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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-12 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In this case, claim 4 recites “a minimum amount of water”, but such term “a minimum amount of water” in claim 4 is a relative term which renders the claim indefinite. The term “a minimum amount of water” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, such limitation renders claim indefiniteness, all claim 4’s depending claims are rejected for similar reasons.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 4-10 and 12, 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Liu et al. (“Ind. Eng. Chem. Res. 2014, 53, 5792−5800”) in view of Boualleg et al. (WO2019/137836) (for applicant’s convenience, English equivalent US2020/0338531 has been used for citations).
Liu teaches a melt infiltration method of preparing alumina supported nickel catalyst in the presence of surfactant, such catalyst only has an active phase of nickel whose loading amount reaching 50% by weight (page 5797 right col 2nd para., Fig, 7-8), apparently active phase not comprising a metal from group VIB (abstract, page 5793 left col. 2nd last para.-right col. first para., page 593-page 594 “2. EXPERIMENT SETUP” section), wherein such method comprising melting nickel nitrate hexahydrate powders in a closed vessel, and placement of the vessel in an oven preheated at 65 °C, adding dry alumina supports in pure nickel nitrate liquid for melt infiltration, drying the mixture under temperature 65 °C, then calcining the dried mixture under 500 °C (page 593-page 594 “2. EXPERIMENT SETUP” section, page 5796-5798 “3.2 Comparison of the Impregnation and Drying Method and the Melt Infiltration Method” section). Liu also teaches such alumina supported nickel catalyst can be widely used in hydrogenations, hydrodesulfurization, and steam reforming of hydrocarbons (page 5793 right col. 2nd para.).
As for the claimed mixing alumina support with at least one nickel metal salt at a temperature being less than the melting temperature of the melting point of said nickel metal salt, it is noted that Liu already teaches mixing melted metal salt with the alumina support, as for the difference of adding both alumina support and solid nickel metal salt first under temperature bellowing the solid nickel metal salt melting temperature (i.e. ambient temperature), it would have been obvious for one of ordinary skill in the art to mix alumina support and nickel metal salt first under ambient conditions ( i.e. at a temperature less than the nickel nitrate hexahydrate powders) to form a solid mixture, then melting the solid mixture under temperature of 65 °C as shown by Liu because such changes in sequence of adding ingredients or prior art process steps is prima facie obvious in the absence of new or unexpected results (see MPEP §2144.04 IV). As for stirring the support and melted nickel salt, it would have been obvious for one of ordinary skill in the art to adopt such well-known/conventional stirring for help obtaining a mixture between different components, i.e. mixing melted nickel salt liquid with alumina support.
Regarding claim 4, Liu does not expressly teach the nickel particle size being less than 18nm, bring alumina support into contact with at least one organic additive comprising oxygen and/or nitrogen, the molar ratio of the organic additive to the nickel being greater than 0.05 mol/mol wherein the organic additive being brought into contact with the at least one organic additive in the form of powder dissolved in a minimum amount of water, or the ratio by weight of said metal salt to the alumina support being between 0.1 and 2.3.
Boualleg et al. teaches a process of producing a catalyst comprising an oxide matrix and an active phase comprising nickel, the said active phase not comprising a metal from Group VIb, the content of nickel being between 1% and 65% by weight of the said element, with respect to the total weight of the catalyst, the said active phase being provided in the form of nickel particles having a diameter of less than or equal to 18 nm (para. [0019]), wherein such process comprising bring (i.e. cokneading) the oxide matrix support, e.g. alumina (para. [0048]) into contact with at least one organic compound (para. [0021], [0025]-[0032], [0119]), said organic compound is between 0.01 to 5.0 mol/mol with respect to the elemental nickel, and said organic compound can be aliphatic organic compound comprises between 1 to 9 carbon atoms, such as formic acid, acetic acid, propionic acid etc. (para. [0129]- [0131]). Boualleg et al. also teaches the alumina support and nickel weight ratio being within the claimed range (see example 1, para. [0299]) and example 6). Boualleg et al. further teaches the organic compound can be at least partially dissolved in water or at lease one organic solvent (para. [0124]). Since Boualleg et al. teaches partially dissolving organic compound (i.e. additive) in water, which is same or substantially the same as that of instant application water content to at least partially dissolving the organic additive (see instant publication US2023/0129143 para. [0089]), therefore, Boualleg et al. disclosed water amount being a minimum amount as that of instantly claimed. As for using organic compound in the form of powder, it would have been obvious for one of ordinary skill in the art to “obvious to try” use such organic compound in solid form because choosing using a material from a finite number of identified, predictable solution of solid, liquid and gaseous form would have a reasonable expectation of success (see MPEP 2143 KSR).
