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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04 November 2025 has been entered.
Status of the Claims
Claims 1, 2, 4, 5, and 7-9 are pending.
Claims 3 and 6 are cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04 December 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendments
Applicant’s amendments filed 04 November 2025 are acknowledged.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 and cancellation of claims are sufficient to overcome the rejection of claims 1-9 under 35 U.S.C. 103 as being unpatentable over Nakazawa et al. (US20160145181, hereinafter Nakazawa ‘181) in view of Motomura et al. (EP3366372, hereinafter Motomura). Due to the amendment to claim 1 and the cancellation of claims, the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Double Patenting
Applicant’s amendment to claim 1 and cancellation of claims are sufficient to overcome the rejections of:
Claims 1-9 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. (hereinafter Wada) in view of EP 3 366 372 A1 to Motomura et al. (hereinafter Motomura);
Claims 1-7 and 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. (hereinafter Kawaguchi) in view of EP 3 366 372 A1 to Motomura et al. (hereinafter Motomura);
Claim 8 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 7 of U.S. Patent No. 9,393,553 B2 to Kawaguchi et al. (hereinafter Kawaguchi) in view of EP 3 366 372 A1 to Motomura et al. (hereinafter Motomura) and US 2016/0145181 A1 to Nakazawa et al. (hereinafter Nakazawa ‘181); and,
Claims 1-9 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. (hereinafter Nakazawa ‘904) in view of EP 3 366 372 A1 to Motomura et al. (hereinafter Motomura).
Due to the amendment to claim 1 and the cancellation of claims, the nonstatutory double patenting rejections are withdrawn and a new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 04 November 2025 have been fully considered but they are not persuasive.
Applicant’s argue that Nakazawa ‘181 and Motomura do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
Applicant’s arguments with respect to Nakazawa ‘181 and Motomura throughout the remarks filed on 04 November 2025 have been considered but are moot because the new ground of rejection does not rely on Nakazawa ‘181 and Motomura applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s arguments throughout the remarks filed on 04 November 2025 that “the presently required changing rate (Q1) per 1000 hours of reaction time represented by the formulae (1) to (4) of 1.5 or less is a critical and essential feature of the claimed catalyst, which achieves the objective of preventing the deterioration in selectivity for the target compound”, “the changing rate of the peak intensity ratio is an essential claim element of the claimed catalyst”, and “the presently required parameters can only be achieved by subjecting the catalyst to a vapor-phase catalytic reaction over a prescribed long period of time and measuring the changing rate of the peak intensities before and after the reaction”. It is noted “preventing deterioration in selectivity for the target compound” and “a vapor-phase catalytic reaction” are not currently claimed.
The 35 USC 103 new grounds of rejection below details the Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi) teaching of Q1, D1, peak intensities before and after the reaction, and the catalytically active composition formula (1), which is within identical ranges and compositions to the instantly claimed formula (A). Therefore, a prima facie case of either anticipation or obviousness has been established in regard to the instantly claimed catalyst functional properties of Q1, D1, and formula (A) in Atsushi, see MPEP 2112.01. Given a chemical composition and it’s properties are inseparable, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would expect the catalytic composition of Atsushi formula (1) to have the same catalytic properties, such as Q1 and D1, as the instantly claimed formula (A), see MPEP 2112.01. For the reasons indicated above and the below detailed teachings of Atsushi, applicant’s above argument is not persuasive.
In response to applicant’s note on pages 9-10 of the remarks filed on 04 November 2025 “that the parameters described in the present specification (Q1, Q2, Q3, D1, D2, D3 and/or S3) are not controlled solely by the composition of the catalytically active component, but are also adjusted” by a variety of methods (I)-(XI) detailed in instant specification Paras. [0033]-[0044]. Applicant’s clarification on the record is noted by the examiner.
In response to applicant’s arguments on pages 4-5, 11, 13, 16, and, 18-19 of the remarks filed on 04 November 2025 that “the objective and effect of the claimed catalyst is reducing deterioration of the useful selectivity over a long period”, “such an effect achieved by the claimed invention is unique to the presently claimed invention and would have been unexpected in view of the deficient teachings of the cited references”. As stated above and detailed below in the 35 USC 103 rejection, Atsushi teaches Q1, D1, peak intensities before and after the reaction, and the catalytically active composition formula (1), which is within identical ranges and compositions to the instantly claimed formula (A). Therefore, a prima facie case of either anticipation or obviousness has been established in regard to the instantly claimed catalyst functional properties of Q1, D1, and formula (A) in Atsushi, see MPEP 2112.01. Given a chemical composition and it’s properties are inseparable, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would expect the catalytic composition of Atsushi formula (1) to have the same catalytic properties, such as Q1 and D1, as the instantly claimed formula (A), see MPEP 2112.01. For the reasons indicated above and the below detailed teachings of Atsushi, applicant’s above arguments are not persuasive.
