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 .
Response to Amendment
The examiner acknowledges Applicant’s response filed on 07/29/2025 containing remarks and amendments to the claims.
Response to Arguments
Applicant's arguments (see Remark) with respect to the rejection of claim 1 under 35 USC 102(a)(1) as being anticipated by Roh et al. (“Low temperature and H2 selective catalysts for ethanol steam reforming.” Catalysis Letters Vol. 108, Nos. 1–2, April 2006) have been fully considered but they are not persuasive.
Applicant argues that Roh fails to teach or suggest the limitation “a selective-alkyl demethylation catalyst composition,” recited in the preamble and the claim body, and thus Roh cannot support a prima facie case of anticipation of claim 1. Specifically, Applicant contends: (i) “one or ordinary skill in the art would not be motivated to select a catalyst including Rh as the transition metal and MgAl2O4 as the support considering H2 yield was highest with the Rh/Ce0.13Zr0.87O2 catalyst, not the catalyst including Rh as the transition metal and MgAl2O4 as the support”; and (ii) “one of ordinary skill in the art would not conflate a catalyst for ethanol steam reforming with a selective-alkyl demethylation catalyst composition.”
The examiner does not find the arguments persuasive for the following reasons. In response to argument (i), Roh discloses a catalyst composition comprising a MgAl2O4 support and Rh dispersed on the support, where the metal dispersion estimated from H2 chemisorption is 48% (pg. 16,17; Table 1). Thus, Roh teaches each and every element of the claimed invention, thereby anticipating the subject matter of claim 1. Since the claimed catalyst composition was described in a prior art literature before the effective filing date of the instant invention, Applicant’s assertion that one would have been motivated to select other catalysts disclosed by Roh over the Rh-MgAl2O4 catalyst is deemed irrelevant to the rejection of claim 1 under 35 USC 102 for lack of novelty.
With regard to argument (ii), Applicant appears to suggest that the catalyst of Roh, which is a steam reforming catalyst, does not correspond to “a selective-alkyl demethylation catalyst composition.” While it is acknowledged that the Rh-MgAl2O4 catalyst disclosed by Roh is described as a steam reforming catalyst therein, it still reads on each and every element of the claimed composition, i.e., “an oxide support material comprising a composite of MgO and Al2O3; and a transition metal [comprising] Rh at 0.01 to 5 wt.%....” Here, the pending claims are directed to a composition. Thus, the recitation “selective-alkyl demethylation” is interpreted as an intended use or, at most, an inherent function or characteristic of the composition. In any event, since Roh discloses a catalyst that reads on all of the limitations of claim 1, the catalyst of Roh is considered to possess the function/characteristic, e.g., the capability of catalyzing selective-alkyl demethylation. See MPEP 2112. III.
The rejection of claims 1, 3, 10, and 12 under 35 USC 102(a)(1) over Roh and the rejection of claims 2, 5, and 11 under 35 USC 103 over Roh are maintained.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, 10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roh et al. (“Low temperature and H2 selective catalysts for ethanol steam reforming.” Catalysis Letters Vol. 108, Nos. 1–2, April 2006).
Regarding claim 1, Roh discloses a catalyst comprising a MgAl2O4 support (a composite of MgO and Al2O3) and 1 wt% rhodium (Rh) dispersed on said MgAl2O4 support, wherein the metal dispersion estimated from H2 chemisorption is 48% (pg. 16-17; Table1). A Rh content of 1 wt% and a H2 chemisorption value of 48% fall within the claimed ranges of “0.01 to 5 wt.%” and “at least 15%,” respectively.
Although Roh teaches that its catalyst is directed to steam reforming and is silent on “selective alkylation-demethylation”, the recitation “selective-alkyl demethylation” in the limitation “a selective-alkyl demethylation catalyst” merely states an intended use or, at most, an inherent function or characteristic of the claimed catalyst composition. Since Roh discloses a catalyst composition that reads on all of the limitations of claim 1, the catalyst of Roh is considered to possess the capability of catalyzing selective-alkyl demethylation. MPEP 2112. III.
