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 .
Priority
This application is a 371 of PCT/KR2021/014200 which claims the benefit of KR 10-2020-0163037 with an effective filing date of 27 November 2020 as reflected in the filing receipt mailed on 14 February 2023.
Status of the Claims
Claims 1 and 4-18 are pending.
Claim 18 is new.
Claims 1, 6, 10, 11, 16, and 17 are amended.
Claim 3 is currently cancelled.
Claim 2 was previously cancelled.
Response to Amendments
Applicant’s amendments filed 06 March 2026 are acknowledged.
Claim Rejections - 35 USC § 112
Applicant’s amendments to claims 1, 10, 11, 16, and 17 and cancellation of claim 3 are sufficient to overcome the rejections of claims 1 and 3-17 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1, 10, 11, 16, and 17 have been amended to clarify the antecedent basis issues regarding the hydroxyapatite cake. The rejections are withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendments to claim 1 adding calcium salt solutions concentration ranges not taught by Hong 2011 and cancellation of claim 3 are sufficient to overcome the rejection of claims 1 and 3-17 under 35 U.S.C. 103 as being unpatentable over Hong et al., (“Efficient and selective conversion of methyl lactate to acrylic acid using Ca3(PO4)2–Ca2(P2O7) composite catalysts”, 21 February 2011, Applied Catalysis A: General, Vol. 396, Pgs. 194-200, hereinafter Hong 2011), as evidenced by Infobase, (“Room temperature”, Merriam-Webster’s Medical Dictionary, 2016, Pgs. 1-2) in view of Hiroko et al. (WO2015016217, see machine translation, hereinafter Hiroko).
Due to the amendments to claim 1 and cancellation of claim 3, the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Affidavit/Declaration
The declaration of Jaeyong Kim filed on 06 March 2026 is acknowledged.
Response to Arguments
Applicant’s arguments filed 06 March 2026 have been fully considered but they moot or not persuasive.
Applicant’s argue that Hong 2011, Infobase, and Hiroko do not disclose the limitations as recited in amended claim 1 and previously presented claims 13 and 14. These arguments have been considered but are moot or not persuasive for the reasons set forth in the new grounds of rejection below.
Applicant’s arguments with respect to Hong 2011 not teaching the instantly claimed order of addition of the phosphorus solutions to the calcium solutions and the concentration of the calcium salt in the calcium salt solutions have been considered but are moot because the new ground of rejection does not rely on Hong 2011 applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s arguments throughout the remarks filed on 06 March 2026 that the instantly claimed order of addition of the phosphorus solutions to the calcium solutions and the concentration of the calcium salt in the calcium salt solutions leads to unexpected results.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious, see Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In addition, “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP 716.02(d).
Applicant’s have supplied a declaration by Jaeyong Kim filed on 06 March 2026 comparing the instant specification examples to Hong 2011 and have amended instant claim 1 to contain calcium salt solution concentration ranges not taught by Hong 2011.
Applicant’s state on page 8 of the remarks filed on 06 March 2026 that “[t]he instant Applicant determined that the change in the order of addition results in a product that exhibits different properties than achieved when the conventional process is used.”
Sakuma in the known prior art of the synthesis of hydroxyapatite catalysts “by adding a phosphate solution while stirring a calcium salt solution, and maintaining the reaction temperature constant at a desired temperature”, see Abstract; Paras. [0012];[0014];[0016], teaches “[h]ydroxyapatite was synthesized by controlling the reaction temperature to 30°C while adding a sodium phosphate solution to a calcium acetate solution with stirring”, see Para. [0023], where the temperature may be between the “range of 0°C to 45°C during synthesis”, see Para. [0012], and “commonly used calcium salts such as calcium hydroxide, calcium acetate, calcium carbonate, calcium chloride, calcium citrate, and calcium lactate can be used as raw materials, and commonly used phosphates such as phosphoric acid, ammonium phosphate, sodium phosphate, potassium phosphate, pyrophosphate, and sodium hexametaphosphate can be used as raw materials”, see Para. [0014].
