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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/14/2026 has been entered.
Claim Interpretation
Instant claim 15 recited “flushing medium substantially free of hydrogen peroxide” is interpreted based on broadest and reasonable interpretation in light of its specification (see the instantly published application US2023/0072588 para. [0084]) means the flushing medium comprising less than 1% of hydrogen peroxide.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (US2016/0332154) in view of Maisin (EP0037137) (for applicant’s convenience, machine translation has been used for citations).
Ma teaches a process for regenerating catalysts that have been deactivated or poisoned (i.e., fouled) during hydrogenation of biomass, or biomass derivatives, particularly sugars or polysaccharides, and a continuous hydrogenation process that incorporated the regeneration process ( para.[0002], [0008]; [0014]-[0015]; [0018]-[0019];[0023], [0024], [0032], [0036]-[0040]; [0054]; [0056]-[0057]; [0063]; Fig. 2-3, claim 1).
Ma expressly teaches continuous hydrogenating a biomass feedstock stream, wherein such biomass can contain as much as 0.5 wt. % sulfur (i.e., biomass feed comprises sulfur-containing impurity) (para [0008]; [0053]-[0054], Fig. 2), for example a feedstock stream comprising 7 ppm of sulfur, after continuous hydrogenation the catalyst is fouled which can contain about 8800 to 8900 ppm sulfur (Table 1; para. [0072]); and regenerating such sulfur impurities fouled hydrogenation by washing the fouled hydrogenation catalyst with subcritical aqueous solution, i.e. a flushing medium comprising water (claim 2, para. [0014]-[0016], [0040]-[0044], [0058]) under regeneration temperature and regeneration pressure with a duration to reduce the sulfur impurities level in the fouled hydrogenation catalyst (table 1, para. [0035], [0041, [0044], [0058], [0072]).
Ma further teaches wherein the 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).
Ma further teaches the regeneration temperature being 130 to about 220 °C, pressure is between about 0.4 MPa to 22 MPa (i.e. 58 to 3190.8 psi) (para. [0035], [0041], examples 1-6), wherein such regeneration temperature and pressure overlapping with those of instantly claimed regeneration temperature and pressure thus renders a prima facie case of obviousness (See MPEP §2144. 05 I).
As for the claimed substantially free of hydrogen peroxide, it is noted that such limitation already been addressed in the that previous office action onto previously claim 28 recited “free of hydrogen peroxide”, Ma already teaches washing can be proceed with just subcritical water (i.e. free of hydrogen peroxide) (para. [0053]). Ma also teaches the hydrogen peroxide content can be in a range between 0.5% to 5 wherein such range overlapping with that of the instantly claimed substantially free of hydrogen peroxide. Maisin (applied secondary reference) also teaches the flushing medium comprises water and oxygen, no hydrogen peroxide is needed either.
Regarding claim 15, Ma does not expressly teach the flushing medium comprises oxygen.
Maisin teaches a process of regenerating fouled hydrogenation catalyst, wherein such fouled hydrogenation catalyst being obtained after hydrogenating sugars, comprising washing the fouled hydrogenation catalyst with water in the presence of oxygen (claim 1, 3-4, para. [0008], [0010], [0011], example 1-5).
It would have been obvious for one of ordinary skill in the art to adopt a flushing medium comprising water and oxygen as shown to treat the fouled hydrogenation catalyst by Maisin to modify the regeneration process of Ma because applying such known technique of using flushing medium of water and oxygen to a known regeneration method for improving regenerating fouled hydrogenation catalyst would yield predictable results (See MPEP §2143 KSR).
Maisin also teaches the regeneration temperature being 80 to 150 °C while pressure being 5 to 10 bar (i.e 72.5 to 145 psi) when fouled catalyst contacting with water and oxygen (para. [0010], example 1-5). It would have been obvious for one of ordinary skill in the art to adopt such temperature and pressure range as shown by Maisin to modify the regeneration process of Ma because applying such known technique of contacting flushing medium of water and oxygen under such known temperature and pressure range to a known regeneration method for improving regenerating fouled hydrogenation catalyst for would yield predictable results (See MPEP §2143 KSR).
