preparing a catalyst.
In light of the disclosure of adjusting the pH value of the bismuth solution disclosed by Foedde and Yu as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the pH of the bismuth salt solution of Francis to an appropriate range, including over the amounts presently claimed, in order to achieve optimized catalytic activity.
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).
Alternatively, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, given that the pH value of the bismuth solution is recognized in both Foedde and Yu as a variable affecting the composition during the catalyst preparation and may therefore be treated as a result-effective variable for routine optimization within the claimed range, and therefore, it would have been obvious to one of ordinary skill in the art to vary the pH value of the bismuth solution, including over the amounts presently claimed, in order to optimize the reaction environment during the catalyst preparation process, and thereby arrive at the claimed invention.
With respect to the difference (3), Sparks teaches supported bismuth oxide catalysts for the selective reduction of NO with propene in lean conditions (Sparks, Title and Abstract).
Sparks further teaches the Bi2O3/Al2O3 materials being prepared using a solution of bismuth citrate (i.e., a bismuth salt having an anion, the anion being an organic acid, i.e., citric acid; the bismuth salt is bismuth citrate) and tested as catalysts (Sparks, Abstract; page 123, 2.1. Catalyst preparation, first full paragraph).
As set forth in MPEP 2144.06, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
At the time of the invention, given that bismuth citrate is used as the bismuth salt in the solution in Sparks for the same purpose, i.e., preparing the alumina bismuth catalyst, and therefore, it would have been obvious to one of ordinary skill in the art to combine the bismuth solution of Francis with the bismuth citrate of Sparks, in order to form a composition to be used for the same purpose, i.e., preparing the catalyst, and thereby arrive at the claimed invention.
With respect to the difference (4), Nampi teaches preparing alumina-silica mixed oxide catalyst using a boehmite precursor (Nampi, p. 4047, Title and left column-first para.). Nampi further teaches the alumina-silica samples contain γ-alumina (i.e., transition alumina) and boehmite (Nampi, p. 4052, left column-second para.).
As Nampi expressly teaches, boehmite, as an alumina source, is cost effective in the synthesis of ceramic materials with a wide variety of applications (Nampi, p.4047, right column-first para.).
Nampi is analogous art as it is drawn to an alumina-silica catalyst.
In light of the motivation of Nampi, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use the silica-alumina samples containing γ-alumina and boehmite in Francis in view of Foedde and Yu, in order to perform a cost-effective synthesis.
Regarding claim 2, as applied to claim 1, Francis further teaches the alumina being doped with a dopant selected from an oxide of: silicon (Si), magnesium (Mg), barium (Ba), lanthanum (La), cerium (Ce), titanium (Ti), zirconium (Zr), a combination of two or more thereof (i.e., the aluminum containing composition further comprises at least one dopant, wherein the at least one dopant comprises oxides of alkaline earth metals, transition metals, rare-earth metals or mixtures) (Francis, page 33, lines 24-32).
Regarding claim 4, as applied to claim 1, Francis further teaches the weight of silica in the silica-alumina is 0.5 to 45 % by weight of silica (Francis, page 9, lines 14-15).
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 claim 5, as applied to claim 1, Francis further teaches the silica-alumina powder being slurried in water with a solution of bismuth nitrate being added to form a washcoat (i.e., the suspension includes the aluminum containing composition and at least water) (Francis, page 45, Example 3).
Regarding claim 8, as applied to claim 1, Francis further teaches the coating (i.e., intermediate) being dried (i.e., when the aluminum containing composition comprising boehmite provided in dried powder form or in the form of a suspension is mixed with the bismuth aqueous solution, the method comprises the further step of drying the aluminum bismuth intermediate to form a dried aluminum bismuth intermediate that will then be calcinated) (Francis, pages 45-55, Examples 1-20).
Regarding claim 9, as applied to claim 1, while Francis in view of Foedde, Yu, Sparks, and Nampi does not explicitly disclose calcining for a period of at least 0.5 hours as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to vary the period of time the calcining is performed for, including over the presently claimed, in order to ensure the catalyst is reduced, oxidized or desiccated to the desired amount for the intended purpose of the catalyst.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Francis in view of Foedde et al. (US 5,670,441) (Foedde), Yu et al. (CN 106732634 A) (Yu), and Sparks et al. “Supported bismuth oxide catalysts for the selective reduction of NO with propene in lean conditions” (Sparks) as applied to claim 1 above, and further in view of Espinoza et al. (US 2004/0132832 A1) (Espinoza).