Regarding claim 3, Roh suggests that the Rh/MgAl2O4 catalyst is free of zeolite or alumina (pg. 16-17; see “MgAl2O” in Table 1).
Regarding claim 10, Roh discloses a Rh/MgAl2O4 catalyst containing 1 wt% Rh (pg. 16-17; Table1), which falls within the claimed range of “0.1 to 2 wt.%.”
Regarding claim 12, Roh discloses that the MgAl2O4 support has a BET surface area of 146 m2/g (pg. 17; Table 1), which falls within the claimed range of “at least 25 m2/g.”
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 5, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Roh et al. (“Low temperature and H2 selective catalysts for ethanol steam reforming.” Catalysis Letters Vol. 108, Nos. 1–2, April 2006), as evidenced by Tsao et al. (US 6,500,329 B2).
Regarding claim 2, Roh does not explicitly teach that the catalyst exhibits an alpha value of no greater than 2.5. However, it is noted that alpha values are known to be determined by calculating a ratio between hexane conversion activity with a catalyst to be tested over hexane activity with a reference catalyst of silica-alumina, as evidenced by Tsao et al. (US 6,500,329; col. 6, lines 23-38). Since MgAl2O4 is known to be less acidic (active) than silica-alumina, it would have been obvious for one skilled in the art to conclude that an alpha value of MgAl2O4 would be lower than 1, which falls within “no greater than 2.5.”
Regarding claim 5, Roh discloses that catalyst is reduced prior to measurement (pg. 16, “the catalyst was reduced in H2/N2 (10% H2 in vol.) at 350 °C for 1 h”), which reasonably suggests that the Rh component is present in a substantially elemental state.
Regarding claim 11, Roh does not explicitly teach that the Rh/MgAl2O4 catalyst may have a hydrogen chemisorption value of at least 50%. However, the reference teaches a H2 chemisorption value of 48%, which is fairly close to and thus renders obvious the claimed range of ≥50%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Citation of Permanent Prior Art
Kim et al. (“Core−Shell Metal−Ceramic Microstructures: Mechanism of Hydrothermal Formation and Properties as Catalyst Materials.” Chem. Mater. 2016, 28, 2786−2794) disclose catalysts each comprising a MgAl2O4 support and Rh, wherein Rh contents are 1.0, 3.0, and 5.0 wt% with metal dispersions measured by H2 chemisorption of 53%, 33%, and 45%, respectively (Table 3).
Allowable Subject Matter
Claims 4, 6, and 7are 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. No prior art of record, individually or in combination, teaches a catalyst composition comprising an oxide support material comprising a composite of MgO and Al2O3 and Rh dispersed on the support material in an amount of 0.01-05 wt%, wherein the catalyst composition having a hydrogen chemisorption value of at least 15%, and wherein the catalyst composition further comprises an additional oxide component recited in claim 4 (CaO, MgO, SrO, or a combination thereof) or a metal component recited in claims 6-7 (Fe, Co, Ni, Ru, Pd, Re, Os, Ir, Pt, or a combination thereof).
Roh et al. (“Low temperature and H2 selective catalysts for ethanol steam reforming.” Catalysis Letters Vol. 108, Nos. 1–2, April 2006), applied in the above rejection, discloses support materials including Ce0.13Zr0.87O2, ZrO2, Al2O3, and MgAl2O4 (pg. 18, see Table 2), but the reference fails to teach or reasonably suggest a support material comprising a mixture of MgAl2O4 and an additional oxide material comprising CaO, MgO, SrO, or any combination thereof. Furthermore, Roh only teaches catalysts containing Rh as the only active metal and is silent on other metals, such as Fe, Co, Ni, Ru, Pd, Re, Os, Ir, or Pt.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON Y CHONG whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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/JASON Y CHONG/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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