Regarding claim 17-18, 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 at least 25% sulfur impurities in the fouled hydrogenation catalyst are reduced. Maisin also teaches the flushing medium of water and oxygen contacting with the fouled hydrogenation catalyst being 7 or 9 hours (example 1-5).
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, Ma already teaches washing can be proceed with just subcritical water (i.e. free of hydrogen peroxide) (para. [0053]). Maisin also teaches the flushing medium comprises water and oxygen, no hydrogen peroxide is needed either.
Regarding claims 30, Ma already teaches such limitation as discussed above.
Regarding claim 32, since oxygen is a gas (i.e. vapor), therefore Maisin already teaches flushing medium a liquid phase of water and a vapor phase of oxygen as discussed above.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Ma (US2016/0332154) in view of Maisin (EP0037137) (for applicant’s convenience, machine translation has been used for citations) 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).
Ma further teaches wherein the first catalyst and second catalysts can be either the same or of a different material (para. [0015]), wherein 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]; [0051]; [0053]; [0060]; [0065]; [0070]; [0077]; Examples 1-4).
Regarding claim 31, 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 Ma in view of Maisin 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 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 water 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 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 filed on 01/14/2026 have been fully considered but they are not persuasive. In response to applicant’s arguments about Ma focusing on using hydrogen peroxide as oxidative environment while Maisin being silent on any oxidative conditions such as hydrogen peroxide therefore no suggestion of replacing Ma disclosed peroxide based with Maisin disclosed water treatment, it is noted that Ma already teaches a water (subcritical water) treatment method of regenerating deactivated hydrogenation catalyst, furthermore, Ma already teaches washing can be proceed with just subcritical water (i.e. free of hydrogen peroxide) too, especially to Ru/C catalyst (para. [0053]). Pertinently, Maisin teaches a similar water treatment under oxygen atmosphere. Therefore, Ma and Masin are analogous art and supplying oxygen into a water containing flushing medium is well-known technique for regenerating fouled hydrogenated catalyst. Therefore, adopting a well-known technique of Maisin disclosed oxygen atmosphere (or flushing medium) to a well-known process using water containing flushing medium regenerating deactivated hydrogenation catalyst as shown by Ma for improvement would yield predictable results with reasonable expectation of success (See MPEP §2143 KSR). In response to applicant’s arguments about Ma not providing suggestion to improve the methodology of Ma because Masin directed to reacting a catalyst for hydrogenation of a sugars, that being distinct from a catalyst deactivated by sulfur species during hydrogenation of biomass as shown by Ma, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ma teaches a regenerating a deactivated or poisoned (e.g. sulfur deactivated or poisoned) hydrogenating catalyst which used during hydrogenation biomass, sugar and polysaccharides (para. [0002], [0008]; [0014]-[0015]; [0018]-[0019];[0023], [0024], [0032], [0036]-[0040]; [0054]; [0056]-[0057]; [0063]; Fig. 2-3, claim 1). Similarly, Maisin teaches a catalyst used in sugar hydrogenation can be regenerated with water and a flushing medium of oxygen under heating (claims 1-2, 6, para [0006], [0010]-[0015]). Since each references teach regenerating deactivated catalyst used during sugar hydrogenation, which are analogous to the claimed instant invention. Therefore, it would have been obvious for one of ordinary skill in the art to combine such analogous reference of Maisin’s teachings into Ma because adopt a flushing medium comprising water and oxygen to treat the fouled hydrogenation catalyst as shown by Maisin to modify the regeneration process of Ma only involves adopting known technique of using flushing medium of water and oxygen to a known regeneration method for improving regenerating fouled hydrogenation catalyst and adopting such well-known technique into a well-known process for improvement would yield predictable results (See MPEP §2143 KSR).
Similar reasons for sustaining double patenting rejections.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/JUN LI/ Primary Examiner, Art Unit 1732
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