DETAILED ACTION
Claims 1, 3-4 and 8-9 are amended.
Claims 1-15 and 17 are pending, with claims 11-15 and 17 being withdrawn.
Claims 1-10 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 .
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 and 9-10 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) and Yu et al. (CN 106732634 A) (Yu).
Regarding claims 1, 6 and 10, Francis teaches an oxidation catalyst comprising a support material (Francis, Abstract). Francis further teaches methods of preparing the support material (Francis, pp. 44-54, Examples), where the support material comprises bismuth (Francis, p.2, lines 18-28) and a composite oxide of silica-alumina (Francis, p.9, lines 9-20) (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 further teaches in Example 15 the impregnating of a silica-alumina powder using incipient wetness method with bismuth nitrate dissolved in 2M nitric acid (Francis, p.50, lines 29-p.51, line 5) (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 further teaches the coating (i.e., intermediate) being calcinated at 500 °C (Francis, pp.45-55, Examples 1-20) (i.e., calcining the aluminum bismuth intermediate to form an alumina bismuth catalyst support).
Francis does not explicitly teach the bismuth solution is a bismuth aqueous solution comprising a base comprising nitrogen and having a pH value of between 4 and 9.
With respect to the difference, Foedde teaches a bismuth catalyst (Foedde, col.1, lines 61-63). Foedde further teaches if attempts are made to make the bismuth salt 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, and the precipitate leads to surface defects in a coating film (Foedde, col. 1, lines 40-45).
Foedde does not explicitly teach the bismuth salt solution includes a base comprising nitrogen and having a pH value of between 4 and 9.
Yu teaches using ammonia water to adjust a pH value of a bismuth containing solution to be 0.5-7 (Yu, p. 4, 2nd para.) (i.e., a bismuth aqueous solution comprising a base comprising nitrogen and having a pH value of between 4 and 9).
Yu is analogous art as it is drawn to a method of preparing a catalyst.
In light of the disclosure of Yu, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use ammonia water to adjust the pH in the range of 0.5 to 7 of the bismuth salt solution of Foedde, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. In re Leshin, 125 USPQ 416.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (MPEP 2144.07).
Foedde is analogous art as it is drawn to a catalyst comprising bismuth.
In light of the motivation of Foedde in view of Yu, 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 have the pH of the bismuth salt solution of Francis be adjust to be 0.5-7 with ammonia water, 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.
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 2, Francis in view of Foedde and Yu teaches the limitations of claim 1, as discussed above.
Francis in view of Foedde and Yu 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 (Francis, p. 33, lines 24-32) (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).
Regarding claim 4, Francis in view of Foedde and Yu teaches the limitations of claim 1, as discussed above.
Francis in view of Foedde and Yu further teaches the weight of silica in the silica-alumina is 0.5 to 45 % by weight of silica (Francis, p. 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, Francis in view of Foedde and Yu teaches the limitations of claim 1, as discussed above.
While Francis in view of Foedde and Yu 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 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Francis in view of Foedde, Yu 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 and Yu teaches both species of the aluminum containing composition.
Regarding claims 1, 3 and 10, Francis teaches an oxidation catalyst comprising a support material (Francis, Abstract).
Francis further teaches methods of preparing the support material (Francis, pp. 44-54, Examples), where the support material comprises bismuth (Francis, p.2, lines 18-28) and a composite oxide of silica-alumina (Francis, p.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) (Francis, pp. 45-46, Example 3) (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 further teaches the coating (i.e., intermediate) being calcinated at 500 °C (Francis, pp.45-55, Examples 1-20) (i.e., calcining the aluminum bismuth intermediate to form an alumina bismuth catalyst support).
Francis does not explicitly teach the bismuth aqueous solution comprising a base comprising nitrogen and having a pH value of between 4 and 9, as presently claimed.
With respect to the difference, Foedde teaches a bismuth catalyst (Foedde, col.1, lines 61-63). Foedde further teaches if attempts are made to make the bismuth salt 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, and the precipitate leads to surface defects in a coating film (Foedde, col. 1, lines 40-45).
Foedde does not explicitly teach the bismuth salt solution includes a base comprising nitrogen and having a pH value of between 4 and 9.
Yu teaches using ammonia water to adjust a pH value of a bismuth containing solution to be 0.5-7 (Yu, p. 4, 2nd para.) (i.e., a bismuth aqueous solution comprising a base comprising nitrogen and having a pH value of between 4 and 9).
Yu is analogous art as it is drawn to a method of preparing a catalyst.
In light of the disclosure of Yu, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use ammonia water to adjust the pH in the range of 0.5 to 7 of the bismuth salt solution of Foedde, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. In re Leshin, 125 USPQ 416.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (MPEP 2144.07).
Foedde is analogous art as it is drawn to a catalyst comprising bismuth.
In light of the motivation of Foedde in view of Yu, 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 have the pH of the bismuth salt solution of Francis be adjust to be 0.5-7 with ammonia water, in order to ensure the bismuth salt solution is not too strongly less acidic resulting in the formation of a precipitate and fall or disappearance of the 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).
Francis in view of Foedde and Yu does not explicitly teach the aluminum containing composition comprising boehmite.
With respect to the difference, 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, Francis in view of Foedde, Yu and Nampi teaches the limitations of claim 1, as discussed above.
Francis in view of Foedde, Yu and Nampi 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 (Francis, p. 33, lines 24-32) (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).