It would have been obvious for one of ordinary skill in the art to adopt such co-kneading or bring the alumina support in the presence of organic additive, wherein the molar ratio of the organic additive to the nickel being 0.01 to 5.0 mol/mol, the alumina support ratio to nickel being the within the claimed range, contacting alumina support with well-known organic additive comprising oxygen and/or nitrogen partially dissolved in minimum amount of water and such catalyst having nickel particles with size less than 18 nm (i.e. 4.2 nm) as shown by Boualleg et al. to modify the metal melting infiltration process of Liu because by doing so can help provide a nickel catalyst supported onto alumina having improved catalyst performance, high content of element nickel and the nickel particles of very small size as suggested by Boualleg et al. (see table 1, para. [0313]). Furthermore, adopting such well-known technique of contacting alumina support with well-known organic additive comprising oxygen and/or nitrogen partially dissolved in minimum amount of water as shown by Boualleg et al to modify a known melt infiltration process of obtaining alumina supported nickel hydrogenation catalyst for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 5, Liu already teaches such limitation, noted nickel nitrate hexahydrate boiling point is within the claimed temperature range.
Regarding claim 6 and 8-10,12,14, such limitations are taught by Boualleg et al. as discussed above.
Regarding claim 7, as for (a) and (b) being carried out simultaneously, Liu et al already teaches contacting alumina support with nickel nitrate salt for melting infiltration while Boualleg et al. teaches alumina support and organic additive and nickel precursor can be cokneading together. It would have been obvious for one of ordinary skill in the art to bring alumina support, nickel metal salt and organic additive into contact simultaneously for help obtaining a desired alumina supported nickel catalyst having high elemental nickel, high nickel content and small nickel particles size because changes in sequence of adding ingredients or prior art process steps is prima facie obvious in the absence of new or unexpected results (see MPEP §2144.04 IV).
Claim(s) 11 is rejected under 35 U.S.C. 103(a) as being unpatentable over Liu et al. (“Ind. Eng. Chem. Res. 2014, 53, 5792−5800”) in view of Boualleg et al. (WO2019/137836) (for applicant’s convenience, English equivalent US2020/0338531 has been used for citations) as applied above, and further in view of Krabetz (US4305843).
Regarding claim 11, Liu in view of Boualleg et al. does not expressly teach stirring being performed in a pan.
However, Boualleg et al. already teaches during cokneading, nickel metal salt, alumina support and organic additive being kneading with speed 50 rev (i.e. revolutions) per minute (para. [0125], example 6).
Krabetz teaches rotating vessels, rotating drum, rotating dish can be used during make impregnated carrier material with a solution at speed of 1 to 60 rpm (revolutions per minute) for achieving desired agitation (col. 1 lines 21-23, col. 5 lines 10-13, example 1-3). Since all these rotating vessels can hold the catalyst materials/mixture, therefore, they read onto the instantly claimed pan.
Liu already teaches melted nickel nitrate salt and alumina support being contacted and mixed for desired alumina supported nickel catalyst.
It would have been obvious for one of ordinary skill in the art to adopt a well-known rotating vessel such as rotating drum, rotating dish with such rotating speed of 1 to 60 rpm as shown by Krabetz to practice the contacting and mixing melted nickel metal salt and alumina support because applying a known technique of rotating vessels to a known infiltration method for agitation thus help obtaining supported catalyst for improvement would yield predictable results (see MPEP §2143 KSR).
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 4-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 -12 of U.S. Patent No. 12280361 (noted such patent is previously identified co-pending application 17/784,205). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’205 already teaches a same or substantially the same method of producing alumina supported nickel catalyst which has nickel particle size less than 18 nm, and active phase not containing group VIB elements, and the catalyst comprising a content of element from 1 to 20% by weight, and such process has same or substantially the same steps as those of instantly claimed.
Response to Arguments
Applicant's arguments filed on 07/07/2025 have been fully considered but they are moot in view of current rejections. In response to applicant’s arguments about Liu disclosed surfactant only being used in impregnation process but not in molten salt methods, or the surfactants not having same function or same results as organic additive of the instant application, it is noted that instant recited claims having open-end language “comprising” which does not limit usage of surfactant. Secondly, the examiner recognized Liu not teaching organic additive, therefore, secondary reference Boualleg et al. to remedy such deficiency. Since Boualleg et al. teaches same or substantially the same organic additive, therefore, same or substantially the same reducing nickel particle size as that of instant application is expected.
In response to applicant’s arguments about instant method showing improved results, specifically example 1, 4 and 5 showing catalyst A prepared using citric acid having nickel oxide in 2.8 nm as compared to catalyst D without using citric acid during preparation, the examiner would like to remind the applicant that evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (See MPEP § 716.02(d) - § 716.02(e)). In this case, even if assuming applicant’s catalyst A showing improved results as compared to catalyst D being true, however, such catalyst A only prepared using a specific organic additive of citric acid, with specific nickel metal salt to alumina weight ratio, certain molar ratio between citric acid to alumina support, specific heating temperature(s) in step c) and/or d), specific nickel metal content etc., but instant claims directs to a scope which is much broader than that of catalyst A disclosed data, such as any organic additive containing oxygen and nitrogen, and such organic additive having any molar ratio to alumina support with range greater than 0.05 mol/mol, with any nickel content amount range from 20 to 60 % by weight, with any heating temperature from 250 to 1000 C, with any catalyst having nickel in nickel oxide form with particle size being less than 18 nm. Therefore, such arguments are not found convincing.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUN LI/ Primary Examiner, Art Unit 1732