DETAILED ACTION
Claims 1 and 5-10 were rejected in Office Action mailed on 12/01/2025.
Applicant filed a response, amended claims 1 and 7-8, and added claim 11 on 01/26/2026.
Claims 1-11 are pending, and claims 2-4 are withdrawn.
Claims 1 and 5-11 are rejected.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Note
Upon further consideration of amend claims, specifically, “wherein the molding catalyst consists one or more catalytic active component” of claim 7 filed and entered 11/04/2025, the examiner noted that the specification does not provide support for “one or more catalytic active component”. Specifically, the specification (i.e., [0023]) only provides support for “the molding catalyst according to the present invention may contain only a catalytic active component or may contain a catalytic active component and a carrier supporting the catalytic active component”, but the specification does not provide support for “one or more catalytic active component” (emphasis added).
Therefore, a new set of 35 U.S.C. 112(a) rejection is necessary is provided as set forth below. This is a second non-final Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 5-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, line 15, is amended to recite “substantially solid cylindrical shape” (emphasis added). However, the specification only provides support for a cylindrical shape (specification, [0012]; [0015]; [0022]) and does not provide support for “substantially solid cylindrical shape”.
Additionally, claim 1, lines 15-16, recites “at least one catalytic active component”. While there is support for “the molding catalyst according to the present invention may contain only a catalytic active component or may contain a catalytic active component and a carrier supporting the catalytic active component” (emphasis added) (Specification, [0023]). Therefore, the specification does not provide support for “at least one catalytic active component” (emphasis added).
Regarding dependent claims 5-9 and 11, these claims do not remedy the deficiencies of parent claim 1 noted above and are rejected for the same rationale.
Claim 7, lines 2-3, recite a phrase “uniformly distributed throughout the molding catalyst”. However, the specification does not provide support regarding specific distribution of the catalytic active component on the molding catalyst.
Claim 10, line 13, recites a phrase “substantially solid cylindrical shape” and is rejected for the same reason for claim 1 as set forth above.
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 1 and 5-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, line 15, recites a phrase “substantially solid cylindrical shape” (emphasis added). However, it is unclear what degree of solid is considered “substantially solid cylindrical shape”. The examiner interprets that the phrase refers to solid cylindrical shape. Interpretation is speculative. Clarification is requested.
Regarding dependent claims 5-9 and 11, these claims do not remedy the deficiencies of parent claim 1 noted above and are rejected for the same rationale.
Claim 10, line 13, recites a phrase “substantially solid cylindrical shape” and is rejected for the same reason for claim 1 as set forth above.
Response to Arguments
In response to applicant’s remark, specifically,
“It is clear that the molding catalyst takes the cylindrical shape by itself. There is no description or indication in the specification that the molding catalyst includes a separate "support body" in addition to the catalyst material, contrary to the Office's assertion.”
Remarks, page 6,
Applicant’s argument is persuasive. Therefore, the previous 35 U.S.C. 112(b) rejections are withdrawn. However, the amended necessitates a new set of 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejection(s) as set forth above.
In response to the amended claim 1, which recites, “the molding catalyst has a substantially solid cylindrical shape”, it is noted that the referenced teaching from Cairns, or Carlsson in view of Teles would not meet the present claims. Therefore, the previous 35 U.S.C. 103 rejections over Cairns, or Carlsson in view of Teles are withdrawn from the record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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