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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/04/2026 has been entered.
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.
Claims 15, 17-18, 25-28, 30 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Maisin (EP0037137) (for applicant’s convenience, machine translation has been used for citations) in view of Ma (US2016/0332154).
Maisin teaches a process of reactivating a catalyst which is used for hydrogenation of sugars comprising catalytically reacting sugars (a feedstock) in the presence of hydrogenation catalyst to produce a deactivated hydrogenation catalyst ([0001]-[0006], example 1-5) , replacing the feedstock stream with a flushing stream comprising water and oxygen and maintaining contact between the deactivated hydrogenation catalyst at a regeneration temperature of 50 to 150 °C and pressure of 5 and 10 bars ( i.e. 72.5 to 145 psi) for a regeneration duration to produce a regenerated hydrogenation catalyst, wherein the hydrogenation catalyst comprising a support and an active metal (claim 1-8, para. [0008], [0011], [0015], example 1-5).
Masin does not require exposing the deactivated hydrogenation catalyst to hydrogen peroxide before contacting with flushing medium comprising oxygen and water. Masin doe s does not require he flushing medium containing any hydrogen peroxide either (i.e. 0% of hydrogen peroxide presented in the flushing medium).
Regarding claim 15, Maisin does not expressly teach the feedstock comprising sulfur impurity.
Ma teaches biomass such as sugar feedstock can contain up to 0.5 wt. % sulfur, and such sulfur lead to hydrogenation catalyst deactivation ([0008]-[0011]) and regeneration of catalyst can lead to accumulated sulfur onto deactivated hydrogenation catalyst being reduced to more than 50%(table 1, para. [0072], Fig. 4).
It would have been obvious for one of ordinary skill in the art to adopt a biomass feedstock containing sulfur impurity as shown by Ma to practice the feedstock of Maisin because using such well-known technique of using a biomass feedstock (e.g. sugar) with such well-known sulfur impurity content for hydrogenation and of regenerating a sulfur deactivated hydrogenation catalyst with reducing sulfur level to more than 50% to a well-known regeneration method for regenerating deactivated hydrogenation catalyst used for sugar for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 17-18, Maisin further teaches the regeneration time can be 8 hours (para. [0018], [0019]) while Ma further teaches the fouled hydrogenation catalyst is restored to about 75% or greater of an initial catalytic activity level (para [0054]; claim 10), wherein catalytic activity can be restored to 90-98%, or near full recovery (para. [0092]; [0071]; Examples 1-6), specifically, the sulfur level can be reduced from about 8800 to 8900 ppm sulfur to less than about 400 to 500 ppm (para. [0072], Fig. 4) and contacting time between flushing medium and the fouled catalyst is between 4 or 5 hours to about 24 to 48 hours under regeneration pressure (para. [0044], [0063], example 1-6) for the regeneration, wherein more than 50% of sulfur reduction.
Regarding claim 25-27, Maisin further teaches 30.2 g catalyst (including support and catalytic metal) being fouled and then regenerated (para. [0016]) and regenerating water flow rate being 0.5 to 10 liters/liter and gas flow rate of 300 to 6000 N(normal liters)/liter of catalyst support per hour, 1 to 100% oxygen by volume with a flow rate of 1000 to 2000 N (normal liters)/liter of catalyst support per hour (claim 4, para. [0010]-[0011], [0014], example 1-5), wherein such water flow rate and oxygen flow rate with volume percentage suggest a close enough or overlapping with that of instantly claimed, and an overlapping water to catalyst flux ratio as that of instantly claimed, thus renders a prima facie case of obviousness (See MPEP §2144. 05 I). Furthermore, one of ordinary skill in the art would have been obvious to adopt flushing medium comprising a same oxygen to catalyst flux ratio and a same water to catalyst flux ratio as those of instantly claimed via routine experimentation (See MPEP §2144. 05 II) for help obtaining desired regenerated catalyst as suggested by Maisin.
Regarding claim 28, Maisin already teaches such limitation as discussed above.
Regarding claim 30, Maisin further teaches the catalyst can be supported ruthenium catalyst (para [0001]) and Ma further teaches the hydrogenation catalyst can be a supported metal catalyst, and the second catalyst can be Ru, Pt, or Pd supported on a substrate, such as carbon or titania, (i.e., catalyst comprises a support and an active metal), wherein a ruthenium on carbon (Ru/C) catalyst can be used ( para [0045]; [0050]-[0051]; [0053]; [0060]; [0065]; [0070]; [0077]; Examples 1-4).
It would have been obvious for one of ordinary skill in the art to adopt such well-known Ru/C catalyst as shown by Ma to practice the hydrogenation catalyst of Maisin because adopting such well-known Ru/C hydrogenation catalyst to modify a well-known process of regeneration process of hydrogenation catalyst for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claims 32, Maisin already teaches such limitation as discussed above.
Regarding claims 33, Ma and Maisin already teaches such limitation as discussed above.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Maisin (EP0037137) (for applicant’s convenience, machine translation has been used for citations) in view of Ma (US2016/0332154) as applied above, and further in view of Cao et al., Biomass-derived N-doped porous two-dimensional carbon nanosheets supported ruthenium as effective catalysts for the selective hydrogenation of quinolines under mild conditions (hereinafter Cao).