Ogawara in the known prior art field of the synthesis of hydroxyapatite particles by “dropping the phosphoric acid aqueous solution into the calcium hydroxide dispersion liquid”, see Paras. [0059]-[0069], teaches the “content of calcium hydroxide in the calcium hydroxide dispersion liquid is preferably in the range of about 5 to 15 wt % and more preferably in the range of about to 12 Wt %”, where “calcium hydroxide of 5000 g was dispersed in pure water of 40 L to obtain a calcium hydroxide dispersion liquid”, see Paras. [0065];[0109], as calculated by the examiner, [5000 g Ca(OH)2
÷
74.09 g/mol Ca(OH)2]/40 L = 1.69 M which equates to a solution of [1.69 mol/L x 74.09 g/mol] = 125.2 g/L, i.e., 12.5 wt%, at 1.69 M and (12.5/2) is 6.25 wt% at (1.69/2) which is 0.845 M; therefore, about 5 to about 11 wt% meets within the calcium component molar concentration range.
Sakuma and Ogawara both teach adding/dropping the phosphate solutions of optimal concentration into the calcium salt solutions of optimal concentration to synthesis calcium phosphorous hydroxyapatite catalyst particles by wet synthesis methods, which would naturally lead one of ordinary skill in the art, before the effective filing date of the claimed invention, to produce the claimed catalyst with the advantage of higher catalytic product yield and/or purity.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applicant’s arguments on pages 9-12 of the remarks filed on 06 March 2026 that there is no teaching, suggestion, or motivation to combine the references, 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 ), and MPEP 2143.
In this case, Infobase is only applied as a reference to teach room temperature. Infobase is not applied to teach any of the claim limitations.
“A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”, see MPEP 2141.01(a).
Hiroko is in the known prior art field of, as stated on page 14 of the previous office action dated 19 December 2025, “producing acrylic acid from lactic acid by a gas-phase reaction, see Abstract, including a method of dehydrating 3-hydroxypropionic acid to produce acrylic acid, see Pg., 2, Last Para, by using a catalysts preferably containing mixtures of phosphates, such as Ca3(PO4)2, Ca2P2O7, and hydroxyapatite, see Pg. 14, (Catalysts)-Pg. 15, Pg. 22, and Original Paras. [0032]-[0037]”. Hiroko is not applied to specifically teach the method of making the catalyst. Hiroko is applied to teach acrylic acid synthesis through use of mixtures of “Ca3(PO4)2, Ca2P2O7, and hydroxyapatite” as catalysts.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Pg. 22 of Hiroko teaches the use of the Hong 2011 catalyst in the synthesis of acrylic acidXXX, XXX, and XXX all
, a person of ordinary skill in the art has good reason to modify Hong 2011 by relying upon any of the teachings of Hiroko before the effective filing date of the claimed invention for knowledge generally available within the “Ca3(PO4)2, Ca2P2O7, and hydroxyapatite” catalyst art regarding the synthesis of carboxylic acids, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing acrylic acid at high yield with minimum by products by using a mixture of calcium phosphorus catalytic compounds, see Hiroko, Pg. 3, Last Para.-Pg. 4, Ln. 12; Pg. 14, (Catalysts)-Pg. 15, Pg. 22, and Original Paras. [0032]-[0038]; and, MPEP 2141 and 2143 I. B-D.
For the reasons indicated above, applicant’s above arguments are not persuasive.
New and Previous Rejections Based on Amendments to the Claims in the reply filed on 06 March 2026
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
For clarity between the new and maintained previous rejections, the specific new rejections are in italics.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4-17 are newly rejected and claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hong et al., (“Efficient and selective conversion of methyl lactate to acrylic acid using Ca3(PO4)2–Ca2(P2O7) composite catalysts”, published 21 February 2011, Applied Catalysis A: General, Vol. 396, Pgs. 194-200, hereinafter Hong 2011), as evidenced by Infobase, (“Room temperature”, Merriam-Webster’s Medical Dictionary, 2016, Pgs. 1-2) in view of Hiroko et al. (WO2015016217, see machine translation, hereinafter Hiroko), in further view of Sakuma et al. (JP2005263581, published 29 September 2005, see machine translation, hereinafter Sakuma) and Ogawara (US20100303702, published 02 December 2010).