Double Patenting
In response to applicant’s argument on pages 11-19 of the remarks filed on 04 November 2025 that Wada, Kawaguchi, and Nakazawa ‘904 do not teach the newly amended Claim 1 line 14 limitation of “10.7 ≤c1+d1+e1≤ 11.5”. Wada teaches 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. Kawaguchi teaches formula MO12BiaFebCOcNidXeYfZgOh on an inert carrier, see Claims 1-3, 6, and 7, 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 = 7-13. Nakazawa ‘904 teaches 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. All three double patenting prior art references are within the Claim 1 line 14 limitation of “10.7 ≤c1+d1+e1≤ 11.5”. For the reasons indicated above, applicant’s above argument is not persuasive.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities:
Claims 1 and 7 state “for producing at least one selected from the group consisting of”, which appears to be grammatically incorrect. Claims 1 and 7 are interpreted to state “for producing at least one compound selected from the group consisting of”.
Appropriate correction is required.
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, 2, 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.
Regarding claim 1, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired, see MPEP § 2173.05(c). In the present instance, claim 1 line 14 recites the broad limitations “0 ≤c1≤ 10”, “0 <d1≤ 10”, and “0 ≤e1≤ 5.0”, and the claim also recites “10.7 ≤c1+d1+e1≤ 11.5” which is the narrower statement of the range/limitation. For example:
If c1≤ 10, d1 is 0.001 and e1 is 0, c1+d1+e1 cannot be greater than or equal to 10.7;
If c1 is 0, d1 is 0.001, and e1 is 0, c1+d1+e1 cannot be greater than or equal to 10.7;
If c1 is 10, d1 is 10, and e1 is 5, c1+d1+e1 cannot be less than or equal to 11.5, etc.
The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Claim 7 appears to be a “use” claim that does not recite method steps. The claim does not purport to claim a process, machine, manufacture, or composition of matter and fails to comply with 35 USC 112(b), see MPEP 2173.05(q).
Claims 2, 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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim is a “use” claim that does not recite method steps. The claim does not purport to claim a process, machine, manufacture, or composition of matter and fails to comply with 35 USC 101, see MPEP 2173.05(q).
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, 2, 4, 5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi).
Regarding instant application claim 1, Atsushi teaches the known prior art of an oxide catalyst for producing an unsaturated aldehyde compound, and if desired, a carboxylic acid compound, see Abstract; Para. [0052]. The oxide catalyst contains a composite metal oxide having a composition represented by the following composition formula (1): Mo12BiaFebCocCedAeBf, where in composition formula (1), A represents at least one element selected from the group consisting of potassium, cesium, and rubidium; B represents at least one element selected from the group consisting of nickel, manganese, copper, zinc, magnesium, calcium, strontium, barium, tin, lead, lanthanum, praseodymium, neodymium, and europium; and 1≦a≦5, 1≦b≦5, 2≦c≦10, 0<d≦3, 0<e≦2.0, and 0≦f≦2, and the atomic ratio of oxygen atoms in an oxide catalyst is determined by the valence conditions of other elements, see Paras. [0013];[0025];[0053], as calculated by the examiner instantly claimed c1+d1 = Ni+Co = Bf+Coc = 2-12 and c1+d1+e1 = Ni+Co+Fe = Bf+Coc+Feb = 3-17, meeting the catalyst, catalytically active composition formula (A), and within the ranges of the catalytically active composition formula (A) in instant application claim 1;
Since the instantly claimed limitation of “or less” includes a lower limit of zero or below, Atsushi further teaches the catalysts has peaks at 25.30±0.20 and 26.50±0.20 in an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source, see Fig. 1; Paras. [0013]-[0015];[0022]-[0023]. The crystal structure is controlled by controlling the timing for addition of the organic substance to after each raw material is added and before molding, see Para. [0044], which is method (XI) of the variety of methods (I)-(X) also taught by Atsushi, relied upon in the instant specification to obtain instantly claimed Q1 and D1, see instant specification Paras. [0033]-[0044].
