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 .
Examiner’s Note
In the Office Action mailed 2/2/2026, there appears to be an inadvertent typographical error – Nishimoto (CN 201310056621 A) should have been written as “Nishimoto (CN 103285855 A)”, wherein CN 201310056621 A is an application number of CN 103285855 A. The correct publication number of Nishimoto is provided in the Office action set forth below.
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 1-3 and 8 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 recites “the catalyst is encapsulated in a package having a moisture permeability less than or equal to 1.0 g/m2 . 24 h”. However, there is only support for the package having a moisture permeability at 25°C of 1.0 g/m2 . 24 h or less (Specification, [0089]), not at all temperatures.
Regarding dependent claims 2-3 and 8, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimoto (CN 103285855 A) in view of Heinerman et al. (EP 0691198 B1) (Heinerman).
The Examiner has provided a machine translation of CN 103285855 A. The citation of the prior art in this rejection refer to the machine translation.
Regarding claim 1, Nishimoto teaches a ruthenium oxide supported catalyst, wherein the catalyst is for oxidizing hydrogen chloride with oxygen to produce chlorine (Nishimoto, Abstract; [0002]) (i.e., a catalyst for halogen production for oxidizing a hydrogen halide with oxygen to produce a halogen). Nishimoto teaches the carrier is impregnated with water and then dried to obtain a dry substance (Nishimoto, [0061]-[0062]), i.e., 0% by volume of water which falls within the claimed range of 4% or less by volume of water with respect to a pore volume of the catalyst. Further, Nishimoto teaches the catalyst is sealed in a container (Nishimoto, [0064]), which corresponds to being encapsulated in a package.
However, Nishimoto does not explicitly teach the package having a moisture permeability less than or equal to 1.0 g/m2 . 24h.
With respect to the difference, Heinerman teaches packaging catalysts that are sensitive to water and/or oxygen (Heinerman, Col. 1, lines 1-5), wherein the catalyst is stored in a container having a moisture permeability at 23°C of less than 0.01 g/m2 . 24h (Heinerman, Col. 2, lines 32-40), which falls within the claimed range.
As Heinerman expressly teaches, using containers with higher moisture permeabilities results in measurable deactivation of the catalyst during storage (Heinerman, Col. 1, lines 30-34).
Heinerman is analogous art as it is drawn to storage of catalysts in a container (Heinerman, Col. 1, lines 1-5).
In light of the motivation of storing a catalyst in a container having a moisture permeability at 23°C of less than 0.01 g/m2 . 24h as disclosed by Heinerman, it therefore would have been obvious to one of ordinary skill in the art to modify the container of Nishimoto by using one with a moisture permeability at 23°C of less than 0.01 g/m2 . 24h in order to avoid measurable deactivation of the catalyst during storage, and thereby arrive at the claimed invention.
Regarding claim 2, Nishimoto, in view of Heinerman, teaches the catalyst for halogen production according to claim 1, wherein the catalyst is formed by impregnating a titanium dioxide carrier with an aqueous solution of ruthenium chloride hydrate followed by drying and sintering under air flow at 280°C (Nishimoto, [0060]-[0064]).
Nishimoto further teaches a weight ratio of ruthenium oxide/titanium dioxide carrier is preferably 0.1/99.9 to 20.0/80.0 (Nishimoto, [0033]). In the instant disclosure, the catalyst is formed using a titanium dioxide carrier that is soaked in an aqueous solution of ruthenium chloride hydrate and then heated to 250°C followed by calcination at 250°C, resulting in a catalyst comprising 4% by weight ruthenium oxide supported on the carrier and a halogen concentration of 0.15 wt% (Specification, [0117]-[0122]).
Therefore, as Nishimoto teaches a catalyst and method of making the catalyst that is substantially identical to the claimed catalyst, it is clear that a percentage of the halogen from the ruthenium chloride hydrate would remain in an amount that would at least overlap the range of the presently claimed halogen concentration range.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, Nishimoto, in view of Heinerman, teaches the catalyst for halogen production according to claim 1, wherein the catalyst is a ruthenium oxide supported catalyst with a titanium oxide carrier (Nishimoto, Abstract; [0060]-[0064]) (i.e., a supported ruthenium oxide catalyst with ruthenium oxide supported on a carrier).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nishimoto in view of Heinerman, as applied to claim 1 above, and further in view of Tokuhiro et al. (US 2012/0117919 A1) (Tokuhiro).
Regarding claim 8, Nishimoto, in view of Heinerman, teaches the catalyst for halogen production according to claim 1, wherein the temperature in the container is kept at 10 to 20°C (Nishimoto, [0064]), which falls within the claimed range, but does not explicitly teach wherein an inert gas having a temperature of 50°C or less is encapsulated in the package.
With respect to the difference, Tokuhiro teaches storing catalytic materials in an airtight case to retain the quality of the catalytic material (Tokuhiro, [0012]; [0040]), and wherein the airtight case may be filled with inert gas (Tokuhiro, [0043]).
As Tokuhiro expressly teaches, filling the airtight container with inert gas is to adjust the relative humidity inside the container (Tokuhiro, [0043]).
Tokuhiro is analogous art as it is drawn to storage of catalytic materials in sealed containers (Tokuhiro, [0012]; [0040]).
In light of the motivation of filling the storage container with inert gas as disclosed by Tokuhiro, it therefore would have been obvious to one of ordinary skill in the art to modify the storage of the catalytic material of Nishimoto in view of Heinerman by filling the container with inert gas in order to adjust the relative humidity within the desired limits, and thereby arrive at the claimed invention.
Response to Arguments
In response to applicant’s amendments, a new set of rejection using 35 U.S.C. 112(a) over claims 1-3 and 8 is set forth above.
Additionally, in response to the amendment regarding the package having a moisture permeability less than or equal to 1.0 g/m2 . 24 h and new claim 8 and based on applicant’s remarks filed on pages 4-5 regarding the 35 U.S.C. 102 and 103 rejections over Nishimoto, it is agreed that Nishimoto, alone would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Nishimoto in view of Heinerman and Tokuhiro.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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