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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 19 December 2025 is acknowledged. Applicant’s traversal is on the ground(s) that Guo uses a differing support, the active phase of the catalyst is different, the differing inventive Groups I-III are “a combination of claim categories expressly permitted by 37 CFR 1.475(b)(3)”, and Groups I-III are amongst the same claim categories in which “the International examining division found no lack of unity”. The arguments are not found persuasive because:
The shared technical features amongst Groups I-III are a nano-catalyst suitable for processes of vegetable oil hydrogenation. The differing support and catalyst active phase are not shared technical features and are therefore not required under PCT Rule 13.2;
The Group I claims are drawn to a nano-catalyst, the Group II claims are drawn to multiple catalytic processes, and the Group III claims are drawn to a method for producing a nano-catalyst. As stated in 37 CFR 1.475(c), “[i]f an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present”. In this case, the Group II claims are drawn to multiple catalytic processes; and,
The claims presented to the International examining division contain claims 1-14; while, the instantly presented claims contain additional claims 15-20. The claims presented to the International examining division differ from the instantly presented claims. Therefore, any argument that the International examining division did no find lack of unity over the same claims is moot.
As a result, the requirement is still deemed proper and is therefore made FINAL.
Claims 8-14 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim. Claims 1-7, 15, and 17-20 are herein examined on the merits.
Priority
This application is a 371 of PCT/IB2020/061966 dated 15 December 2020 which claims the benefit of Italy 102019000024111 dated 16 December 2019 as the effective filing date as reflected in the filing receipt mailed on 18 November 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 states “said steric hindrances causes a surface functionalization”, which appears to include a typographical mistake.
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 1-7, 15, and 17-20 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.
Claim 1 states “the outer surface of which is covered with surfactant chains”. It is unclear as to whether the outer surface of the active phase, the support and/or the nano catalyst in covered with the surfactant chains. The limitation is interpreted as covering the nano catalyst.
Claim 1 recites the limitation “enrich oil”. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-7, 15, and 17-20 depend from base claim 1 and are included in this rejection as they do not correct the informalities identified in base claim 1.
Claim 3 recites the limitation “the total hydrogenation”. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation “ratio equal to 2.5%”. The unit for the ratio is missing. The unit in interpreted as % by weight.
Claim 4 recites “wherein the addition of palladium to nickel allows increasing the catalyst activity due to the greater palladium activity”, which lacks clarity and/or includes typographical mistakes. The limitation is interpreted as determined from the instant Specification Pg. 5, Lns. 2-13 as “wherein the addition of palladium to nickel increases the catalyst activity due to the greater palladium activity”.
Claim 4 recites the limitations “the heterogenization”, “a further heterojunction”, and “the transformation reaction”. There is insufficient antecedent basis for these limitations in the claim.
Claims 5 and 17-19 recite “connecting them electrically” and “the reaction products” which lack clarity as to the connecting and which reaction products.
Claims 5 and 17-19 recite “the reaction products” and “the reagents”. There is insufficient antecedent basis for these limitations in the claims.
Regarding claims 5 and 17-19, the phrase “namely” renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention, see MPEP § 2173.05(d).
Claims 5 and 17-19 recite “by utilizing the absorbent properties of said graphene which contrast the diffusion phenomena and allow always having available molecules to be converted” which lacks clarity. The limitation is best interpreted as in the instant Specification Pg. 14, Lns. 6-10.
Claims 5 and 17-19 do not contain a transitional conjunction, such as “and” or “or”. The instant Specification Pg. 13, Ln. 23-Pg. 14, Ln. 10 does not provide guidance as to the conjunction. Under MPEP 2111, the broadest reasonable interpretation of claims 5 and 17-19 is for the claims to contain the transitional conjunction of “or”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites “wherein the thickness of said graphene layers is between 1 nanometer and 1 micron”; while, claim 1 recites “graphene layers with a thickness less than 1 micron”. The claim 2 range of 1 micron is greater than less than 1 micron; as a result, claim 2 fails to further limit and include all the limitations of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-7, 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sen et al. (“Trimetallic PdRuNi nanocomposites decorated on graphene oxide: A superior catalyst for the hydrogen evolution reaction”, available online 10 August 2018, International Journal of Hydrogen Energy, Vol. 43, Pgs. 17984-17992, hereinafter Sen) in view of Murzin et al. (US20060161032, published 20 July 2006, hereinafter Murzin) and Ahn et al. (US20140034899, published 06 February 2014, hereinafter Ahn).