In Atsushi, the X-ray diffraction pattern peak intensities are used for the calculation of parameters measured before use and after 500 hours of oxidative use, see Paras. [0013];[0056], where the values of the measured parameter based on the peak intensities were substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1/F1 ≈ 1 and Q1 ≈ 0, meeting within the range of Q1 in instant application claim 1.
In regard to the preamble statement of “for producing at least one selected from the group consisting of an unsaturated aldehyde compound and an unsaturated carboxylic acid compound”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement above is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
Regarding instant application claim 2, since the instantly claimed limitation of “or less” includes a lower limit of zero or below, as stated above Atsushi teaches the values of the measured parameter based on the peak intensities where substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1-F1 ≈ 0 and D1 ≈ 0, meeting within the range of D1 in instant application claim 2.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and in instant application claim 2 pertaining to a charging amount (D1), Atsushi teaches the catalytically active composition formula (1), which is within identical ranges and compositions to the instantly claimed formula (A). Therefore, a prima facie case of either anticipation or obviousness has been established in regard to the instantly claimed catalyst functional properties of Q1 and Di and formula (A) in Atsushi, see MPEP 2112.01. Given a chemical composition and it’s properties are inseparable, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would expect the catalytic composition of Atsushi formula (1) to have the same catalytic properties, such as Q1 and D1, as the instantly claimed formula (A), see MPEP 2112.01.
Regarding instant application claims 4 and 5, Atsushi teaches the catalyst contains a carrier component, such as silica, alumina, titania, or zirconia, see Para. [0030], meeting the specific carrier in instant application claim 4 and in instant application claim 5.
Regarding instant application claims 7-9, Atsushi teaches producing acrolein and methacrylic acid by gas-phase catalytic oxidation reaction of propylene using the oxide catalyst of formula (1), see Paras. [0013];[0049]-[0052], meeting:
The method in instant application claim 7;
The specific aldehyde in instant application claim 8; and,
The aldehyde product produced in instant application claim 9.
In further regard to instant application claim 9, the compound “produced using the catalysts according to claim 1”, see MPEP 2113 I. stating “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”. Atsushi teaches the unsaturated aldehyde compound and the carboxylic acid compound; therefore, the process of production is not given patentable weight.
Atsushi does not teach:
The catalytic active components in one single express embodiment; and,
The measurement/quantification of the peak intensity at 25.30±0.20.
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 Atsushi to select the desired catalytic active components, see MPEP 2144.07, at the desired optimal concentration range from the Mo12BiaFebCocCedAeBf catalyst teaching, see MPEP 2144.05, and to measure/qualify the peak intensity of the catalyst at 25.30±0.20, see MPEP 2144.04 II.B., with a reasonable predictability of success for the purpose of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Paras. [0004];[0007];[0011]-[0015].
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 Atsushi teaches a Mo12BiaFebCocCedAeBf oxide catalyst where the peak intensities are measured in order to create the optimal crystal structure for catalyst longevity, a person of ordinary skill in the art has good reason to produce an unsaturated aldehyde by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Paras. [0004];[0007];[0011]-[0015] and MPEP 2141.
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.
““[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.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the amount of each catalytic active component, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as the measurement, quantification, and manipulation of X-ray peak intensities of substantially the same material, “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, 2, 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 Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi).
The claims of Wada recite the instant application claims 1, 4, and 6-9 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 method and compounds in instant application claim 7 and in instant application claim 8; and,
The products produced in instant application claim 9.
The claims of Wada do not recite:
The peak intensity and Q1 in instant application claim 1;
The inert carrier in instant application claim 4; and,
The limitations in instant application claims 2 and 5.
Atsushi teaches the known prior art of an oxide catalyst for producing an unsaturated aldehyde compound, and if desired, a carboxylic acid compound, see Abstract; Paras. [0013];[0025];[0052]-[0053].
Since the instantly claimed limitation of “or less” includes a lower limit of zero or below, Atsushi further teaches the catalysts has peaks at 25.30±0.20 and 26.50±0.20 in an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source, see Fig. 1; Paras. [0013]-[0015];[0022]-[0023]. The X-ray diffraction pattern peak intensities are used for the calculation of parameters measured before use and after 500 hours of oxidative use, see Paras. [0013];[0056], where the values of the measured parameter based on the peak intensities were substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1/F1 ≈ 1 and Q1 ≈ 0, meeting within the range of Q1 in instant application claim 1.
