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, 6, 9-11, 15, 19-20, 33 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Omaha (JP 2007/117916 A).
The Examiner has provided a machine translation of JP 2007/117916 A. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1-2, 6, 9, 11, 15, and 19-20, Ohama discloses an alumina carrier for a catalyst (Ohama, Title and Abstract), wherein the alumina may be formed into a shape suitable for use in a heterogeneous catalytic reaction, including powders (Ohama, p. 3, Paragraph 11) (i.e., an alumina in powder form).
Ohama further discloses the alumina carrier having an average pore diameter equivalent to 1/2 of total pore volume being within 15-30 nm, where a total volume of pore having diameter of 4 nm or more is within 0.5-1.5 ml/g (Ohama, Abstract) (i.e., claim 11), which gives rise to the amount of 1/2 of total pore volume being 0.25-0.75 ml/g (i.e., 1/2 of 0.5-1.5 ml/g) for a pore diameter being within 15-30 nm (i.e., claim 2),
wherein the pore volume overlaps the claimed range of the first porosity profile,
wherein the pore size overlaps the claimed range of the first porosity profile,
wherein the total pore volume overlaps the claimed range.
Ohama further discloses a BET specific surface within 100-250 m2/g (Ohama, claim 1) (i.e., claim 6), which overlaps the claimed range.
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).
Ohama further discloses volume of pore having diameter of 100 nm or more, of 0.05 ml/g or less (Ohama, Abstract), which falls within the claimed range (i.e., claim 19).
Ohama further discloses a crystal form of pseudoboehmite alumina hydrate with the crystallite diameter determined from the Debye-Scherrer equation from the half width of the peak at 2θ = 38.40 degrees by X-ray diffraction (Ohama, page 7 – Example 1, first paragraph), thus it is clear that the alumina would be necessarily crystalline.
Given that the alumina of Ohama is identical or substantially identical to the present claimed alumina in composition (i.e., alumina) and structure (i.e., porosity profile, e.g., pore volume, pore size), and further given that Ohama discloses a process of preparing the alumina, comprising preparing a blended slurry by reacting (i.e., simultaneous introduction of) a soluble aluminum salt aqueous solution, e.g., an aqueous solution of aluminum sulfate, and a basic aqueous solution, e.g., sodium aluminate, in the presence of a soluble carboxylic acid (i.e., an acidic aqueous solution) to a pH of 7 to 9; filtering and washing the pseudo boehmite alumina hydrate (i.e., solid) to remove by-product salt, where the solid is dispersed in water forming an aging slurry that is heated and kneaded (i.e., undergoes a mechanical treatment) to form a moldable kneaded product with a selected shape, where the molded body is dried (Ohama, page 4, last paragraph to page 6, nineth paragraph), which are substantially identical to methods used in the present invention (claim 44, steps (a) to (f)), with those of the present invention (Originally filed specification, page 7, line 41 to page 11, line 48), therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention that the alumina of Ohama would inherently be capable of being characterized by the porosity profile, including the second porosity profile as claimed after calcining in air at 1100°C for 5 hours (i.e., claims 9, 15, and 20).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, given that Ohama discloses the alumina that overlaps the presently claimed alumina, including a powder form, it therefore would be obvious to one of ordinary skill in the art, to use the alumina with a powder form, which is both disclosed by Ohama and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 10, Ohama teaches the alumina as claimed in claim 1, wherein given that the alumina of Ohama is identical or substantially identical to the present claimed alumina in composition (i.e., alumina) and structure (i.e., porosity profile, e.g., pore volume, pore size), and further given that Ohama discloses a process of preparing the alumina, comprising preparing a blended slurry by reacting (i.e., simultaneous introduction of) a soluble aluminum salt aqueous solution, e.g., an aqueous solution of aluminum sulfate, and a basic aqueous solution, e.g., sodium aluminate, in the presence of a soluble carboxylic acid (i.e., an acidic aqueous solution) to a pH of 7 to 9; filtering and washing the pseudo boehmite alumina hydrate (i.e., solid) to remove by-product salt, where the solid is dispersed in water forming an aging slurry that is heated and kneaded (i.e., undergoes a mechanical treatment) to form a moldable kneaded product with a selected shape, where the molded body is dried (Ohama, page 4, last paragraph to page 6, nineth paragraph), which are substantially identical to methods used in the present invention (claim 44, steps (a) to (f)), with those of the present invention (Originally filed specification, page 7, line 41 to page 11, line 48), therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention that the alumina of Ohama would inherently have a bulk density of between 0.25 g/cm3 and 0.55 g/cm3.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claims 33 and 36, Ohama teaches the alumina as claimed in claim 1, wherein a rehydrated slurry being filtered and washed to obtain an alumina hydrate cake from which by-product salts such as alkali and sulfate radicals are removed (Ohama, page 7 – Example 1, third paragraph), therefore an alkali content (e.g., includes a sodium content) and a sulfate content would be necessarily identical or substantially identical to 0 % by weight, which falls within the claimed range.
