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 .
Priority
This application is a 371 of PCT/JP2021/000588 which claims the benefit of JP 2020-002508 with an effective filing date of 10 January 2020 as reflected in the filing receipt mailed on 03 October 2022.
Status of the Claims
Claims 1, 4, 5, and 7-9 are currently pending.
Claims 1 and 7 are currently amended.
Claim 2 is currently cancelled.
Claims 3 and 6 were previously cancelled.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 21 January 2026, 13 February 2026, and 16 March 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Response to Amendments
Applicant’s amendments filed 24 April 2026 are acknowledged.
Claim Objections
Applicant’s amendments to claims 1 and 7 are sufficient to overcome the
objections of the claims. The claims have been amended to clarify the grammar. The objections are withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendment to claim 7 is sufficient to overcome the rejection of claim
7 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 7 has been amended to recite a proper method claim. The rejection is withdrawn.
Claim Rejections - 35 USC § 101
Applicant’s amendment to claim 7 is sufficient to overcome the rejection of claim 7 under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 7 has been amended to recite a proper method claim. The rejection is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 adding D1 functional limitations to claim 1 and amendment to claim 7 adding specific method steps and concentrations not taught by Atsushi are sufficient to overcome the rejection of claims 1, 2, 4, 5, and 7-9 under 35 U.S.C. 103 as being unpatentable over Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi). Due to the amendments to claims 1 and 7, and the cancellation of claim 2, the rejection is withdrawn and new ground(s) of rejection is/are provided below.
Double Patenting
Applicant’s amendment to claim 1 adding D1 functional limitations to claim 1 and amendment to claim 7 adding specific method steps and concentrations not taught by Atsushi and cancellation of claim 2 are sufficient to overcome the rejections of:
Claims 1, 2, 4, 5, and 7-9 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 6,028,220 A to Wada et al. (patented 22 February 2000, hereinafter Wada) in view of Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi);
Claims 1, 2, 4, 5, and 7-9 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, and 7 of U.S. Patent No. 9,393,553 B2 to Kawaguchi et al. (patented 19 July 2016, hereinafter Kawaguchi) in view of Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi); and,
Claims 1, 2, 4, 5, and 7-9 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 9 of U.S. Patent No. 9,440,904 B2 to Nakazawa et al. (patented 13 September 2016, hereinafter Nakazawa ‘904) in view of Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi).
Due to the amendments to claims 1 and 7, and the cancellation of claim 2, the above rejections are withdrawn and new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 24 April 2026 have been fully considered but they are either persuasive, moot, or not persuasive.
Claim Rejections - 35 USC § 112
In response to applications arguments on pages 4-5 of the remarks filed on 24 April 2026 that “claim 1 is not indefinite because a person having ordinary skill in the art would readily be capable of determining individual amounts of c1, d1, and e1 within the recited individual ranges that also satisfy the total amount of c1 + d1 + e1 permitted by the claims. In other words, the boundaries of the claim are clearly discernable from the current claim language.” The arguments are persuasive; therefore, the rejection of claims 1, 2, 4, 5, and 7-9 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is withdrawn.
Applicant’s argue that Atsushi does not disclose the limitations as recited in amended claim 1. These arguments have been considered but are moot for the reasons set forth in the new grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 24 April 2026 with respect to Atsushi have been considered but are moot because the new ground of rejection does not rely on Atsushi applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applications arguments on pages 14-16 of the remarks filed on 24 April 2026 that “a catalyst satisfying the Q1 requirement of the present claims achieves a remarkably superior effect in suppressing a decrease in useful selectivity during long-term operation. This effect would be unpredictable and unexpected”.
The fact that the inventor 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). In addition, “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)”, see MPEP 716.02(d).
Instant application claim 1 states “a changing rate (Q1) per 1000 hours of reaction time represented by the following formulae (1) to (4) is 1.5 or less” and “a changing amount (D1) per 1000 hours of reaction time represented by the following formula (5) and the formulae (2) to (4) is 4.1 or less”. Applicant’s argue, as stated above, “the Q1 requirement of the present claims achieves a remarkably superior effect”; however, Applicants have not provided a proper comparison to the closest prior art and have not established test points inside and outside the claimed range of Q1 and D1 values in order to support the argument of surprising and unexpected results, see MPEP 716.02(e).
The instant specification is relied upon for any comparison tests/examples. Tables 1-3 of the instant specification detail some measurements of Q1 and D1. It is noted the instant specification details after oxidation parameters after an aging treatment simulating an oxidation reaction and an additional time after a full real time oxidation reaction using the catalyst, see the 35 USC 112 rejection below. Examples 1-3 and Comparative Example 1 detail aging times of 1300, 26000, 24000, and 1300 hours, respectively. Paras. [0084]-[0088] of the instant specification state “[t]he gas at the outlet of the reaction tube was analyzed between 100 hr and 150 hr from the start of introduction of propylene. The results of … the XRD measurement of the catalyst 1-1, the catalyst 2-1, the catalyst 3-1, and the catalyst 1-4 are shown in Table 1 … the XRD measurement of the catalyst 1-2, the catalyst 2-2, the catalyst 3-2, and the catalyst 4-2 are shown in Table 2 … Table 3 shows Q1, Q2, Q3, D1, D2, D3, and the amount of decrease in the useful selectivity per 1000 hours of the reaction time in consideration of the reaction time T (hr) during which the oxidation reaction was carried out.” It is unclear as to the value of T used to calculate Q1 and D1. The Q1 and D1 values of Table 3 appear to be calculated using the aging times as T. The Examples do not provide tests of time T of below 1300 hrs or above 26000 hours. Table 3 details Q1 levels above and below 1.5 and D1 levels of about 4.1 or less. The examples do not provide comparison values of D1 levels above 4.1. Therefore, the instant specification does not provide a comparison to the closest prior art and tests with reaction times of from a few hours to more than 26000 hours, which is an important variable in the calculation of both Q1 and D1; and, tests of D1 levels above 4.1 in order to support the argument of surprising and unexpected results relating to the Q1 and D1 parameter ranges, see MPEP 716.02(e).