Hong 2011 teaches the claims 1 and 3-17 limitations of a method for preparing a catalyst for a dehydration reaction of methyl lactate aka 2-hydroxypropionic acid to acrylic acid at 350-400 ◦C, see Abstract; Pg. 195, 2. Material and methods; Pg, 199, Table 3. The catalysts is prepared by preparing separate slurries and separate cakes of Ca3(PO4)2 and Ca2(P2O7) and combining the cakes to produce a Ca3(PO4)2-Ca2(P2O7) catalyst, see Pg. 195, 2. Material and methods.
The Ca3(PO4)2 slurry is prepared by mixing a solution of 38.01 g of Na3PO4·12H2O aka PO43- , 0.1 mol, 98%, in 250 ml deionized water (DW) as calculated by the examiner 0.4 M, and a solution of CaCl2·2H2O, 23.52 g, 0.16 mol in 100 ml DW as calculated by the examiner 1.6 M, by slow addition of 7 ml/min of CaCl2·2H2O solution with continuous stirring at 60 ◦C for 1 h, i.e., continuous stirring implies the Na3PO4·12H2O solution is inherently in an appropriate container, such as a bath, see Pg. 195, 2. Material and methods and MPEP 2112;
The Ca2(P2O7) slurry is prepared by mixing a solution of 32.44 g of Na4P2O7 aka P2O74-, 0.122 mol prepared in 250 ml of DW heating at 50 ◦C, as calculated by the examiner 0.49 M, and a solution of 39.46 g CaCl2·2H2O, 0.268 mol in 100 ml DW as calculated by the examiner 2.68 M, by slow addition of 7 ml/min of CaCl2·2H2O solution with continuous stirring at room temperature for 1 h, i.e., continuous stirring implies the Na4P2O7 solution is inherently in an appropriate container, such as a bath, see Pg. 195, 2. Material and methods and MPEP 2112, meeting:
The method of preparing a catalysts for a dehydration reaction of a hydroxypropionic acid, the calcium phosphate phase Ca3(PO4)2, the calcium pyrophosphate phase Ca2(P207), the first phosphate solution containing PO43-, the second phosphate solution containing P2O74-, the first and second calcium salt solutions containing CaCl2 hydrate, and dropping in instant application claim 1;
Within the range of the first and second phosphate solutions in instant application claim 4;
Some of the dropping and within the time range in instant application claim 5 and in instant application claim 6;
The specific Na3PO4 hydrate first phosphate solution in instant application claim 7;
The specific Na4P2O7 second phosphate solution in instant application claim 8; and,
The specific CaCl2 hydrate aka CaCl2·2H2O in instant application claim 9.
Next the Ca3(PO4)2 slurry and the Ca2(P2O7) slurry are each filtered and dispersed in 350 ml of DW twice, i.e., washing, and filtered again to get Ca3(PO4)2 and Ca2(P2O7) cakes, respectively, where the desired ratios of the two cakes, such as Ca3(PO4)2:Ca2(P2O7) of 70:30, 50:50, and 20:80, are dispersed in 500 ml of DW and physically mixed by continuous stirring at room temperature for 1 h, as evidenced by Infobase, room temperature is from 15-25◦C, then the mixed slurry is filtered and dried at 80 ◦C in air circulating oven for 6 h, the resulting white powder is pressed to obtain catalyst tablets aka a calcium phosphate cake, followed by calcination at 500◦C in air for 6 h to result in the composite Ca3(PO4)2-Ca2(P2O7) catalyst, see Pg. 195, 2. Material and methods; Figs. 1, 2, 4, 5; Pg, 198, Table 2, meeting,
The Ca2(P2O7) cake, Ca3(PO4)2 cake, mixing the cakes to produce a calcium phosphate cake, firing/calcining, and within the two phases weight ratio range in instant application claim 1;
The mixing, filtering, washing, and drying to prepare a calcium phosphate cake in instant application claim 10;
The preparing and within the temperature and time ranges in instant application claim 11;
Within the calcining/firing range in instant application claim 12;
The catalysts, the method of preparing a catalysts for a dehydration reaction of a hydroxypropionic acid, calcium phosphate phase Ca3(PO4)2, calcium pyrophosphate phase Ca2(P207), and within the two phases ratio range in instant application claim 13;
The production of acrylic acid in instant application claim 14;
Within the temperature range in instant application claim 15; and,
Within the two phases 20:80 weight ratio in instant application claim 16 and instant application claim 17.