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Ohama, as applied to claim 1 above, and further in view of Bin et al. (“The effect of particle size on the properties of alumina-based ceramic core”, 2011) (Bin).
Regarding claims 23 and 24, Ohama teaches the alumina as claimed in claim 1, but does not explicitly teach the alumina characterized by a D50 of between 15.0 and 80.0 µm or a D90 of between 40.0 and 150.0 µm, as presently claimed.
With respect to the difference, Bin teaches alumina powders as a matrix material of ceramic core (Bin, p. 178, 2.1 Raw materials). Bin further teaches the alumina having D50 of 38.645 µm and D90 of 103.817 µm (Bin, p. 179, Table 4-CIII and p. 180, Fig. 1(a)), where D50 is median particle size, and D90 is the particle diameters for the 90th cumulative mass percentiles (Bin, p. 179, last para.), wherein the D50 falls within the claimed range, and wherein the D90 falls within the claimed range.
As Bin expressly teaches, Matrix Al2O3 powders with double peak, e.g., the size distribution (e.g., D50 and D90) of CIII (Bin, p. 179, Fig.1(a)-CIII), can form denser packing than powders with single peak can, and help to increase the core’s strength than powders with single peak can (Bin, Abstract and p. 179, last para.).
Bin is analogous art as it is drawn to alumina (Bin, Abstract).
In light of the motivation of alumina having a D50 and D90 as disclosed by Bin, it therefore would have been obvious to one of ordinary skill in the art to modify the alumina of Ohama to have a D50 of 38.645μm and a D90 of 103.817μm in order to form denser packing and to increase strength, and thereby arrive at the claimed invention.
Regarding claim 25, Ohama, in view of Bin, teaches the alumina as claimed in claim 23, wherein given that the alumina of Ohama in view of Bin is identical or substantially identical to the present claimed alumina in composition (i.e., alumina) and structure (i.e., porosity profile, e.g., pore volume, pore size), and further given that Ohama discloses a process of preparing the alumina, comprising preparing a blended slurry by reacting (i.e., simultaneous introduction of) a soluble aluminum salt aqueous solution, e.g., an aqueous solution of aluminum sulfate, and a basic aqueous solution, e.g., sodium aluminate, in the presence of a soluble carboxylic acid (i.e., an acidic aqueous solution) to a pH of 7 to 9; filtering and washing the pseudo boehmite alumina hydrate (i.e., solid) to remove by-product salt, where the solid is dispersed in water forming an aging slurry that is heated and kneaded (i.e., undergoes a mechanical treatment) to form a moldable kneaded product with a selected shape, where the molded body is dried (Ohama, page 4, last paragraph to page 6, nineth paragraph), which are substantially identical to methods used in the present invention (claim 44, steps (a) to (f)), with those of the present invention (Originally filed specification, page 7, line 41 to page 11, line 48), it would have been obvious to one of ordinary skill in the art that the alumina of Ohama in view of Bin would intrinsically have a bulk density of between 0.40 g/cm3 and 0.55 g/cm3.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Response to Arguments
In response to applicant’s amendment to claim 1, the previous claim objection is withdrawn from the record.
Applicant primarily argues:
“Turning to the prior art, Ohama may be understood to teach a catalyst and a carrier that has a specific pore structure suitable for the catalyst. See Ohama, Abstract. The carrier provided by Ohama may be understood as an alumina molded body obtained by extruding an alumina hydrate. See Ohama, Abstract and claim 1. Hence, the alumina disclosed in Ohama refers to an alumina in extruded (molded) form instead of an alumina in a powder form, as required by amended independent claim 1.