For the reasons indicated above, applicant’s above arguments are not persuasive.
Double Patenting
As stated above, the various double patenting rejections are withdrawn; therefore, Applicants arguments regarding the various double patenting rejections are moot.
New Rejections Based on Amendments to the Claims in the reply filed on 24 April 2026
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
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.
Claims 1, 4, 5, and 7-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 USC 112(b) is appropriate, see MPEP 2173.02.
Instant application claim 1 recites formula (1) “Q1 = {(U1/F1 – 1) x 100}/T x 1000” and formula (5) “D1 = (U1-F1)/T x 1000”, where formula (4) is “T = time (hr) during which oxidation reaction is carried out”. The instant specification Para. [0075] states “an aging treatment described later means that a reaction tube having a specified thickness is filled with a catalyst, propylene is caused to flow at a specified flow rate, and an oxidation reaction is performed for a specified period”. The instant specification details after oxidation parameters after an aging treatment simulating an oxidation reaction, see Paras. [0077];[0079];[0081];[0083], and an additional time after a full real time oxidation reaction using the catalyst, see Para. [0084]. It is unclear as to which time in which the “oxidation reaction is carried out” is to be applied as the variable T.
The Q1 and D1 values of Table 3 appear to be calculated using the aging times as T. For example, applying Example 3:
Q1 = {[(24.73/18.70) – 1] x 100} = 32.25, continuing the equation dividing by the aging time in Example 3 of 24000 hours = 0.001344 x 1000 = 1.344 which is the Q1 listed in instant application Table 3. The same equation applying only the “between 100 hr and 150 hr” of the real time reaction in instant application Para. [0084] leads to a Q1 of 0.3225 x 1000 =322.5 if T is 100 hours; and,
D1 = (24.73-18.70) = 6.03, continuing the equation dividing by the aging time in Example 3 of 24000 hours = 0.0002513 x 1000 = 0.251 which is the D1 listed in instant application Table 3. The same equation applying only the “between 100 hr and 150 hr” of the real time reaction in instant application Para. [0084] leads to a D1 of 0.0603 x 1000 = 60.3 if T is 100 hours.
Therefore, the variable T in instant application claim 1 is unclear. The variable T lacks clarity as to whether the variable T is the aging time alone, the aging time & the actual use time together, or the actual use time alone.
Claims 4, 5, and 7-9 depend from base claim 1 and are included in this rejection as they do not correct the informalities identified in base claim 1.
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 1, 4, 5, and 7-9 are newly rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (US20150238939, published 27 August 2015, hereinafter Yoshida) in view of Kimura et al. (US20120298557, published 29 November 2012, hereinafter Kimura).
Yoshida is in the known prior art field of oxide catalysts “that prevents the reduction degradation of the catalyst even during industrial operation for a long time” preventing the reduction in “unsaturated aldehyde yields, diolefin yields, or unsaturated nitrile yields, and a method for producing the same, and methods for producing unsaturated aldehyde, diolefin, and unsaturated nitrile using the oxide catalyst”, see Abstract, where to determine the stability of the oxidation catalyst the “XRD (2θ=10 to 60°)” of the catalyst is taken “before and after gas-phase catalytic oxidation reaction” of the olefin to compare the peak intensities at varying degrees before oxidation and after oxidation, see Paras. [0069];[0097];[0137];[0295]; Figs. 8, 12-15.