In regard to the preamble statement in instant application claims 1 and 13 of “for a dehydration reaction of 3-hydroxypropionic acid”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “for a dehydration reaction of 3-hydroxypropionic acid” is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation.
Hong 2011 does not teach:
The instant application claim 1 limitations of the catalyst including hydroxyapatite, production of a hydroxyapatite cake, and mixing the hydroxyapatite cake;
[deleted]
The instant application claims 10, 11, 16, and 17 limitations of the hydroxyapatite cake and mixing the hydroxyapatite cake;
The instant application claim 13 limitations of the catalyst including hydroxyapatite and a hydroxyapatite phase; and,
The instant application claim 14 limitation of 3-hydroxypropionic acid.
[deleted]
Hong 2011 teaches the calcium phosphate phase is Ca3(PO4)2 instead of Ca5(PO4)3(OH) aka hydroxyapatite, see Pg. 195, 2. Material and methods. The method of Hong 2011 to prepare the Ca3(PO4)2 phase is to mix a solution of Na3PO4·12H2O with a solution of CaCl2·2H2O, see Pg. 195, 2. Material and methods. The instant specification Example 1 Pg. 14-Pg. 15, Lns. 1-15 prepares the hydroxyapatite using the same procedure taught by Hong 2011 of mixing a solution of Na3PO4·12H2O with a solution of CaCl2·2H2O. Since “[p]roducts of identical chemical composition can not have mutually exclusive properties”, see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), and a chemical composition and its properties are inseparable, see MPEP 2112.01 II., a prima facie case of either anticipation or obviousness has been established in the substantially similar preparation of Hong 2011 also producing Ca5(PO4)3(OH) aka hydroxyapatite, where hydroxyapatite is necessarily present as an apatite phase/cake in the calcium phosphate phase/cake replacing some or all of the Ca3(PO4)2 in the calcium phosphate phase/cake of Hong 2011.
Hiroko relating to producing acrylic acid from lactic acid by a gas-phase reaction, see Abstract, including a method of dehydrating 3-hydroxypropionic acid to produce acrylic acid, see Pg., 2, Last Para, by using a catalysts preferably containing mixtures of phosphates, such as Ca3(PO4)2, Ca2P2O7, and hydroxyapatite, see Pg. 14, (Catalysts)-Pg. 15, Pg. 22, and Original Paras. [0032]-[0037], meeting,
The catalyst including hydroxyapatite, a hydroxyapatite phase, production of an hydroxyapatite cake, and mixing the hydroxyapatite cake in instant application claim 1, in instant application claim 10, in instant application claim 11, in instant application claim 13, in instant application claim 16, and in instant application claim 17; and,
The dehydrating 3-hydroxypropionic acid to acrylic acid in instant application claim 14.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Hong 2011 to produce an apatite phase/cake Ca5(PO4)3(OH) aka hydroxyapatite instead of the Ca3(PO4)2 calcium phosphate phase/cake, and to dehydrate 3-hydroxypropionic acid to acrylic acid, see MPEP 2112 III., 2112.01 II., and as taught by Hiroko, with a reasonable predictability of success for the purpose of efficiently producing acrylic acid at high yield with minimum by products by using a mixture of calcium phosphorus catalytic compounds, see Hiroko, Pg. 3, Last Para.-Pg. 4, Ln. 12; Pg. 14, (Catalysts)-Pg. 15, Pg. 22, and Original Paras. [0032]-[0038].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and both Hong 2011 and Hiroko teach dehydration catalysts preferably containing mixtures of phosphates, such as Ca3(PO4)2, Ca2P2O7, and hydroxyapatite, a person of ordinary skill in the art has good reason to produce acrylic acid by pursuing the known options within their technical grasp before the effective filing date of the claimed invention, such as by catalytic dehydration with a mixture of Ca2P2O7 and calcium hydroxyapatite, for the benefit of efficiently producing acrylic acid at high yield with minimum by products by using a mixture of calcium phosphorus catalytic compounds, see Hiroko, Pg. 3, Last Para.