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 .
Examiner’s Note
Applicants’ amendment and remarks filed 1/30/2026 has been fully considered and entered. In response to the amended claim 1, “wherein the alumina has a bulk density of between 0.25 g/cm3 and 0.55 g/cm3”, upon further consideration of Boualleg in view of Alphonse. it is agreed that Boualleg in view of Alphonse would not meet the present claims. Additionally, upon further consideration of Boualleg in view of Sun, Boualleg does not disclose an alumina having the presently claimed bulk density. While Sun does disclose the bulk density of a La-modified alumina having the presently claimed bulk density, Sun does not provide any proper motivation why it would have been obvious to one of ordinary skill in the art to modify the alumina of Boualleg to have a bulk density as presently claimed. Therefore, the previous 35 U.S.C. 103 rejections under Boualleg in view of Alphonse and Boualleg in view of Sun are withdrawn from the record.
Upon further consideration of the abstract and the present claims, a new set of Specification objections and 35 U.S.C. 112(b) rejections are provided as set forth below.
Upon further searches, namely Ito et al. (US 2016/0003118 A1) and Kawakami et al. (US 2019/0152795 A1) came to the examiner’s attention, a new set of 35 U.S.C. 103 rejections are provided as set forth below.
This is a second non-final.
Specification
The abstract of the disclosure is objected to because it appears to be more than one single paragraph. It is suggested to delete indentations in the present abstract in order to form one single paragraph.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, 8, 11, 13, 17, 21-22, 25-27, 35, 38, and 42 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, the alumina comprises two porosity profiles, wherein one is formed after calcining in air at 1100°C for 5 hours. However, it is unclear if the additional properties of the alumina including the bulk density would remain the same after calcining if the pore volume changes after calcining. For the purposes of examination, the examiner interprets the limitation to mean “prior to calcination” and including the first pore profile. Clarification is requested.
Regarding dependent claims 8, 11, 13, 17, 21-22, 25-27, 35, 38, and 42, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim 8 recites the alumina “having a BET specific surface area of between 100 and 200 m2/g”. However, it is unclear if this BET specific surface area range includes the first pore profile or the second pore profile of claim 1, as the properties of the alumina change depending on calcination. For the purposes of examination, the examiner interprets the limitation to mean “prior to calcination” and including the first pore profile. Clarification is requested.
Claim 13 recites the alumina “having a total pore volume which is strictly greater than 1.05 mL/g”. However, it is unclear if this total pore volume includes the first pore profile or the second pore profile of claim 1, as the properties of the alumina change depending on calcination. For the purposes of examination, the examiner interprets the limitation to mean “prior to calcination” and including the first pore profile. Clarification is requested.
Claims 25 and 26 recite the alumina having an average particle size and a D90 for particle size distribution. However, it is unclear if these particle size ranges are for alumina having the first pore profile or the second pore profile, as the properties of the alumina change depending on calcination. For the purposes of examination, the examiner interprets the limitations to mean “prior to calcination” and including the first pore profile. Clarification is requested.
Claim 27 recites the alumina having a bulk density between 0.4 and 0.55 g/cm2. However, it is unclear if this bulk density range is for alumina having the first pore profile or the second pore profile, as the properties of the alumina change depending on calcination. For the purposes of examination, the examiner interprets the limitations to mean “prior to calcination” and including the first pore profile. Clarification is requested.
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, 8, 11, 13, 17, 21-22, 35, 38, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US 2016/0003118 A1) (Ito) in view of Kawakami et al. (US 2019/0152795 A1) (Kawakami).
Regarding claims 1, 11, 17, 22, and 42, Ito teaches an oxidation catalyst comprising alumina, in powder form, that carries a precious metal and promoter (Ito, Abstract; [0044-0049]; [0077]), the alumina specifically having lanthanum oxide added to have excellent heat resistance (Ito, [0080]) and wherein lanthanum oxide is added in an amount between 1 and 20% by weight (Ito, [0081]), which overlaps with the range of the presently claimed. Ito further teaches the alumina has a volume density of 0.25 to 0.40 g/cm3 (Ito, [0117]), a pore diameter in the range of 10 to 60 nm (Ito, [0091]), which falls within the claimed range, and a pore volume of 0.5 to 1.5 cm3/g (i.e., mL/g) (Ito, [0092]), which overlaps with the range of the presently claimed (i.e., claim 42, having the first porosity profile).
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).
While Ito does not explicitly teach the claimed second profile or “a profile” (claims 1 and 22), a BET specific surface area of between 45 and 60 m2/g (i.e., claim 11), a total pore volume which is at least 0.90 mL/g (i.e., claim 17) formed after calcining in air at 1100°C or 1200°C for 5 hours, as the alumina as taught by Ito is substantially identical to the claimed alumina including the additional element and first pore profile, it is clear that it would inherently have the claimed second pore profile or “a profile”, BET specific surface area, and total pore volume after calcining in air at 1100°C or 1200°C for 5 hours.
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, while Ito does not explicitly teach the pore volumes are measured using a mercury porosimetry technique, one of ordinary skill in the art would know to use a known measuring technique to obtain accurate results for pore volume.