Regarding the limitations of instant application claims 1 and 9, Yoshida teaches a catalyst “having a disordered phase that is stable even at a high temperature and has high reduction resistance” that “can be obtained by the successful incorporation of an element having a predetermined ion radius into the crystal structure” for producing an unsaturated aldehyde compound and an unsaturated carboxylic acid compound, see Paras. [0030]-[0039];[0407], where the catalyst has the “composition formula (1):Mo12BiaFebAcCodBeCfOg (1),
wherein Mo represents molybdenum; Bi represents bismuth; Fe represents iron; the element A represents an element having an ion radius larger than 0.96 Å (except for potassium, cesium, and rubidium); Co represents cobalt; an element B represents at least one element selected from the group consisting of magnesium, zinc, copper, nickel, manganese, chromium, and tin; an element C represents at least one element selected from the group consisting of potassium, cesium, and rubidium; a to g each represent the atomic ratio of each element to 12 Mo atoms wherein the atomic ratio a of Bi is 1≦a≦5, the atomic ratio b of Fe is 1.5≦b≦6, the atomic ratio c of the element A is 1≦c≦5, and the atomic ratio d of Co is 1≦d≦8, an atomic ratio e of the element B is 0≦e<3, an atomic ratio f of the element C is 0≦f≦2, and a ratio of Fe/Co is 0.8≦b/d; and g represents a atomicity of oxygen determined by a valences of constituent elements other than oxygen”, where nickel=B is present from 0≦e≦3, cobalt is present from 1≦d≦6 or 8, and iron is present from 1.5≦b≦6, see Paras. [0030]-[0038];[0234]-[0242], and the catalyst may specifically be of the third embodiment Example C1 = Mo12.0 Bi2.0 Fe3.4 Co3.0 Ce2.0=instant application X Cs0.16=instant application Y, or Comparative Example C1 = Mo12.0 Bi1.6 Fe1.0 Co8.0 Ce0.4=instant application X Cs0.4+K0.2=instant application Y, see Paras. [0370]-[0374];[0390]-[0393];[0401]; Figs. 12-15; Tables 10 & 11, meeting:
The catalyst for producing at least one unsaturated aldehyde compound and an unsaturated carboxylic acid compound in instant application claim 1 and in instant application claim 9;
Catalytically active formula (A) within the specific number of atoms of each active component in instant application claim 1; and,
To determine the stability of the oxidation catalyst over long periods of time the “XRD (2θ=10 to 60°)” of the catalyst is taken “before and after gas-phase catalytic oxidation reaction of olefin” to compare the peak intensities at varying degrees, see Paras. [0057];[0069]-[0072];[0097];[0137];[0258]-[0259], where “[i]n FIG. 12, the XRD (2θ=10 to 60°) of the oxide catalyst before and after gas-phase catalytic oxidation reaction of olefin in Example C1 is illustrated. In FIG. 13, an enlarged chart for the range of 2θ=25 to 27° in FIG. 12 is illustrated. The oxide catalyst before gas-phase catalytic oxidation reaction of olefin in Example C1 had an XRD peak from CoMoO4 (002) at 2θ=26.46°, and the oxide catalyst after reaction had an XRD peak from CoMoO4 (002) at 2θ=26.34°. It was thus found that bivalent Fe was solid-dissolved in CoMoO4”, see Paras. [0398]-[0402]; Figs. 12 & 13 and below,
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. As shown in Fig. 13, the 25.3° and 26.5° peak height and areas of catalyst Example C1 of Mo12.0 Bi2.0 Fe3.4 Co3.0 Ce2.0 Cs0.16 differ before and after oxidation, see Paras. [0370]-[0374];[0398]-[0402]; Fig. 13, meeting the X-ray diffraction (XRD) measurement of the oxide catalyst and the change in the 25.3° and 26.5° peak by XRD before and after reaction in instant application claim 1.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and a changing amount (D1), Yoshida teaches the time frame for the difference between the before oxidation to after oxidation is set as “5 minutes for reduction treatment, and then the reaction evaluation conditions were restored and the flow was maintained for 5 minutes”, where the “constituted one set, and the reaction was evaluated after 100 sets of executions”, see Para. [0262], as calculated by the examiner the time may be 10 x 100 = 1000 minutes = 16.67 hours. As calculated by the examiner, based on approximations of the intensity count in Fig. 13, see * above, and 16.67 hours of reaction time, F1 = (800/3300) x 100 = 24.24; U1 = (1500/5000) x 100 = 30; Q1 = {[(30/24.24) – 1] x 100} = (23.76/16.67) x 1000 = 1425.46; and, D1 = [(30-24.24)/16.67] X 1000) = 345.5.
As stated above, the calculation of both Q1 and D1 mainly depend upon the reaction time T. The instant specification and claims do not specify whether the reaction time is the aging time only, the aging time & the actual use time, or the actual use time only. The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004), see MPEP 2111. Based on the approximations of the intensity count in Fig. 13 of Yoshida, see above, and 300 to 30000 hours of reaction time as stated on Pg. 11, Lns. 15-24 of the instant specification, Yoshida may be interpreted by one of ordinary skill in the art to have the time T of 300 hours and 30000 hours calculated as F1 = (800/3300) x 100 = 24.24; U1 = (1500/5000) x 100 = 30; Q1 = {[(30/24.24) – 1] x 100} = (23.76/300 or 30000) x 1000 = 79.20 or 0.925 ; and, D1 = [(30-24.24)/300 or 30000] X 1000) = 19.2 or 0.192.
As stated above, Yoshida teaches the catalyst of Formula (A), testing the peak intensity of the catalyst before and after oxidation reaction, and the peak intensity of the catalyst at 25.3° and 26.5° change from before and after the oxidation reaction. Yoshida also teaches that “the oxide catalyst contains a predetermined proportion of the disordered phase and is therefore less susceptible to reduction degradation in industrial operation for a long time”, see Para. [0172]. Therefore, since “[p]roducts of identical chemical composition can not have mutually exclusive properties,” see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01, the product catalyst of Yoshida tested after a very long period of use throughout the life of the catalyst, such as 16000 hours or about 2 years, will inherently possess the functional limitation of a changing rate (Q1) per 1000 hours of reaction time represented by the following formulae (1) to (4) is 1.5 or less and a changing amount (D1) per 1000 hours of reaction time represented by the following formula (5) and the formulae (2) to (4) is 4.1 or less, obviously meeting within the range of Q1 and D1 in instant application claim 1.
