DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 17/913,164 application filed 31 May 2023, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending and have been fully considered.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities: said claims recite the present participle forming. The present participle forming may indicate continuous action including into the present time. However, the claim should recite something that has been previously invented, not that is presently occurring or being invented (including during the writing of this Office action). It is recommended that the claim be amended to recite “…formed on…” Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 1 recites that the assistant catalyst is a magnesium hydroxide shell; claim 9 appears to broaden the scope of the invention by reciting that the assistant catalyst may also be magnesium oxide. 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.
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 6 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.
Claim 6 recites the limitation "the number of basic sites" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites “the amount of the sugar is 10-22.5 mg/ml.” However, claim 12 from which 14 depends recites “mixing a sugar, a main catalyst and an assistant catalyst in a reactor…” It is unclear if the amount of sugar in units of mass per unit volume is a concentration of sugar dissolved in a solvent or if the per unit volume relates to the volume of the main and assistant catalysts. Consequently, the metes and bounds of the claimed invention cannot be determined. See, also, the limitation of 0.5-2 mg/mL for the assistant catalyst in instant claim 17. In this latter case, it is unclear if the mL is the volume of the composite catalyst as a whole, the main catalyst, or the sugar.
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 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.
Claim(s) 1-2, 5, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al in ACS Applied Materials & Interfaces (2015, vol 7, pp 1533-1540).
With respect to claims 1-2, 9, and 11, Zhang et al discloses “one-pot synthesized Ni nanoparticles encapsulated in Mg(OH)2 hollow spheres. The diameter of Ni cores and the thickness of Mg(OH)2 shells are about 60−80 and 15 nm, respectively, and the size of a whole composite sphere is approximately 70−100 nm” [abstract]. The Ni nanoparticles correspond to the main catalyst. The Mg(OH)2 hollow spheres correspond to the assistant catalyst. Zhang et al further discloses “[i]n a typical procedure, 0.45 g of poly(vinylpyrrolidone) (PVP, K-30) was first introduced into 45 mL of hexane/water (volume ratio was 8:1) system with agitation. Then 2.5 mmol of NiCl2·6H2O, 2 mL of NH3·H2O, and 2.5 mmol Mg powder were added into the above emulsion, respectively. After stirring for a few minutes, the mixture was transferred into a Teflon-lined stainless steel autoclave and kept at 200 °C for 20 h and then cooled to room temperature naturally. The product was centrifuged and washed with distilled water and absolute ethanol several times, until a black precipitate was collected. Finally, the obtained product was dried in vacuum at 50 °C for 6 h” [see paragraph under the heading “2.1. Synthesis of Ni@Mg(OH) Core−Shell Nanocomposites”]. The aforementioned method is a hydrothermal reaction [see, e.g., the abstract: “A surfactant-assisted hydrothermal route…”]. Note that the instant application discloses that the composite catalyst of the instant application is prepared via a hydrothermal reaction [see, e.g., paragraph 0063 of the published application: “[i]n one embodiment, the process of in-situ hydrothermal loading of magnesium hydroxide…Finally, the reactor is filled with 5 Mpa hydrogen, and then inlet and outlet valves are closed. The reactor is heated to 180° C. for hydrothermal in-situ loading and reaction”]. Since the method of formation (i.e., hydrothermal reaction conditions) of the Mg(OH)2 hollow spheres is the same or similar to the assistant catalyst of the instant application, it is expected, absent evidence to the contrary, that said Mg(OH)2 hollow spheres have a cage-like shape on the surface of the Ni nanoparticles and is in the form of sheets and/or that such would have been obvious to one of ordinary skill in the art. See also scheme 1 at the top of page 1534 and discussion in section 3.1.
With respect to claim 5, Zhang et al discloses “[u]nder hydrothermal conditions, Ni2+ ions were reduced to Ni atoms by Mg powder:
Mg + Ni2+ → Mg2+ + Ni[0]” [see, again, section 3.1].
Claim(s) 1-5, 7-9, 11-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al in Green Chemistry (2011, vol 13, pp 135-142).