Regarding instant application claim 2, since the instantly claimed limitation of “or less” includes a lower limit of zero or below, as stated above Atsushi teaches the values of the measured parameter based on the peak intensities where substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1-F1 ≈ 0 and D1 ≈ 0, meeting within the range of D1 in instant application claim 2.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and in instant application claim 2 pertaining to a charging amount (D1), Atsushi teaches the catalytically active composition formula (1), which is within identical ranges and compositions to the instantly claimed formula (A). Therefore, a prima facie case of either anticipation or obviousness has been established in regard to the instantly claimed catalyst functional properties and formula (A) in Atsushi, see MPEP 2112.01. Given a chemical composition and it’s properties are inseparable, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would expect the catalytic composition of Atsushi formula (1) to have the same catalytic properties as the instantly claimed formula (A), see MPEP 2112.01.
Regarding instant application claims 4 and 5, Atsushi teaches the catalyst contains a carrier component, such as silica, alumina, titania, or zirconia, see Para. [0030], meeting the specific carrier in instant application claim 4 and in instant application claim 5.
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 Wada will substantially possess the same properties as instantly claimed, see MPEP 2112.01.
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 Atsushi with a reasonable predictability of success for the purpose of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Atsushi, Paras. [0004];[0007];[0011]-[0015].
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 both Wada and Atsushi teach a Mo12BiaFebCocCedAeBf oxide catalyst, a person of ordinary skill in the art has good reason to produce an unsaturated aldehyde by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Atsushi, Paras. [0004];[0007];[0011]-[0015] and MPEP 2141.
““[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.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the amount of each catalytic active component, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as the measurement, quantification, and manipulation of X-ray peak intensities of substantially the same material, “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.
Claims 1, 2, 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 Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi).
The claims of Kawaguchi recite the instant application claims 1, 4, 7, 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;
The method in instant application claim 7; and,
The products produced in instant application claim 9.
The claims of Kawaguchi do not recite:
The peak intensity and Q1 in instant application claim 1; and,
The limitations in instant application claims 2, 5, and 8.
Atsushi teaches the known prior art of an oxide catalyst for producing an unsaturated aldehyde compound, and if desired, a carboxylic acid compound, see Abstract; Paras. [0013];[0025];[0052]-[0053].
Since the instantly claimed limitation of “or less” includes a lower limit of zero or below, Atsushi further teaches the catalysts has peaks at 25.30±0.20 and 26.50±0.20 in an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source, see Fig. 1; Paras. [0013]-[0015];[0022]-[0023]. The X-ray diffraction pattern peak intensities are used for the calculation of parameters measured before use and after 500 hours of oxidative use, see Paras. [0013];[0056], where the values of the measured parameter based on the peak intensities were substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1/F1 ≈ 1 and Q1 ≈ 0, meeting within the range of Q1 in instant application claim 1.
Regarding instant application claim 2, since the instantly claimed limitation of “or less” includes a lower limit of zero or below, as stated above Atsushi teaches the values of the measured parameter based on the peak intensities where substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1-F1 ≈ 0 and D1 ≈ 0, meeting within the range of D1 in instant application claim 2.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and in instant application claim 2 pertaining to a charging amount (D1), Atsushi teaches the catalytically active composition formula (1), which is within identical ranges and compositions to the instantly claimed formula (A). Therefore, a prima facie case of either anticipation or obviousness has been established in regard to the instantly claimed catalyst functional properties and formula (A) in Atsushi, see MPEP 2112.01. Given a chemical composition and it’s properties are inseparable, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would expect the catalytic composition of Atsushi formula (1) to have the same catalytic properties as the instantly claimed formula (A), see MPEP 2112.01.
Regarding instant application claim 5, Atsushi teaches the catalyst contains a carrier component, such as silica, alumina, titania, or zirconia, see Para. [0030], meeting the specific carrier in instant application claim 5.
Regarding instant application claim 8, Atsushi teaches producing acrolein and methacrylic acid by gas-phase catalytic oxidation reaction of propylene using the oxide catalyst of formula (1), see Paras. [0013];[0049]-[0052], meeting the specific aldehyde in instant application claim 8.