“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, if the XRD pattern in Yoshida is taken after 15000 hours of oxidation on the same catalyst as Formula A, the changing rates Q1 and D1 will inherently also be the same as instantly claimed, obviously meeting within the range of Q1 and D1 in instant application claim 1.
In addition, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”, see MPEP 2112 I.
Regarding the limitations of instant application claims 4 and 5, Yoshida teaches the oxide catalyst is supported by a carrier, where the “carrier is preferably, but not limited to, at least one selected from the group consisting of, for example, silica, alumina, titania, and zirconia”, see Paras. [0039];[0243]-[0244]; [0370]-[0374];[0390]-[0393]; Table 10, meeting the catalyst carrier and the specific catalyst carrier in instant application claim 4 and in instant application claim 5.
Regarding the limitations of instant application claims 7 and 8, Yoshida teaches a method of producing acrolein by “the gas-phase catalytic oxidation of propylene, for example, under any condition without limitations and can be produced by a method generally used for producing acrolein through the gas-phase catalytic oxidation of propylene. For example, a mixed gas containing 1 to 15% by volume of propylene, 3 to 30% by volume of molecular oxygen, 0 to 60% by volume of water vapor, and 20 to 80% by volume of inert gas such as nitrogen and CO2 gas can be introduced at 250 to 450° C. under pressure of 0.1 to 1 MPa at a space velocity (SV) of 300 to 5000 hr−1 to a catalyst layer in a reactor” “under normal temperature pressure (NTP) conditions”, see Paras. [0139]-[0143], i.e., 0.1 to 1 MPa = 1 to 10 atm, where “acrolein or acrylic acid can be produced using propylene, propanol, or isopropanol as a starting material”, see Para. [0083], using the oxide catalyst of Example C1 or Comparative Example C1, see Paras. [0370]-[0374];[0390]-[0393]; Table 11, meeting the method of producing the specific unsaturated aldehyde acrolein over the catalysts of formula (A) and within the concentration ranges of the raw materials in instant application claim 7 and in instant application claim 8.
Yoshida does not specifically teach:
The instant application claim 1 limitations of an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst after a long time of use, such as at about 2 years of service life, as compared to before initial use of the catalyst.
Kimura is in the known prior art field of a “catalyst being prepared by supporting molybdenum and at least one species selected from metals of Groups 8 to 10 of the Periodic Table on an inorganic carrier”, see Abstract, where the difference in “a peak intensity of a molybdenum composite metal oxide” of a new catalyst and a spent catalyst is quantified, analyzed, and compared to “a peak intensity derived from a molybdenum composite metal oxide” of “the regenerated catalyst” in order to determine “the removal of substances, such as coke and sulfur components which deteriorated the catalytic activity”, see Paras. [0007];[0036];[0041];[0044];[0106].
Regarding the limitations of instant application claim 1, Kimura teaches an unused catalyst molybdenum composite metal oxide catalyst, a spent molybdenum composite metal oxide catalyst, and a regenerated molybdenum composite metal oxide catalyst are each tested by CuKα XRD to determine “a peak intensity of Mo—S bond of molybdenum sulfide” and “a ratio of molybdenum oxide” in order to improve these parameters to achieve a regenerated molybdenum composite metal oxide catalyst with after regeneration CuKα XRD testing values of a “peak intensity of a molybdenum composite metal oxide with respect to an intensity of a base peak is in the range of 0.60 to 1.10 in an X-Ray diffraction spectrum”, where the spent catalyst is a catalyst after about 2 years of service life aka about 17520 hours, see Paras. [0007]-[0009];[0036];[0041]-[0046];[0055];[0058];[0106]; Table 1, i.e., testing and comparing the catalyst when unused/new, after 17520 hours of use, and after regeneration, and “[i]n the X-ray diffraction patterns, by focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide which is assumed from the active metal species contained in the catalyst” comparisons are made, see Paras. [0044]-[0046]; Fig. 1, meeting an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst before use, after a long time of use, such as at about 2 years of service life, as compared to before initial use again as a regenerated catalyst in instant application claim 1.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the determination and quantification X-ray diffraction pattern peak intensity before and after use testing of the molybdenum catalyst of Yoshida to determine and quantify the peak intensity by CuKα XRD before use and after about 17000 hours of use of the molybdenum catalyst as taught by Kimura with a reasonable predictability of success for the purpose of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the determination and quantification X-ray diffraction pattern peak intensity before and after use testing of the molybdenum catalyst of Yoshida by applying the known technique to determine and quantify the peak intensity by CuKα XRD before use and after about 17000 hours of use of the molybdenum catalyst as taught by Kimura with a reasonable predictability of success for the purpose of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106]; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Yoshida and Kimura both teach determining and quantifying X-ray diffraction pattern peak intensities before and after use of the molybdenum catalyst, a person of ordinary skill in the art has good reason to modify Yoshida by relying upon Kimura before the effective filing date of the claimed invention for knowledge generally available within the molybdenum catalyst XRD peak intensity art regarding the peak intensity before use and after long periods of use, see MPEP 2143 B & G and 2141, for the benefit of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106]; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Yoshida and Kimura both teach determining and quantifying X-ray diffraction pattern peak intensities before and after use of the molybdenum catalyst, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try determining and quantifying the catalyst of Yoshida after a long time of use, such as at about 2 years of service life, as taught by Kimura.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[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. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree,” such as testing after 15000hours of catalysts use, “or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 5, and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 6,028,220 A to Wada et al. (patented 22 February 2000, hereinafter Wada) in view of Yoshida et al. (US20150238939, published 27 August 2015, hereinafter Yoshida) and Kimura et al. (US20120298557, published 29 November 2012, hereinafter Kimura).