-Pg. 4, Ln. 12; Pg. 14, (Catalysts)-Pg. 15, Pg. 22, and Original Paras. [0032]-[0038] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as calcium hydroxyapatite, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as weight ratios of the mixed calcium phosphates, the concentration of reactants, reaction temperatures, and times, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as replacing Ca3(PO4) with Ca5(PO4)3(OH), “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
In addition, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, the substantially similar preparation of Hong 2011 also producing Ca5(PO4)3(OH) aka hydroxyapatite, where hydroxyapatite is necessarily present as an apatite phase/cake in the calcium phosphate phase/cake replacing some or all of the Ca3(PO4)2 in the calcium phosphate phase/cake of Hong 2011.
Hong 2011 does not teach:
The instant application claims 1, 5, and 6 limitations of the method comprising the steps of: dropping a first phosphate solution into a first calcium salt solution; and, dropping a second phosphate solution into a second calcium salt solution; and,
The limitations of instant application claim 18.
Hong 2011 is in the known prior art of the production of a Ca3(PO4)2-Ca2(P2O7) catalyst, see Pg. 195, 2. Material and methods, “by slurry mixing of two components in water and heat treatment”, where the calcium solutions are added to the phosphate solutions to create the Ca3(PO4)2 slurry and the Ca2(P2O7) slurry, see Pg. 195, 2. Material and methods.
Sakuma is in the known prior art of the synthesis of hydroxyapatite catalysts “by adding a phosphate solution while stirring a calcium salt solution, and maintaining the reaction temperature constant at a desired temperature”, see Abstract; Paras. [0012];[0014];[0016], and is applied to teach the same.
Regarding the limitations of instant application claims 1, 5, 6, and 18, Sakuma teaches “[h]ydroxyapatite was synthesized by controlling the reaction temperature to 30°C while adding a sodium phosphate solution to a calcium acetate solution with stirring”, see Para. [0023], where the temperature may be between the “range of 0°C to 45°C during synthesis”, see Para. [0012], and “commonly used calcium salts such as calcium hydroxide, calcium acetate, calcium carbonate, calcium chloride, calcium citrate, and calcium lactate can be used as raw materials, and commonly used phosphates such as phosphoric acid, ammonium phosphate, sodium phosphate, potassium phosphate, pyrophosphate, and sodium hexametaphosphate can be used as raw materials”, see Para. [0014], meeting the calcium salts, phosphate salts, and adding the phosphate salt to the calcium salt with stirring in instant application claim 1, in instant application claim 5, and in instant application claim 6; and,
The PO43- and within the stirring temperature range in instant application claim 18.
Hong 2011 does not teach:
The instant application claim 1 limitations of the concentration range of the first and second calcium salt solution.
Sakuma teaches “[t]he amounts of calcium salt and phosphate reacted can be adjusted so that the Ca/P ratio is between 1.4 and 1.8”, see Para. [0014].
Ogawara is in the known prior art field of the synthesis of hydroxyapatite particles by “dropping the phosphoric acid aqueous solution into the calcium hydroxide dispersion liquid”, see Paras. [0059]-[0069], and is applied to teach the same.