Sen teaches the known prior art of instant application claim 1 limitations of a nano-catalyst comprising an active phase of PdRuNi@GO nano catalyst made by dispersing palladium (II) chloride, nickel (II) chloride, ruthenium (III) chloride, and ethylene glycol (EG) on graphene oxide for the dehydrogenation of dimethylamine-borane, see Abstract; Pg. 17985, Experimental; Pg. 17986, Table 1, meeting:
The specific nano catalyst and graphene support in instant application claim 1.
In regard to the instant application claim 1 preamble limitations of “a nano-catalyst suitable for processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers”, “[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 of “suitable for processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers” is regarded as an intended use of the claimed nano-catalyst; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight, meeting the limitations in instant application claim 1.
In regard to the instant application claim 1 limitations of “a nano-catalyst suitable for processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers” and “which selectively hydrogenate triglycerides and enrich oil in monounsatured cis-isomers, due to steric hindrances”, 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)”. Sen teaches the product nano-catalyst; therefore, the processes of vegetable oil hydrogenation for producing bio-lubricants or biodegradable plastics for producing copolymers and selectively hydrogenate triglycerides and enrich oil in monounsatured cis-isomers due to steric hindrances are not given patentable weight. In addition, “due to steric hindrances” appears to be the intended use of the surfactant. As stated above, the intended use of the claimed nano-catalyst is not considered a claim limitation and is not given patentable weight, meeting the limitations in instant application claim 1.
In regard to the instant application claim 3 limitations of “wherein said steric hindrances causes a surface functionalization which allows specific double bonds to access the active surface and prevents the total hydrogenation”, 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)”. Sen teaches the product nano-catalyst; therefore, the processes and/or causes are not given patentable weight. In addition, “steric hindrances causes” appears to be the intended use of the surfactant. As stated above, the intended use of the claimed nano-catalyst is not considered a claim limitation and is not given patentable weight, meeting the limitations in instant application claim 3.
In regard to the instant application claim 4 limitations of “wherein the addition of palladium to nickel allows increasing the catalyst activity due to the greater palladium activity and to the heterogenization between the two metals, and wherein the presence of ruthenium results in a further heterojunction between the metals, which is capable of shifting the transformation reaction towards the production of isomers with cis-configuration”, “the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations” has no significance to claim construction”, see MPEP 2111.02 II. The function of the palladium and the ruthenium is regarded as an intended use of the claimed nano-catalyst; therefore, the above limitations are not given patentable weight. In addition, the above limitations appear to provide process limitations to the product nano catalyst. As stated above, Sen teaches the product nano-catalyst; therefore, the processes involving the nano catalyst are not given patentable weight, meeting the limitations in instant application claim 4.
In regard to the instant application claims 5 and 17-19 limitations of “wherein the presence of graphene: stabilizes the catalyst avoiding the aggregation of the nano-particles and connecting them electrically; promotes the separation of the nano-catalyst from the reaction products; pre-concentrates the reagents, namely hydrogen and triglycerides, by utilizing the absorbent properties of said graphene which contrast the diffusion phenomena and allow always having available molecules to be converted, “the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations” has no significance to claim construction”, see MPEP 2111.02 II. The function of the graphene is regarded as an intended use of the claimed nano-catalyst; therefore, the above limitations are not given patentable weight. In addition, the above limitations appear to provide process limitations to the product nano catalyst. As stated above, Sen teaches the product nano-catalyst; therefore, the processes involving the nano catalyst are not given patentable weight, meeting the limitations in instant application claim 5, in instant application claim 17, in instant application claim 18, and in instant application claim 19.