The claims of Wada recite the instant application claims 1, 4, 8, and 9 limitations of a catalyst used in a method of producing acrolein and acrylic acid, comprising, as an essential component, molybdenum; bismuth; and cobalt of the formula Moa Bib Nic Cod Fef Yg Zh Ox supported on a carrier, where c+d = 0.5 to 20, see Claims 1 and 6, as calculated by the examiner instantly claimed c1+d1+e1 = Ni+Co+Fe = Nic+Cod+Fef = 1-28, meeting:
The catalyst and within the ranges in instant application claim 1;
A carrier in instant application claim 4;
The compounds in instant application claim 8; and,
The products produced in instant application claim 9.
The claims of Wada do not recite:
The peak intensity, Q1, and D1 in instant application claim 1;
The inert carrier in instant application claim 4; and,
The limitations in instant application claims 5 and 7.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and a changing amount (D1), the claims of Wada recite the catalyst of Formula (A). Therefore, since “[p]roducts of identical chemical composition can not have mutually exclusive properties,” see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01, the product catalyst of the claims of Wada tested after a very long period of use throughout the life of the catalyst, such as 16000 hours or about 2 years, will inherently possess the functional limitation of a changing rate (Q1) per 1000 hours of reaction time represented by the following formulae (1) to (4) is 1.5 or less and a changing amount (D1) per 1000 hours of reaction time represented by the following formula (5) and the formulae (2) to (4) is 4.1 or less, obviously meeting within the range of Q1 and D1 in instant application claim 1.
“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, if the XRD pattern in Yoshida is taken after 15000 hours of oxidation on the same catalyst as Formula A, the changing rates Q1 and D1 will inherently also be the same as instantly claimed, obviously meeting within the range of Q1 and D1 in instant application claim 1.
In addition, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”, see MPEP 2112 I.
Regarding the functional limitations of instant application claim 1, Yoshida teaches to determine the stability of the oxidation catalyst over long periods of time the “XRD (2θ=10 to 60°)” of the catalyst is taken “before and after gas-phase catalytic oxidation reaction of olefin” to compare the peak intensities at varying degrees, see Paras. [0057];[0069]-[0072];[0097];[0137];[0258]-[0259], where “[i]n FIG. 12, the XRD (2θ=10 to 60°) of the oxide catalyst before and after gas-phase catalytic oxidation reaction of olefin in Example C1 is illustrated. In FIG. 13, an enlarged chart for the range of 2θ=25 to 27° in FIG. 12 is illustrated. The oxide catalyst before gas-phase catalytic oxidation reaction of olefin in Example C1 had an XRD peak from CoMoO4 (002) at 2θ=26.46°, and the oxide catalyst after reaction had an XRD peak from CoMoO4 (002) at 2θ=26.34°. It was thus found that bivalent Fe was solid-dissolved in CoMoO4”, see Paras. [0398]-[0402]; Figs. 12 & 13 and below,
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. As shown in Fig. 13, the 25.3° and 26.5° peak height and areas of catalyst Example C1 of Mo12.0 Bi2.0 Fe3.4 Co3.0 Ce2.0 Cs0.16 differ before and after oxidation, see Paras. [0370]-[0374];[0398]-[0402]; Fig. 13, meeting the X-ray diffraction (XRD) measurement of the oxide catalyst and the change in the 25.3° and 26.5° peak by XRD before and after reaction in instant application claim 1.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and a changing amount (D1), Yoshida teaches the time frame for the difference between the before oxidation to after oxidation is set as “5 minutes for reduction treatment, and then the reaction evaluation conditions were restored and the flow was maintained for 5 minutes”, where the “constituted one set, and the reaction was evaluated after 100 sets of executions”, see Para. [0262], as calculated by the examiner the time may be 10 x 100 = 1000 minutes = 16.67 hours. As calculated by the examiner, based on approximations of the intensity count in Fig. 13, see * above, and 16.67 hours of reaction time, F1 = (800/3300) x 100 = 24.24; U1 = (1500/5000) x 100 = 30; Q1 = {[(30/24.24) – 1] x 100} = (23.76/16.67) x 1000 = 1425.46; and, D1 = [(30-24.24)/16.67] X 1000) = 345.5.
As stated above, the calculation of both Q1 and D1 mainly depend upon the reaction time T. The instant specification and claims do not specify whether the reaction time is the aging time only, the aging time & the actual use time, or the actual use time only. The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004), see MPEP 2111. Based on the approximations of the intensity count in Fig. 13 of Yoshida, see above, and 300 to 30000 hours of reaction time as stated on Pg. 11, Lns. 15-24 of the instant specification, Yoshida may be interpreted by one of ordinary skill in the art to have the time T of 300 hours and 30000 hours calculated as F1 = (800/3300) x 100 = 24.24; U1 = (1500/5000) x 100 = 30; Q1 = {[(30/24.24) – 1] x 100} = (23.76/300 or 30000) x 1000 = 79.20 or 0.925 ; and, D1 = [(30-24.24)/300 or 30000] X 1000) = 19.2 or 0.192.