Regarding claim 7, as applied to claim 1, Francis in view of Foedde, Yu and Sparks does not explicitly teach the silica containing aluminum oxide is or comprises one or more transition aluminas.
With respect to the difference, Espinoza teaches an alumina precursor comprising transition alumina phases, and gamma-alumina is known as a transition alumina (Espinoza, [0064]).
As Espinoza expressly teaches, it has long been a desire of those skilled in the catalyst support arts to create a form of alumina that has high surface area like gamma alumina (Espinoza, [0006]).
Espinoza is an analogues art because it is drawn to an alumina support.
In light of the motivation of Espinoza, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use gamma alumina (i.e., transition alumina) in the silica-alumina (i.e., alumina containing composition) of Francis in view of Foedde, Sparks, and Yu, in order to create a high-surface area catalyst support.
Response to Arguments
In response to the amended claim 1, which recites, a bismuth aqueous solution “having a pH value between 4 and 9” and the bismuth aqueous solution comprising a bismuth salt “having an anion, the anion being an organic acid”, it is noted that Francis in view of Foedde, Yu, and/or Nampi would not meet the present claims. Therefore, the previous 35 U.S.C. 103 rejections over Francis in view of Foedde, Yu, and/or Nampi are withdrawn. However, the amendment necessitates a new set of rejections as set forth above.
Applicants primarily argue:
“Foede also discloses that attempting to make a bismuth salt solution less strongly acidic results in precipitation of bismuth hydroxide and this leads to a fall in or disappearance of the catalytic activity, leading to surface defects in a coating film. Foede therefore teaches away from increasing the pH of the bismuth aqueous solution, as it will result in precipitation of the bismuth, leading to poor dispersion.
It is the Applicant's respectful submission that it cannot be relied on Foede to make obviousness argument with respect to achieving Applicant's invention, as Foede teaches away from the necessary steps.”
Remarks, page 8
The Examiner respectfully traverses as follows:
Applicant argues that the cited teaching reference Foedde “teaches away” because Foedde states that less strongly acidic results in precipitation of bismuth hydroxide, which may lead to a fall in or disappearance of the catalytic activity.
However, this argument does not accurately reflect the disclosure of Foedde.
Applicant’s argument appears to rely on a portion of the Background of the Invention section of Foede (Foede, column 1, lines 39-45), which describes a general consideration of using bismuth compounds as catalyst (Foede, column 1, lines 23-45). The cited passage is directed to a discussion of general reaction conditions and does not limit or exclude pH adjustment in all embodiments. In fact, the immediately preceding statement in the same passage that Applicant cites discloses that “The pH must accordingly be readjusted by addition of bases the pH must accordingly be readjusted by addition of the basis” (Foede, column 1, lines 39-40), which teaches performing adjustment in pH as appropriate to optimize the reaction environment.
Therefore, Foede does not teach away from adjusting the pH. Rather, Foedde teaches the importance of adjusting the pH for avoiding bismuth hydroxide precipitation, which may reduce the catalytic activity.
Applicants further argue:
“Yu's reason for adjusting the pH of a bismuth containing solution with ammonia water to be 0.5-7 is therefore to precipitate the bismuth. There is no specific teaching or suggestion in Yu that superior homogeneity of bismuth oxide on a support material is achievable when adjusting the pH of a bismuth aqueous solution to be in the range between 4 and 9, as claimed in claim 1.
“… the concept of "in order to ensure the bismuth salt solution is not too strongly less acidic resulting in the formation of a precipitate" finds no grounding in the prior art. In fact, Yu teaches adjusting the pH to be 0.5-7 with ammonia water to achieve precipitation.”
Remarks, pages 9-10
The Examiner respectfully traverses as follows:
Applicant argues that (1) the adjustment of pH in Yu is “to precipitate bismuth”, and (2) Yu does not teach “superior homogeneity of bismuth oxide on a support material is achievable when adjusting the pH of a bismuth aqueous solution to be in the range between 4 and 9, as claimed in claim 1.”
Firstly, Applicant’s introduction of “superior homogeneity” appears to be not recited in the claims currently under examination.