In regard to the instant application claims 7 and 20 limitations of “wherein the nano-catalyst is regenerable by washing in a solvent by centrifugation and usable in multiple processing cycles without showing activity or selectivity loss”, “the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations” has no significance to claim construction”, see MPEP 2111.02 II. The function of the usability is regarded as an intended use of the claimed nano-catalyst; therefore, the above limitation is not given patentable weight. In addition, the above limitations appear to provide process limitations of regeneration to the product nano catalyst. As stated above, Sen teaches the product nano-catalyst; therefore, the processes involving the nano catalyst are not given patentable weight, meeting the limitations in instant application claim 7 and in instant application claim 20.
Sen does not teach:
The instant application claim 1 limitations of graphene layers with a thickness less than 1 micron, the outer surface of which is covered with surfactant chains, where the active phase has a Ni/(Pd+Ru) ratio between 1% by weight and 5% by weight;
The active phase ratio in instant application claim 4; and,
The limitations of instant application claims 2, 6, and 15.
Murzin relates to the known prior art of the catalytic hydrogenation of vegetable oils, see Paras. [0002]-[0006].
Murzin teaches the instant application claims 1 and 4 limitations of the catalyst is a heterogenous mixture of Pd, Ni, and Ru on a carbonaceous support, where the loading of the active metals Pd and Ru varies in the range of 0.5-20 wt % and the loading of Ni varies in the range of 2-55 wt %, see Para. [0044], as calculated by the examiner Ni/(Pd+Ru) of 2/(1+1) to 5/(0.5 to 0.5) = 1 to 5 wt%, meeting:
Within the active metal weight percent ratio range in instant application claim 1 and in instant application claim 4.
Ahn relates to the known prior art of graphene supported nano catalyst of ruthenium, palladium, and nickel, see Abstract; Paras. [0051]-[0055];[0066]-[0067];[0116]-[0118].
Ahn teaches the instant application claims 1, 2, and 15 limitations of graphene layers with a thickness of about 2 to 200 Angstroms aka 0.2 to 20 nm, see Para. [0053], meeting:
Within the thickness range in instant application claim 1, in instant application claim 2, and in instant application claim 15.
Ahn teaches the instant application claims 1 and 6 limitations of the graphene nano catalyst is coated with a liquid-phase carbon supply source, such as an amphiphilic polymer including lauric acid, stearic acid, oleic acid, linolenic acid, or a combination thereof, see Paras. [0078]-[0086], meeting:
The surfactant covering in instant application claim 1; and,
The specific surfactant in instant application claim 6.
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 Sen to adjust the concentration of the active metals, see MPEP 2144.05 and Murzin, to adjust the thickness of the graphene, see MPEP 2144.04 IV. and Ahn, and to use a dispersing surfactant, as taught by Ahn with a reasonable predictability of success for the purpose of efficiently manufacturing hydrocarbons from renewable resources, such as vegetable oil, by catalytic hydrogenation with a carbon supported nano catalyst that exhibits high conversion, see Murzin, Paras. [0002]-[0004];[0029];[0044];[0054], Table 1, the optimal charge transfer, and geometrical self-assembly with the graphene carbon support, see Ahn, Paras. [0047];[0058];[0079]-[0080];[0086].
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 Sen, Murzin, and Ahn all teach nano catalyst of active metals supported on carbon/graphene, a person of ordinary skill in the art has good reason to obtain an active metal supported graphene catalyst by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently manufacturing hydrocarbons from renewable resources, such as vegetable oil, by catalytic hydrogenation with a carbon supported nano catalyst that exhibits high conversion, see Murzin, Paras. [0002]-[0004];[0029];[0044];[0054], Table 1, the optimal charge transfer, and geometrical self-assembly with the graphene carbon support, see Ahn, Paras. [0047];[0058];[0079]-[0080];[0086], 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.
In addition, “[t]he normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the concentration of the catalyst active metals, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as a dispersing surfactant, 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 thickness of the graphene, “or degree, 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.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699