As stated above, Yoshida teaches the catalyst of Formula (A), testing the peak intensity of the catalyst before and after oxidation reaction, and the peak intensity of the catalyst at 25.3° and 26.5° change from before and after the oxidation reaction. Yoshida also teaches that “the oxide catalyst contains a predetermined proportion of the disordered phase and is therefore less susceptible to reduction degradation in industrial operation for a long time”, see Para. [0172]. Therefore, since “[p]roducts of identical chemical composition can not have mutually exclusive properties,” see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01, the product catalyst of Yoshida tested after a very long period of use throughout the life of the catalyst, such as 16000 hours or about 2 years, will inherently possess the functional limitation of a changing rate (Q1) per 1000 hours of reaction time represented by the following formulae (1) to (4) is 1.5 or less and a changing amount (D1) per 1000 hours of reaction time represented by the following formula (5) and the formulae (2) to (4) is 4.1 or less, obviously meeting within the range of Q1 and D1 in instant application claim 1.
Regarding the limitations of instant application claims 4 and 5, Yoshida teaches the oxide catalyst is supported by a carrier, where the “carrier is preferably, but not limited to, at least one selected from the group consisting of, for example, silica, alumina, titania, and zirconia”, see Paras. [0039];[0243]-[0244]; [0370]-[0374];[0390]-[0393]; Table 10, meeting the catalyst carrier and the specific catalyst carrier in instant application claim 4 and in instant application claim 5.
Regarding the limitations of instant application claims 7 and 8, Yoshida teaches a method of producing acrolein by “the gas-phase catalytic oxidation of propylene, for example, under any condition without limitations and can be produced by a method generally used for producing acrolein through the gas-phase catalytic oxidation of propylene. For example, a mixed gas containing 1 to 15% by volume of propylene, 3 to 30% by volume of molecular oxygen, 0 to 60% by volume of water vapor, and 20 to 80% by volume of inert gas such as nitrogen and CO2 gas can be introduced at 250 to 450° C. under pressure of 0.1 to 1 MPa at a space velocity (SV) of 300 to 5000 hr−1 to a catalyst layer in a reactor” “under normal temperature pressure (NTP) conditions”, see Paras. [0139]-[0143], i.e., 0.1 to 1 MPa = 1 to 10 atm, where “acrolein or acrylic acid can be produced using propylene, propanol, or isopropanol as a starting material”, see Para. [0083], using the oxide catalyst of Example C1 or Comparative Example C1, see Paras. [0370]-[0374];[0390]-[0393]; Table 11, meeting the method of producing the specific unsaturated aldehyde acrolein over the catalysts of formula (A) and within the concentration ranges of the raw materials in instant application claim 7 an din instant application claim 8.
The claims of Wada do not recite:
The instant application claim 1 limitations of an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst after a long time of use, such as at about 2 years of service life, as compared to before initial use of the catalyst.
Kimura is in the known prior art field of a “catalyst being prepared by supporting molybdenum and at least one species selected from metals of Groups 8 to 10 of the Periodic Table on an inorganic carrier”, see Abstract, where the difference in “a peak intensity of a molybdenum composite metal oxide” of a spent catalyst is quantified, analyzed, and compared to “a peak intensity derived from a molybdenum composite metal oxide” of “the regenerated catalyst” in order to determine “the removal of substances, such as coke and sulfur components which deteriorated the catalytic activity”, see Paras. [0007];[0036];[0041];[0044].
Regarding the limitations of instant application claim 1, Kimura teaches an unused catalyst molybdenum composite metal oxide catalyst, a spent molybdenum composite metal oxide catalyst, and a regenerated molybdenum composite metal oxide catalyst are each tested by CuKα XRD to determine “a peak intensity of Mo—S bond of molybdenum sulfide” and “a ratio of molybdenum oxide” in order to improve these parameters to achieve a regenerated molybdenum composite metal oxide catalyst with after regeneration CuKα XRD testing values of a “peak intensity of a molybdenum composite metal oxide with respect to an intensity of a base peak is in the range of 0.60 to 1.10 in an X-Ray diffraction spectrum”, where the spent catalyst is a catalyst after about 2 years of service life aka about 17520 hours, see Paras. [0007]-[0009];[0036];[0041]-[0046];[0055];[0058];[0106]; Table 1, i.e., testing and comparing the catalyst when unused/new, after 17520 hours of use, and after regeneration, and “[i]n the X-ray diffraction patterns, by focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide which is assumed from the active metal species contained in the catalyst” comparisons are made, see Paras. [0044]-[0046]; Fig. 1, meeting an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst before use, after a long time of use, such as at about 2 years of service life, as compared to before initial use again as a regenerated catalyst in instant application claim 1.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to recognize the catalyst of the claims of Wada as substantially the same as the instantly claimed catalyst with a reasonable predictability of success; therefore, the catalyst of the claims of Wada will substantially possess the same properties, such as Q1 and D1, as instantly claimed, see MPEP 2112.01.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the claims of Wada to use the inert carrier and to the measure, quantify, and manipulate X-ray peak intensities of substantially the same material, as taught by Yoshida and Kimura with a reasonable predictability of success for the purpose of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and the claims of Wada, Yoshida, and Kimura teach molybdenum oxide catalysts, a person of ordinary skill in the art has good reason to modify the claims of Wada by relying upon Yoshida and Kimura before the effective filing date of the claimed invention for knowledge generally available within the molybdenum catalyst XRD peak intensity art regarding the peak intensity before use and after long periods of use, see MPEP 2143 B & G and 2141, for the benefit of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106]; and, MPEP 2141 and 2143 I. B-D.