However, Ito does not explicitly teach a bulk density of between 0.25 g/cm3 and 0.55 g/cm3.
With respect to the difference, Kawakami teaches an alumina having a multimodal particle size distribution and comprising 1 to 5 wt% of La (Kawakami, Abstract). Kawakami teaches the alumina is used as an automotive catalyst and has a BET specific surface area of 90 to 500 m2/g, a pore volume of 0.4 to 1.8 mL/g, and a bulk density of 0.1 to 1.1 g/mL (Kawakami, [0001]; [0016]; [0017]; [0018]), which overlaps with the range of the presently claimed.
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).
As Kawakami expressly teaches, through control of the bulk density in this range, the handling properties in a slurry preparation step can be improved (Kawakami, [0053]), which is beneficial for Ito as Ito also teaches preparing a slurry and how it is affected by the density of the alumina particles (Ito, [0027]).
Kawakami is analogous art as it is drawn to alumina catalysts comprising lanthanum as automotive catalysts (Kawakami, Abstract; [0001]).
In light of the motivation of controlling a bulk density to be in the range of 0.1 to 1.1 g/mL as disclosed by Kawakami, it therefore would have been obvious to one of ordinary skill in the art to modify the alumina particles of Ito by controlling the bulk density to be in the range of 0.1 to 1.1 g/mL in order to improve the handling properties in a slurry preparation step, and thereby arrive at the claimed invention.
Regarding claim 8, Ito, in view of Kawakami, teaches the alumina as claimed in claim 1, wherein the alumina has a BET specific surface area of 50 to 300 m2/g, more preferably 80 to 250 m2/g (Ito, [0090]), which overlaps with the range of the presently claimed.
Regarding claim 13, Ito, in view of Kawakami, teaches the alumina as claimed in claim 1, wherein the pore volume is preferably 0.3 to 2.0 cm3/g (i.e., mL/g) (Ito, [0092]), which overlaps with the range of the presently claimed.
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 21, Ito, in view of Kawakami, teaches the alumina as claimed in claim 1, wherein the alumina has a pore diameter of 10 to 60 nm (Ito, [0091]), and therefore the pore volume in the range of pores with a size between 100 nm and 1000 nm is 0 mL/g which falls within the claimed range of “less than or equal to 0.05 mL/g”.
Regarding claims 25 and 26, Ito, in view of Kawakami, teaches the alumina as claimed in claim 1, wherein the alumina powder is ball-milled until a predetermined particle size is attained (Ito, [0160]).
However, Ito does not explicitly teach the alumina has (a) an average particle size D50 of between 15.0 and 80.0 μm and (b) a D90 of between 40.0 μm and 150.0 μm.
With respect to the differences (a) and (b), Kawakami teaches a particle size distribution having a maximum value in a range of 0 < x < 10 and 10 < x < 1000 where x is a particle diameter in μm as measured by laser diffraction (Kawakami, [0035]-[0042]). Further, wherein the particle diameter D50 [μm] in embodiments is 37.0, 25.8, 24.5, 26.0, and 31.5 (Kawakami, Table 1), which fall within the claimed D50 range.
Further, while Kawakami does not specifically teach a D90 value, Figure 1 shows the particle size frequency where it is clear at least 90% of the particles have a size less than 200 μm (Kawakami, Fig. 1), which overlaps with the range of the presently claimed.
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).
As Kawakami expressly teaches, controlling the size of the alumina particles means the alumina retains excellent heat resistance and only a small reduction in the BET specific surface area when heat treated (Kawakami, [0013]; [0023]).
In light of the motivation of controlling the size of the alumina particles to have D50 and D90 in the claimed ranges as disclosed by Kawakami, it therefore would have been obvious to one of ordinary skill in the art to modify the size of the alumina particles of Ito by using the method of Kawakami in order to have alumina particles that retain excellent heat resistance and only a small reduction in the BET specific surface area, and thereby arrive at the claimed invention.
Regarding claim 27, Ito, in view of Kawakami, teaches the alumina as claimed in claim 25, wherein the bulk density is preferably 0.1 to 1.1 g/mL (Kawakami, [0053]), which overlaps with the range of the presently claimed.
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 claims 35 and 38, Ito, in view of Kawakami, teaches the alumina as claimed in claim 1, wherein Ito does not teach the alumina containing any sodium or sulfates. Therefore, there is no motivation for a person of ordinary skill in the art to include sodium or sulfates in the alumina, and therefore the content of sodium and sulfates would be 0% by weight, which falls within the claimed ranges of less than or equal to 0.50% by weight of sodium and less than or equal to 1.00% by weight of a sulfate.
Response to Arguments
In response to applicant’s amendment to claim 1, the previous claim objection is withdrawn from the record.
In response to the amendment regarding “wherein the alumina has a bulk density of between 0.25 g/cm3 and 0.55 g/cm3” and based on applicant’s remarks filed on pages 9-15 regarding 35 U.S.C. 103 rejections over Boualleg and Sun in view of additional teaching references Alphonse, Di Monte, Noweck, and Bin, it is agreed that these references would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Ito in view of Kawakami.
Conclusion
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..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s director, Alexa Neckel can be reached at (571)272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
Prosecution Insights