Further, Applicant’s argument appears to be internally inconsistent. Specifically, Applicant argues that Yu should not be considered because pH adjustment of Yu may lead to precipitation. However, Applicant’s own remarks states that increasing the pH is necessary to obtain small bismuth oxide crystals (Remarks filed 11/24/2025, page 7, first full paragraph), where the obtained bismuth oxide itself a type of precipitation. Therefore, Applicant’s method also involves precipitation.
Finally, it is noted that while Yu does not disclose all the features of the present claimed invention, Yu is used as teaching reference, namely adjusting the pH value of the bismuth solution, in order to ensure the bismuth salt solution is not too strongly less acidic resulting in the formation of a precipitate and fall in or disappearance of the catalytic activity, and therefore, it is not necessary for this secondary 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, and in combination with the primary reference, discloses the presently claimed invention.
Applicants further argue:
“There is no suggestion in Francis to consider raising the pH to improve the dispersion of bismuth oxide.
Foede in turn teaches that raising the pH results in precipitation of bismuth - a state of affairs that will not improve dispersion on a support. For completeness, the reason Foede considers raising the pH at all is that adding a strongly acidic bismuth solution results in unacceptable shifts in the pH of CED coating baths; a consideration that is not relevant to Francis or the present invention.”
Remarks, page 10
The Examiner respectfully traverses as follows:
Firstly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Francis does not expressly teach the claimed bismuth aqueous solution having a pH value between 4 and 9. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Francis does not disclose the entire claimed invention. Rather, Foedde and Yu are relied upon to teach claimed elements missing from Francis. See pages 4-8 and 11-14 above.
Further, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Secondly, Foedde teaches the precipitation of bismuth hydroxide under insufficiently acidic conditions and explains that such bismuth hydroxide precipitation may reduce the catalytic activity (emphasis added), and Foedde does not teach raising the pH results in precipitation of bismuth of any type, e.g., bismuth metal or bismuth oxide, which is a different composition from the bismuth hydroxide.
Finally, as cited in MPEP 2141.01(a), “In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. [...] This does not require that the reference be from the same field of endeavor as the claimed invention, in light of the Supreme Court's instruction that "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." Id. at 417, 82 USPQ2d 1396. Rather, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.”
Foedde and Francis are both drawn to a method of preparing a catalyst. Foedde provides proper motivation to combine, namely bismuth oxide dissolves in strong acids with the formation of the corresponding salts; on dilution or neutralization with water, however, bismuth hydroxide is deposited as a flocculent precipitate; the solutions of the salts of strong acids are markedly acidic, and on addition to cataphoretic deposition coating baths they shift the pH to below the permissible lower limit; the pH must accordingly be readjusted by addition of bases. If attempts are made to make the bismuth salt solution (i.e., a bismuth aqueous solution) less strongly acidic, then bismuth hydroxide is precipitated, immediately or after a short time, leading to a fall in or disappearance of the catalytic activity. Therefore, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the pH of the bismuth salt solution of Francis to an appropriate range, in order to achieve optimized catalytic activity, absent evidence to contrary.
Applicants further argue:
“A skilled person seeking to improve the dispersion of bismuth oxide of Francis will learn from Foede and Yu to avoid raising the pH of the bismuth solution in order to avoid precipitation, i.e. the prior art teaches away from the present invention.”
Remarks, page 11
The Examiner respectfully traverses as follows:
Firstly, this argument does not accurately reflect the disclosure of Francis in view of Foedde and Yu. Specifically, Foedde teaches the precipitation of bismuth hydroxide under insufficiently acidic conditions and explains that such bismuth hydroxide precipitation may reduce the catalytic activity (emphasis added), and Foedde does not teach “avoiding precipitation” of e.g., bismuth metal or bismuth oxide, which is a different composition from the bismuth hydroxide.
Further, Applicant’s argument appears to be internally inconsistent. Applicant’s own remarks states increasing the pH is necessary to obtain small bismuth oxide crystals (Remarks filed 11/24/2025, page 7, first full paragraph), where the obtained bismuth oxide crystal itself is a type of precipitation. Therefore, Applicant’s method also involves precipitation.
Applicants further argue:
“Nampi does not cure the infirmities discussed above.”
Remarks, page 11
The Examiner respectfully traverses as follows:
It is noted that while Nampi does not disclose all the features of the present claimed invention, Nampi is used as teaching reference, namely the aluminum containing composition comprising boehmite, in order to perform a cost-effective synthesis, and therefore, it is not necessary for this secondary 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, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
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/J.Z./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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