““[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”, see MPEP 2112 I. Therefore, the measurement, quantification, and manipulation of X-ray peak intensities of substantially the same material does not render the old composition patentably new to the discoverer and does not necessarily make the claim patentable.
Selection of a known material, such as catalytic active components, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claims 1, 4, 5, and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, and 7 of U.S. Patent No. 9,393,553 B2 to Kawaguchi et al. (patented 19 July 2016, hereinafter Kawaguchi) in view of Yoshida et al. (US20150238939, published 27 August 2015, hereinafter Yoshida) and Kimura et al. (US20120298557, published 29 November 2012, hereinafter Kimura).
The claims of Kawaguchi recite the instant application claims 1, 4, and 9 limitations of a catalyst used in a method of producing an unsaturated aldehyde and/or an unsaturated carboxylic acid, comprising, as an essential component, molybdenum; bismuth; and cobalt of the formula MO12BiaFebCOcNidXeYfZgOh on an inert carrier, where c+d=0.5 to 20, see Claims 1-3, 6, and 7, as calculated by the examiner instantly claimed c1+d1+e1 = Ni+Co+Fe = Coc+Nid+Feb = 1-28, meeting:
The catalyst and within the ranges in instant application claim 1;
The inert carrier in instant application claim 4; and,
The products produced in instant application claim 9.
The claims of Kawaguchi do not recite:
The peak intensity, Q1, and D1 in instant application claim 1; and,
The limitations in instant application claims 5, 7, and 8.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and a changing amount (D1), the claims of Kawaguchi recite the catalyst of Formula (A). Therefore, since “[p]roducts of identical chemical composition can not have mutually exclusive properties,” see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01, the product catalyst of the claims of Kawaguchi tested after a very long period of use throughout the life of the catalyst, such as 16000 hours or about 2 years, will inherently possess the functional limitation of a changing rate (Q1) per 1000 hours of reaction time represented by the following formulae (1) to (4) is 1.5 or less and a changing amount (D1) per 1000 hours of reaction time represented by the following formula (5) and the formulae (2) to (4) is 4.1 or less, obviously meeting within the range of Q1 and D1 in instant application claim 1.
“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, if the XRD pattern in Yoshida is taken after 15000 hours of oxidation on the same catalyst as Formula A, the changing rates Q1 and D1 will inherently also be the same as instantly claimed, obviously meeting within the range of Q1 and D1 in instant application claim 1.
In addition, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”, see MPEP 2112 I.
Regarding the functional limitations of instant application claim 1, the teachings of Yoshida are provided above, meeting the X-ray diffraction (XRD) measurement of the oxide catalyst and the change in the 25.3° and 26.5° peak by XRD before and after reaction in instant application claim 1.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and a changing amount (D1), the teachings of Yoshida are provided above, obviously meeting within the range of Q1 and D1 in instant application claim 1.
Regarding the limitations of instant application claims 4 and 5, the teachings of Yoshida are provided above, meeting the catalyst carrier and the specific catalyst carrier in instant application claim 4 and in instant application claim 5.
Regarding the limitations of instant application claims 7 and 8, the teachings of Yoshida are provided above, meeting the method of producing the specific unsaturated aldehyde acrolein over the catalysts of formula (A) and within the concentration ranges of the raw materials in instant application claim 7 and in instant application claim 8.
The claims of Kawaguchi do not recite:
The instant application claim 1 limitations of an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst after a long time of use, such as at about 2 years of service life, as compared to before initial use of the catalyst.
Regarding the limitations of instant application claim 1, the teachings of Kimura are provided above, meeting an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst before use, after a long time of use, such as at about 2 years of service life, as compared to before initial use again as a regenerated catalyst in instant application claim 1.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to recognize the catalyst of the claims of Kawaguchi as substantially the same as the instantly claimed catalyst with a reasonable predictability of success; therefore, the catalyst of Kawaguchi will substantially possess the same properties, such as Q1 and D1, as instantly claimed, see MPEP 2112.01.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the claims of Kawaguchi to use the inert carrier and to the measure, quantify, and manipulate X-ray peak intensities of substantially the same material, as taught by Yoshida and Kimura with a reasonable predictability of success for the purpose of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and the claims of Kawaguchi, Yoshida, and Kimura teach molybdenum oxide catalysts, a person of ordinary skill in the art has good reason to modify the claims of Kawaguchi by relying upon Yoshida and Kimura before the effective filing date of the claimed invention for knowledge generally available within the molybdenum catalyst XRD peak intensity art regarding the peak intensity before use and after long periods of use, see MPEP 2143 B & G and 2141, for the benefit of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106]; and, MPEP 2141 and 2143 I. B-D.
““[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”, see MPEP 2112 I. Therefore, the measurement, quantification, and manipulation of X-ray peak intensities of substantially the same material does not render the old composition patentably new to the discoverer and does not necessarily make the claim patentable.