Regarding the limitations in instant application claim 1, Ogawara teaches the “content of calcium hydroxide in the calcium hydroxide dispersion liquid is preferably in the range of about 5 to 15 wt % and more preferably in the range of about to 12 Wt %”, where “calcium hydroxide of 5000 g was dispersed in pure water of 40 L to obtain a calcium hydroxide dispersion liquid”, see Paras. [0065];[0109], as calculated by the examiner, [5000 g Ca(OH)2
÷
74.09 g/mol Ca(OH)2]/40 L = 1.69 M which equates to a solution of [1.69 mol/L x 74.09 g/mol] = 125.2 g/L, i.e., 12.5 wt%, at 1.69 M and (12.5/2) is 6.25 wt% at (1.69/2) which is 0.845 M; therefore, about 5 to about 11 wt% meets within the calcium salt component molar concentration range in instant application claim 1.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the “slurry mixing of two components in water and heat treatment” in Hong 2011 to rearrange the adding the two components to add the phosphate solutions of optimal concentration to the calcium salt solutions of optimal concentration as taught by Sakuma and Ogawara with a reasonable predictability of success for the purpose of efficiently producing hydroxyapatite catalyst particles by wet synthesis methods that allow for increased contact between the calcium and phosphorus when the phosphorus solution is dropped into the calcium solution while stirring and that allow “for the control of the reaction temperature during wet synthesis, resulting in hydroxyapatite with high purity, an average particle size that can be adjusted between a few nanometers and several hundred nanometers, [and] a narrow particle size distribution”, leading to “a large specific surface area,” and an “increased catalytic activity”, see Sakuma, Paras. [0011]-[0016]; Ogawara, Paras. [0065]-[0068].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the “slurry mixing of two components in water and heat treatment” in Hong 2011 by applying the known technique of adding the phosphate solutions of optimal concentration to the calcium salt solutions of optimal concentration as taught by Sakuma and Ogawara with a reasonable predictability of success for the purpose of efficiently producing hydroxyapatite catalyst particles by wet synthesis methods that allow for increased contact between the calcium and phosphorus when the phosphorus solution is dropped into the calcium solution while stirring and that allow “for the control of the reaction temperature during wet synthesis, resulting in hydroxyapatite with high purity, an average particle size that can be adjusted between a few nanometers and several hundred nanometers, [and] a narrow particle size distribution”, leading to “a large specific surface area,” and an “increased catalytic activity”, see Sakuma Paras. [0011]-[0016]; Ogawara, Paras. [0065]-[0068]; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Hong 2011, Sakuma, and Ogawara all teach producing calcium phosphorous hydroxyapatite catalyst particles by wet synthesis methods, a person of ordinary skill in the art has good reason to modify Hong 2011 by relying upon Sakuma and Ogawara before the effective filing date of the claimed invention for knowledge generally available within the calcium phosphorous hydroxyapatite catalyst particle synthesis art regarding the synthesis temperature, concentration of reactants, and the sequence of mixing the calcium solution and phosphate solution, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing hydroxyapatite catalyst particles by wet synthesis methods that allow for increased contact between the calcium and phosphorus when the phosphorus solution is dropped into the calcium solution while stirring and that allow “for the control of the reaction temperature during wet synthesis, resulting in hydroxyapatite with high purity, an average particle size that can be adjusted between a few nanometers and several hundred nanometers, [and] a narrow particle size distribution”, leading to “a large specific surface area,” and an “increased catalytic activity”, see Sakuma Paras. [0011]-[0016]; Ogawara, Paras. [0065]-[0068]; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Hong 2011 teaches “slurry mixing of two components in water and heat treatment” and Sakuma and Ogawara teach adding the phosphate solutions of optimal concentration to the calcium salt solutions of optimal concentration, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the sequence of adding the ingredients of Sakuma and Ogawara in the Ca3(PO4)2-Ca2(P2O7) catalyst synthesis of Hong 2011.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the concentration of the calcium salt solutions, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the calcium salt solution concentrations and the synthesis temperature, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Conclusion
No claims are allowed.
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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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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