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 as instantly claimed, see MPEP 2112.01.
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, to produce acrolein, and to the measure, quantify, and manipulate X-ray peak intensities of substantially the same material, as taught by Atsushi with a reasonable predictability of success for the purpose of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Atsushi, Paras. [0004];[0007];[0011]-[0015].
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 both Kawaguchi and Atsushi teach a Mo12BiaFebCocCedAeBf oxide catalyst, a person of ordinary skill in the art has good reason to produce an unsaturated aldehyde by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Atsushi, Paras. [0004];[0007];[0011]-[0015] and MPEP 2141.
““[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.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the amount of each catalytic active component, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as the measurement, quantification, and manipulation of X-ray peak intensities of substantially the same material, “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.
Claims 1, 2, 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 Atsushi et al. (JP2018-140326, published 13 September 2018, see machine translation, hereinafter Atsushi).
The claims of Nakazawa ‘904 recite the instant application claims 1, 4, and 7-9 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 method and compounds in instant application claim 7 and 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 and Q1 in instant application claim 1; and,
The limitations in instant application claims 2 and 5.
Atsushi teaches the known prior art of an oxide catalyst for producing an unsaturated aldehyde compound, and if desired, a carboxylic acid compound, see Abstract; Paras. [0013];[0025];[0052]-[0053].
Since the instantly claimed limitation of “or less” includes a lower limit of zero or below, Atsushi further teaches the catalysts has peaks at 25.30±0.20 and 26.50±0.20 in an X-ray diffraction pattern obtained by using CuKα rays as an X-ray source, see Fig. 1; Paras. [0013]-[0015];[0022]-[0023]. The X-ray diffraction pattern peak intensities are used for the calculation of parameters measured before use and after 500 hours of oxidative use, see Paras. [0013];[0056], where the values of the measured parameter based on the peak intensities were substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1/F1 ≈ 1 and Q1 ≈ 0, meeting within the range of Q1 in instant application claim 1.
Regarding instant application claim 2, since the instantly claimed limitation of “or less” includes a lower limit of zero or below, as stated above Atsushi teaches the values of the measured parameter based on the peak intensities where substantially the same, such as the starting parameters at 2θ were 26.37°, 10.27°, 27.47°, 31.02°, and 52.88°, and after 500 hours the parameters at 2θ were 10.26°, 26.36°, 27.49°, 31.04°, and 52.89°, see Fig. 1; Para. [0056], as calculated by the examiner, if the peak intensities from before oxidation and after 500 hours are substantially the same showing nearly zero change in the catalysts from before oxidation to 500 hours of operation, U1-F1 ≈ 0 and D1 ≈ 0, meeting within the range of D1 in instant application claim 2.
With regard to the functional limitations in instant application claim 1 pertaining to a changing rate (Q1) and in instant application claim 2 pertaining to a charging amount (D1), Atsushi teaches the catalytically active composition formula (1), which is within identical ranges and compositions to the instantly claimed formula (A). Therefore, a prima facie case of either anticipation or obviousness has been established in regard to the instantly claimed catalyst functional properties and formula (A) in Atsushi, see MPEP 2112.01. Given a chemical composition and it’s properties are inseparable, a person of ordinary skill in the art, before the effective filing date of the claimed invention, would expect the catalytic composition of Atsushi formula (1) to have the same catalytic properties as the instantly claimed formula (A), see MPEP 2112.01.
Regarding instant application claim 5, Atsushi teaches the catalyst contains a carrier component, such as silica, alumina, titania, or zirconia, see Para. [0030], meeting the specific carrier in instant application claim 5.
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 as instantly claimed, see MPEP 2112.01.
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 Atsushi with a reasonable predictability of success for the purpose of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Atsushi, Paras. [0004];[0007];[0011]-[0015].
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 both Nakazawa ‘904 and Atsushi teach a Mo12BiaFebCocCedAeBf oxide catalyst, a person of ordinary skill in the art has good reason to produce an unsaturated aldehyde by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently producing a stable catalyst with the optimal crystal structure for long term continuous catalytic oxidation to produce target compounds at high yield, see Atsushi, Paras. [0004];[0007];[0011]-[0015] and MPEP 2141.
““[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.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the amount of each catalytic active component, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as the measurement, quantification, and manipulation of X-ray peak intensities of substantially the same material, “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.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699