Selection of a known material, such as catalytic active components, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claims 1, 4, 5, and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 9 of U.S. Patent No. 9,440,904 B2 to Nakazawa et al. (patented 13 September 2016, hereinafter Nakazawa ‘904) in view of Yoshida et al. (US20150238939, published 27 August 2015, hereinafter Yoshida) and Kimura et al. (US20120298557, published 29 November 2012, hereinafter Kimura).
The claims of Nakazawa ‘904 recite the instant application claims 1, 4, 8, and 9 limitations of a catalyst used in a method of producing an unsaturated aldehyde and/or an unsaturated carboxylic acid, such as acrolein and/or acrylic acid, comprising, as an essential component, molybdenum; bismuth; and cobalt of the formula Mo12BiaFebCOcNidXeYfZgOh on an inert carrier, see Claims 1-3 and 9, as calculated by the examiner instantly claimed c+d = Ni+Co = Coc+Nid = 5-10.5, c1+d1+e1 = Ni+Co+Fe = Coc+Nid+Feb = 6-13, meeting:
The catalyst and within the ranges in instant application claim 1;
The inert carrier in instant application claim 4;
The compounds in instant application claim 8; and,
The products produced in instant application claim 9.
The claims of Nakazawa ‘904 do not recite:
The peak intensity, Q1, and D1 in instant application claim 1; and,
The limitations in instant application claims 5 and 7.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and a changing amount (D1), the claims of Nakazawa ‘904 recite the catalyst of Formula (A). Therefore, since “[p]roducts of identical chemical composition can not have mutually exclusive properties,” see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01, the product catalyst of the claims of Nakazawa ‘904 tested after a very long period of use throughout the life of the catalyst, such as 16000 hours or about 2 years, will inherently possess the functional limitation of a changing rate (Q1) per 1000 hours of reaction time represented by the following formulae (1) to (4) is 1.5 or less and a changing amount (D1) per 1000 hours of reaction time represented by the following formula (5) and the formulae (2) to (4) is 4.1 or less, obviously meeting within the range of Q1 and D1 in instant application claim 1.
“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, if the XRD pattern in Yoshida is taken after 15000 hours of oxidation on the same catalyst as Formula A, the changing rates Q1 and D1 will inherently also be the same as instantly claimed, obviously meeting within the range of Q1 and D1 in instant application claim 1.
In addition, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”, see MPEP 2112 I.
Regarding the functional limitations of instant application claim 1, the teachings of Yoshida are provided above, meeting the X-ray diffraction (XRD) measurement of the oxide catalyst and the change in the 25.3° and 26.5° peak by XRD before and after reaction in instant application claim 1.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and a changing amount (D1), the teachings of Yoshida are provided above, obviously meeting within the range of Q1 and D1 in instant application claim 1.
Regarding the limitations of instant application claims 4 and 5, the teachings of Yoshida are provided above, meeting the catalyst carrier and the specific catalyst carrier in instant application claim 4 and in instant application claim 5.
Regarding the limitations of instant application claims 7 and 8, the teachings of Yoshida are provided above, meeting the method of producing the specific unsaturated aldehyde acrolein over the catalysts of formula (A) and within the concentration ranges of the raw materials in instant application claim 7 and in instant application claim 8.
The claims of Nakazawa ‘904 do not recite:
The instant application claim 1 limitations of an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst after a long time of use, such as at about 2 years of service life, as compared to before initial use of the catalyst.
Regarding the limitations of instant application claim 1, the teachings of Kimura are provided above, meeting an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source; and, testing the XRD pattern of the catalyst before use, after a long time of use, such as at about 2 years of service life, as compared to before initial use again as a regenerated catalyst in instant application claim 1.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to recognize the catalyst of the claims of Nakazawa ‘904 as substantially the same as the instantly claimed catalyst with a reasonable predictability of success; therefore, the catalyst of Nakazawa ‘904 will substantially possess the same properties, such as Q1 and D1, as instantly claimed, see MPEP 2112.01.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the claims of Nakazawa ‘904 to use the inert carrier and to the measure, quantify, and manipulate X-ray peak intensities of substantially the same material, as taught by Yoshida and Kimura with a reasonable predictability of success for the purpose of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and the claims of Nakazawa ‘904, Yoshida, and Kimura teach molybdenum oxide catalysts, a person of ordinary skill in the art has good reason to modify the claims of Nakazawa ‘904 by relying upon Yoshida and Kimura before the effective filing date of the claimed invention for knowledge generally available within the molybdenum catalyst XRD peak intensity art regarding the peak intensity before use and after long periods of use, see MPEP 2143 B & G and 2141, for the benefit of efficiently determining and quantifying the catalyst activity over long periods of time based upon “focusing on an XRD peak of 2θ=26.5±2° attributed to a molybdenum composite metal oxide”, see Kimura, Paras. [0036];[0041]-[0046];[0106]; and, MPEP 2141 and 2143 I. B-D.
““[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”, see MPEP 2112 I. Therefore, the measurement, quantification, and manipulation of X-ray peak intensities of substantially the same material does not render the old composition patentably new to the discoverer and does not necessarily make the claim patentable.
Selection of a known material, such as catalytic active components, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Conclusion
No claims are allowed.
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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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