With respect to claims 1-5, 7, 9, 11, and 15, Sun et al discloses “we report a detailed study of xylitol hydrogenolysis on supported Ru catalysts…We examine the effects of supports and basic promoters on the activity and selectivity of the Ru catalysts. The supports include activated carbon (C), ZrO2, TiO2, Al2O3 and Mg2AlOx with a wide range of acid-base and redox surface properties, and the bases include Ca(OH)2, Mg(OH)2 and CaCO3 resulting in different pH values in water. We compare the catalytic activity and selectivity of Ru/C and other supported noble metal catalysts, Rh/C, Pd/C and Pt/C, in xylitol hydrogenolysis, and also examine the effects of reaction parameters (e.g. pH, H2 pressure and temperature)…Upon addition of CaCO3, Mg(OH)2 and Ca(OH)2 bases, the pH values in the reaction solutions increased to 9.4, 10.7 and 12.3, respectively (measured at 298K),which kept constant during the reaction due to the known solubility equilibrium of these solid bases slightly soluble in the solutions. The activities decreased sharply by 4–10 fold in comparison with the activity in the absence of the bases…The activities and selectivities also depend largely on the H2 pressures, reaction temperatures, and pH values varied by using different solid bases, CaCO3, Mg(OH)2 and Ca(OH)2, which influence the hydrogenation and base-catalyzed steps involved in xylitol hydrogenolysis. Taken together, it is apparent that xylitol hydrogenolysis to ethylene glycol and propylene glycol proceeds by its kinetically relevant dehydrogenation of xylitol to xylose on the metal surfaces, and its subsequent base-catalyzed retro-aldol condensation to form glycolaldehyde and glyceraldehyde, the intermediates for the two glycols…Xylitol hydrogenolysis reactions were carried out in a Teflon-lined stainless steel autoclave (100 ml) at a stirring speed of 800 rpm. In a typical run, 40 g of 10 wt% xylitol…aqueous solution, 0.1 g of metal catalyst and at least 0.26 g of Ca(OH)2 [or, alternatively, Mg(OH)2—see, e.g., Table 2 and prior discussion—Examiner’s insertion] were introduced to the autoclave. Afterwards, the reactor was purged with H2…three times, and pressurized with H2 to 4.0 MPa and then heated to 473 K, which was kept constant during the reaction. The reactant and liquid products…were analyzed by gas chromatography…and a flame ionization detector. The reactant and liquid products were also analyzed by high-performance liquid chromatography” [see last paragraph on left hand side of page 136; last paragraph on right hand side of page 136; last paragraph on left hand side of page 139; and 1st paragraph under the heading “4. Conclusions” on page 142]. Note that the instant application discloses “[i]n one embodiment, a reaction is performed in the tank reactor in S2, and the assistant catalyst includes magnesium oxide or magnesium hydroxide. In the tank reactor, the magnesium oxide or magnesium hydroxide forms the magnesium hydroxide shell with the cage-like shape on the surface of the main catalyst during the reaction process, thus forming the main catalyst-assistant catalyst composite catalyst that can catalyze the reaction” [paragraph 0053 of the published application]. Additionally, note the similar conditions in the autoclave of the reference to those in the S2 reactor of the instant application [recall, such conditions are disclosed in paragraph 0063 of the published application]. Therefore, while Sun et al does not explicitly disclose “a magnesium hydroxide shell with a cage-like shape on the surface of” the supported noble metal catalysts (or magnesium hydroxide sheets coated on the same), since the hydrogenolysis conditions of the reference are similar to the in situ hydrothermal conditions of the instant application, it is expected, absent evidence to the contrary, that the catalysts during the hydrogenolysis of Sun et al possess the recited features and that such would have been obvious to one of ordinary skill in the art. The same applies to the limitations of claims 2, 4-5, and 8 and the core-shell structure of claim 13.
With respect to the preceding, it appears that applicant may have discovered a “previously unappreciated property of a prior art composition.” Applicant is reminded that “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). “Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.” In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433.
With respect to claim 12, note that Sun et al discloses that “xylitol hydrogenolysis to ethylene glycol and propylene glycol apparently involves kinetically relevant dehydrogenation of xylitol to xylose on the metal surfaces, and subsequent base-catalyzed retro-aldol condensation of xylose to form glycolaldehyde and glyceraldehyde, followed by direct glycolaldehyde hydrogenation to ethylene glycol and by sequential glyceraldehyde dehydration and hydrogenation to propylene glycol” [abstract]. Therefore, it would have been obvious to one of ordinary skill that one may skip the dehydrogenation and simply substitute xylose as a reactant in the hydrogenolysis.
With respect to claim 14, note the 10 wt% xylitol…aqueous solution discussed above. As noted above, it would have been obvious to substitute xylose for xylitol. If the requirement of claim 14 is an amount of sugar in the range of 10-22.5 mg sugar/(mL water) [i.e., an aqueous sugar solution] and the density of water in the aqueous solution is approximately 1 g mL-1, then the above requirement is equivalent to 1-2.25 wt % solution. However, it would have been obvious that if one is substituting xylose for xylitol, then a smaller concentration of xylose is adequate since it is no longer the case that some of the reactant may be converted to unwanted products (i.e., xylitol converted to non-xylose products). Additionally, applicant is reminded that the concentration of sugar is a result-effective variable; that is, a variable that achieves a recognized result. In this case, the result is an amount of desired product such as propylene glycol. Note that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
With respect to claims 16 and 18., the aforementioned stainless steel autoclave corresponds to the tank reactor. Note that claim 16 is recited in the alternative.
Allowable Subject Matter
Claims 10 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6 and 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to claim 6, none of the prior art references discloses a number of basic sites; with respect to claim 10, Zhang et al discloses “[t]he BET specific surface area…w[as] 124.2 m2 g−1…” [see page 1535]; Sun et al does not teach a surface area for the supported noble metal catalysts; with respect to claim 17, recall that Sun et al discloses “[x]ylitol hydrogenolysis reactions were carried out in a Teflon-lined stainless steel autoclave (100 ml) at a stirring speed of 800 rpm. In a typical run, 40 g of 10 wt% xylitol…aqueous solution, 0.1 g of metal catalyst and at least 0.26 g of Ca(OH)2 [or Mg(OH)2]—Examiner’s insertion] were introduced to the autoclave.” Note that the catalysts include “4 wt% Ru/C, 4wt% Pd/C, 8wt% Pt/C and 4wt% Rh/C.” In view of the preceding, it is clear that the required mass ratio is much higher than the mass ratio implied by the teaching of Sun et al. With respect to claims 19 and 20, Sun et al does not disclose any of the recited sugars nor does it appear to be obvious to substitute said sugars for the xylitol (or xylose) of Sun et al since the reference teaches “xylitol and sorbitol are not only renewable, but also structurally analogous to ethylene glycol and propylene glycol with adjacent hydroxyl groups. These features render xylitol and sorbitol to be favorable feedstocks, in term of sustainability and energy efficiency, for the synthesis of the two glycols by catalytic hydrogenolysis” [see last paragraph on page 135].
Conclusion
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
4 December 2025