Additionally, the alumina disclosed in Ohama is not crystalline, in contrast to the alumina required by amended independent claim 1. Example 1 of Ohama may be understood as disclosing that a sodium aluminate aqueous solution and an alumina sulfate aqueous solution are used to obtain an alumina hydrate preparation slurry. Though Ohama suggests that the alumina hydrate showed the crystal form of pseudoboehmite alumina hydrate, Ohama is silent on the alumina carrier (i.e., the end-product allegedly analogous to the alumina of the present application) having a crystalline structure. Furthermore, according to Ohama in Example 1, a dilution of p- and / or x- alumina is added to the pseudoboehmite alumina hydrate to an alumina hydrate cake that does not contain a crystalline alumina hydrate such as bayerite and gypsite:
"A sample obtained by collecting a small amount of this alumina hydrate cake and drying at 110 °C. was a pseudo boehmite alumina hydrate containing no crystalline alumina hydrate such as bayerite and gypsite as a result of X-ray diffraction." (emphasis added)
Ohama teaches that the alumina hydrate cake is heat-aged to obtain a kneaded product which is subsequently extruded. The molded body obtained by extrusion is dried and afterwards fired at a temperature between 400 to 800 °C (See Ohama, Example 1). Given the many differences between the production process of Ohama and the production process of the present application, it logically follows that the alumina produced by Ohama may have many differences from the alumina disclosed by the present application. Accordingly, person of skill in the art would have no reason to believe that the alumina produced by Ohama is crystalline, as required by amended independent claim 1.
Furthermore, as acknowledged by the Examiner, Ohama is silent on an alumina molded body having a second pore volume profile, let alone an alumina molded body having a second pore volume profile after calcination as required by amended independent claim 1. Ohama is also silent on the thermal stability of the alumina molded body. Therefore, a person of ordinary skill in the art, aware of Ohama and applying common sense, would not have been motivated to create a powdered alumina with a second pore volume for thermal stability without Applicant's own disclosure as a guide.
Therefore, the alumina according to amended independent claim 1 differs from the alumina of Ohama at least due to differences in form, structure, and pore distributions. For at least the reasons given above, Applicant respectfully asserts that amended claim 1 is non-obvious over Ohama and allowable. By virtue of their dependence on amended claim 1, claims 2, 6, 9-11, 15, 19- 20, 33, and 36 are also non-obvious over Ohama and allowable for at least the same reasons.”
Remarks, p. 10-11
The examiner respectfully traverses as follows:
Firstly, Ohama explicitly states, “The alumina carrier of the present invention is a molded body formed into a shape suitable for use in a heterogeneous catalytic reaction, and examples thereof include extruded molded bodies (pellets), spherical particles (beads), tablets, and powders” (emphasis added) (Ohama, p. 3, Paragraph 10). Therefore, Ohama teaches the alumina as a powder.
Secondly, Ohama teaches the starting material is a crystalline pseudo boehmite alumina hydrate (i.e., pseudoboehmite). When pseudo boehmite is fired up to a temperature of 1400°C, the pseudoboehmite transitions to γ-Al2O3 from 200-700°C to δ-Al2O3 from 700-800°C to θ-Al2O3 from 900-1100°C to α-Al2O3 from 1200-1400°C (i.e., crystalline phases of alumina) as evidenced by Coelho et al. (“Specific surface area and structures of aluminas from fibrillar pseudoboehmite”, 2008) (Coehlo, p. 339, Paragraph 2; p. 340, Conclusions). Therefore, as the pseudo boehmite of Ohama is fired at a temperature between 400-800°C (Ohama, p. 6, Paragraph 9), the alumina formed from the pseudo boehmite would be crystalline.
Thirdly, as Ohama teaches an alumina that is substantially identical to the claimed alumina and is formed through a substantially identical method, the alumina would necessarily have a second pore profile that corresponds to the claimed second pore profile after firing.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Applicant further argues:
“Bin does not provide that which Ohama lacks. Accordingly, Applicant respectfully asserts that amended independent claim 1 is patentable over Bin and that claims 23-25 are non- obvious and allowable for at least the reasons provided above.”
Remarks, p. 12
The examiner respectfully traverses as follows:
It is noted that while Bin does not disclose all the features of the present claimed invention, Bin is used as a teaching reference, namely to teach the D50 and D90 size distributions to be 38.645μm and 103.817μm, respectively, in order to form denser packing and increase the strength, 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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