Regarding claim 4, Francis in view of Foedde, Yu and Nampi teaches the limitations of claim 1, as discussed above.
Francis in view of Foedde, Yu and Nampi further teaches the weight of silica in the silica-alumina is 0.5 to 45 % by weight of silica (Francis, p. 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, Francis in view of Foedde, Yu and Nampi teaches the limitations of claim 1, as discussed above.
Francis in view of Foedde, Yu and Nampi teaches the silica-alumina powder (i.e., aluminum containing composition) being slurried in water with a solution of bismuth nitrate being added to form a washcoat (i.e., intermediate) (Francis, p.45, Example 3) (i.e., the suspension includes the aluminum containing composition and at least water).
Regarding claim 8, Francis in view of Foedde, Yu and Nampi teaches the limitations of claim 1, as discussed above.
Francis in view of Foedde, Yu and Nampi further teaches the coating (i.e., intermediate) being dried (Francis, pp.45-55, Examples 1-20) (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).
Regarding claim 9, Francis in view of Foedde, Yu and Nampi teaches the limitations of claim 1, as discussed above.
While Francis in view of Foedde, Yu 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 and Yu as applied to claim 1 above, and further in view of Espinoza et al. (US 2004/0132832 A1) (Espinoza).
Regarding claim 7, Francis in view of Foedde and Yu teaches the limitations of claim 1, as discussed above.
Francis in view of Foedde and Yu 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 and Yu, in order to create a high-surface area catalyst support.
Response to Arguments
In response to the amendment claims 3 and 7-8 and Applicants’ remarks regarding the previous claim objection on claim 4, the previous claim objections are withdrawn.
In response to the amendment on claims 4 and 9, the previous 35 U.S.C. 112(b) rejections are withdrawn.
Applicants primarily argue:
“A skilled person seeking to improve the dispersion of bismuth on alumina bismuth supports finding application in emission control catalysis will therefore not consider Foedde as it relates to a different field of endeavor. Furthermore, if a skilled person were to come across the teaching of Foedde by chance, the skilled person will not consider the teaching to be at all pertinent, as it relates to an unrelated problem (avoiding surface defects in the coating film caused by precipitation) and the solution offered (i.e. formulations involving epoxy-amine adducts) finds no application when aiming to improve dispersion of bismuth on alumina bismuth supports.
…Foedde is not in the same field of endeavor as the present invention, nor is Foedde reasonably pertinent to the problems faced by the inventors of the present invention.”
Remarks, pages 9-10
The Examiner respectfully traverses as follows:
Foedde is analogous art, as Foedde is from the same field of endeavor as the claimed invention, i.e., a catalyst comprising bismuth (Foedde, col. 1, lines 61-63; Specification, p. 1, Title and lines 5-8) and/or Foedde is reasonably pertinent to the problem faced by the inventor, i.e., the bismuth solution is a bismuth aqueous solution (Foedde, col. 1, lines 40-45; Specification, p. 2).
Applicants further argue:
“Yu does not teach to contact "boehmite" or a "silica containing aluminum oxide" with a bismuth aqueous solution….
Furthermore, if a skilled person were to come across the teaching of Yu by chance, the skilled person will not consider the teaching to be at all pertinent, as it relates to an unrelated problem (producing a catalyst which can handle the strong exothermic reaction of generating unsaturated aldehydes) and the solution offered (i.e. separately forming an active component in powder form and then combining with a support, binder and pore forming agent) finds no application when aiming to improve dispersion of bismuth on alumina bismuth supports.
…Yu is not in the same field of endeavor as the present invention, nor is Yu reasonably pertinent to the problems faced by the inventors of the present invention.”
Remarks, pages 11-12
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 Yu does not expressly teach the claimed “the aluminum containing composition comprises boehmite or a silica containing aluminum oxide”. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Yu does not disclose the entire claimed invention. Rather, Francis is relied upon to teach claimed elements missing from Yu. See pages 3-13 above.
Secondly, Yu is analogous art, as Yu is from the same field of endeavor as the claimed invention, i.e., a method of preparing a catalyst (Yu, Title and Abstract; Specification, p. 1, lines 5-8) and/or Yu is reasonably pertinent to the problem faced by the inventor, i.e., the bismuth solution includes a base comprising nitrogen and having a pH value of between 4 and 9 (Yu, p. 4, 2nd para.; Specification, p. 2).
Applicants further argue:
“In other words, the Examiner proposes applying the teachings of Yu (which seeks to achieve a precipitate) to Foedde (which seeks to avoid a precipitate).”
Remarks, page 13
The Examiner respectfully traverses as follows:
It is noted the claims are not rejected over Foedde in view of Yu. The rejection is relied on Francis in view of Foedde and Yu. See pages 3-13 above.
Applicants further argue:
“Details disclosed in Foedde cannot provide any meaningful advice for the present invention nor be combined with Yu.”
Remarks, page 14
The Examiner respectfully traverses as follows:
It is noted the claims are not rejected over Foedde in view of Yu. The rejection is relied on Francis in view of Foedde and Yu. See pages 3-13 above.
Applicants further argue:
“Nampi does not cure the infirmities discussed above.”
Remarks, page 14
The Examiner respectfully traverses as follows:
It is noted the claims are not rejected over Nampi alone. The rejection is relied on Francis in view of Foedde, Yu and Nampi. See pages 9-11 above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.Z./Examiner, Art Unit 1732
/Colin W. Slifka/Primary Examiner, Art Unit 1732