Regarding claim 31, Maisin in view of Ma does not explicitly disclose wherein the hydrogenation catalyst has one or more of the following properties (i) a total surface area of at least 500 m2/g, (ii) a micropore surface area of at least 400 m2/g, and (iii) a mesopore surface area of at least 30 m2/g, as presently claimed.
Cao teaches Ru/NPCNs, which are catalysts comprising Ru nanoparticles supported on N-doped porous two-dimensional carbon nanosheets (NPCNs), wherein the Ru/NPCNs exhibit excellent catalytic performance for quinoline ( a biomass) hydrogenation (abstract; Scheme 1; page 2, left col., 2nd-3rd paragraphs; page 2, right col., last paragraph; Table 1; conclusions); and wherein the pristine NPCNs have a BET surface area (SBET) of 1094.1 m2/g, wherein after the deposition of Ru nanoparticles, the SBET was almost unchanged, implying that the Ru nanoparticles did not affect the specific area and block the pore of pristine NPCNs (i.e., Ru/NPCN catalyst with a total surface area of about 1094.1 m2/g) (page 2, left col., 3rd paragraph; Fig. 1(a)).
As Cao expressly teaches, the Ru/NPCNs exhibited a far better catalytic performance than the commercially available materials supported Ru catalysts that were tested for the hydrogenation of quinoline, wherein this outstanding performance for Ru/NPCNs catalyst could be ascribed to the special porous two-dimensional (2D) carbon nanosheets structure with high BET surface area and pore volume, which is beneficial to the stable and uniform dispersion of Ru and the mass transfer of reactants (page 2, right col., last paragraph; page 3, left col., 1st paragraph; abstract; conclusions; page 2, left col., 2nd paragraph; Table 1).
Cao is analogous art, as Cao is drawn to using catalysts comprising Ru nanoparticles supported on N-doped porous two-dimensional carbon nanosheets (i.e., Ru/NPCNs; ruthenium supported on carbon catalyst), wherein the Ru/NPCNs exhibit excellent catalytic performance for quinoline hydrogenation (i.e., ruthenium supported on carbon hydrogenation catalyst) (abstract; Scheme 1; page 2, left col., 2nd-3rd paragraphs; page 2, right col., last paragraph; Table 1; conclusions).
It would have been obvious to one of ordinary skill in the art to use the Ru/NPCNs catalyst as shown by Cao to practice the hydrogenation catalysts of Maisin in view of Ma because by doing so can help provide a hydrogenation catalyst with high surface area and exhibiting outstanding catalytic performance as suggested by Cao(abstract; Scheme 1; page 2, left col., 2nd-3rd paragraphs; page 2, right col., last paragraph; Table 1; conclusions).
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.
Claim 15, 17-18, 25-28, 30 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17-18 and 24-28 of copending Application No. 18/416, 818 (reference application) in view of Maisin (EP0037137). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application’818 teaches a same or substantially the same method, except the claimed flushing medium oxygen to catalyst flux ratio, flushing medium substantially free of hydrogen peroxide, water to catalyst flux ratio, hydrogenation catalyst, all these limitations are taught by Maisin as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well-known flushing medium free of hydrogen peroxide, oxygen to catalyst flux ratio, water to catalyst flux ratio, hydrogenation catalyst as shown by Maisin to modify the regeneration process of copending application of ‘818 because by doing so can help provide a desired regenerated hydrogenation catalyst as suggested by Maisin.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 31 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17-18 and 24-28 of copending Application No. 18/416, 818 (reference application) in view of Maisin (EP0037137) as applied above, and further in view of Cao, Biomass-derived N-doped porous two-dimensional carbon nanosheets supported ruthenium as effective catalysts for the selective hydrogenation of quinolines under mild conditions. Co-pending application’818 in view of Maisin already teaches a same or substantially the same method, except the hydrogenation catalyst surface area as that of instantly claimed. Cao teaches hydrogenation catalyst surface area as discussed above. It would have been obvious to one of ordinary skill in the art to use the Ru/NPCNs catalyst as shown by Cao to practice the hydrogenation catalysts of copending application’818 because by doing so can help provide a hydrogenation catalyst with high surface area and exhibiting outstanding catalytic performance as suggested by Cao (abstract; Scheme 1; page 2, left col., 2nd-3rd paragraphs; page 2, right col., last paragraph; Table 1; conclusions).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claim(s) on 08/12/2026 have been fully considered but are moot in view of current rejections.
In response to applicant’s arguments about Ma focusing on using hydrogen peroxide as oxidative environment or using hydrogen peroxide to remove sulfur and/or sulfides, Ma expressly teaches washing can be proceed with just subcritical water (i.e. free of hydrogen peroxide) too, especially to Ru/C catalyst (para. [0053]). Maisin does not require any hydrogen peroxide presented in the flushing medium, rather teaches using oxygen and water as flushing medium, which is same or substantially the same as that of instantly claimed.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
