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 .
DETAILED ACTION
Claims 16-30 of T. Heidemann et al., US 17/921,384 (Apr. 29, 2021) are pending. Claims 24 and 26-30, drawn to non-elected Groups (II)-(V) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 16-23 and 25 are under examination on the merits and are rejected.
Election/Restrictions
Applicant previously elected Group (I), (claims 16-23 and 25) without traverse in the Reply to Restriction Requirement filed on October 6, 2025. Claims 24 and 26-30, drawn to non-elected Groups (II)-(V) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is made FINAL.
Withdrawal Claim Rejections - 35 USC § 102 (AIA )
Rejection of claims 16, 18, 21-23 and 25 under 35 U.S.C. 102(a)(1)/(2) as being anticipated by C. Frohning et al., US 4,956,328 (1990) (“Frohning”) is withdrawn in view of Applicant’s amendments. As argued by Applicant, claim 16 is amended to require a minimum of 75 percent Ni. The Frohning Example cited in the previous Office action contains 65.3%, outside the instant range.
Claim Rejections - 35 USC § 103 (AIA )
The § 103 rejection of the previous Office action is modified in view of Applicant’s amendments.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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 16-23 and 25 are rejected under AIA 35 U.S.C. 103 as being unpatentable over P. Birke et al., US 6,680,280 (2004) (“Birke”) and/or or C. Frohning et al., US 4,956,328 (1990) (“Frohning”) in further view of B. Reesink et al., US 6,524,994 (2003) (“Reesink”).
P. Birke et al., US 6,680,280 (2004) (“Birke”)
Claims 16, 18, 21-23 and 25 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by P. Birke et al., US 6,680,280 (2004) (“Birke”).
Birke is directed to the same utility as the instant application, that is a nickel-based hydrogenation catalyst for nitro groups, where hydrogenation of nitrobenzene is exemplified. Birke at Abstract; Id. at cols. 7-8 (Example 5); instant specification at page 12, lines 31-40.
Birke teaches a reduced catalyst having nickel crystallites with a bimodal nickel crystallite size distribution, a nickel content of from 60, in particular 61% by mass to 80% by mass (based on the total mass of the catalyst) and a degree of reduction of at least 70%. Birke at col. 2, lines 13-19. Birke teaches that in preferred embodiment, the above-mentioned catalyst is supported on a zirconium containing support, preferably contains or consists of ZrO2, ZrO2HfO2, SiO2.ZrO2, SiO2.ZrO2HfO2 or mixtures of at least two of these substances. Birke at col. 2, lines 31-99. Birke teaches that in a particularly preferred embodiment, the SiO2 content is 0 to 20% by mass (based on the total mass of the catalyst). In a further preferred embodiment, the ZrO2 content is 20 to 40% by mass (based on the total mass of the catalyst). Birke at col. 2, lines 31-99.
Birke teaches the following working Examples 2 and 3 of the disclosed nickel hydrogenation catalysts. Birke at cols 5-7.
Content of Birke Working Examples 2 and 3
Example
Ni
ZrO2
SiO2
Ni:Zr atomic ratio*
2
65%
18%
3%
7.5
3
60%
16%
5%
7.8
*Calculated by the Examiner.
Differences between Birke and Claim 16
Birke differs from claim 16 only to the extent of teaching ranges of Nickel (Ni), zirconium dioxide (ZrO2), and silica (SiO2) that overlap with the claimed ranges as summarized in the table below.
Summary of Birke Hydrogenation Catalyst Compared to Instant Claim 16
component
Birke*
Claim 16
Ni (58.69 g/mol)
61 to 80% (calculated as elemental nickel, 58.6 g/mol)
75 to 95 % (calculated as elemental Ni, 58.6 g/mol)
ZrO2 (123.22 g/mol)
20 to 40%
must contain an amount subject to the Ni:Zr atomic ratio
SiO2 (60.08 g/mol)
0 to 20%
Must contain an unspecified amount
Ni:Zr atomic ratio[Symbol font/0x46]
3.2-8.5[Symbol font/0x46]
in the range of from 8.5 to 50.0
* Birke at col. 2, lines 13-39.
[Symbol font/0x46] Birke does not provide a Ni:Zr atomic ratio range. The above table’s Ni:Zr atomic ratio is calculated by the Examiner as the upper range value of Birke’s Ni (i.e., 80%) over the lowest range value of ZrO2 (i.e., 20%) to give an upper ratio of 8.5 and the lowest range of Birke’s Ni (i.e. 61%) over the highest range of ZrO2 (i.e. 40%) to give a lower ratio of 3.2.
Birke’s working Examples 2 and 3 (60-65% Ni) differ from claim 16 in that the nickel amount does not fall within the claimed range of 75 to 95 % and the Birke Ni:Zr atomic ratio (7.5-7.8) is close to the lower claimed range end of 8.5.
C. Frohning et al., US 4,956,328 (1990) (“Frohning”)
Frohning teaches Ni catalysts as follows:
The present catalyst compositions are surprisingly superior to those previously known. In particular, the presence of 20 to 90% by weight of nickel, based on the catalyst composition, along with 1 to 30 parts by weight of alumina and 0.5 to 20 parts by weight of zirconium dioxide, in each case per 100 parts by weight of nickel, have been found extremely suitable. More particularly, the use of 35 to 75% by weight of nickel and most preferably 40 to 70% by weight of nickel are worthy of particular mention.
Frohning at col. 4, line 64 to col. 5, line 5.
Frohning teaches that it is also preferred that the catalyst be precipitated onto a support. Frohning at col. 3, lines 37-38. Frohning teaches preferred supports include silica, silica gel, kieselguhr, and siliceous earth. Frohning at col. 3, lines 51-53.
Frohning teaches that the catalysts of the present invention are particularly useful in the liquid phase hydrogenation of nitriles, aromatic hydrocarbons, nitro compounds, and olefins. Frohning at col. 5, lines 33-35.
Frohning teaches one of ordinary skill that Ni contents in the range of 20 to 90% by weight of nickel are useful in supported Ni catalysts that include ZrO2 and may be supported on SiO2.
B. Reesink et al., US 6,524,994 (2003) (“Reesink”)
As background, Reesink teaches that nickel catalysts have been used already for a long time in various catalytic applications, such as hydrogenation as supported or Raney-nickel type. Reesink at col. 1, lines 10-14. Reesink teaches that the supported catalysts are generally based on a ceramic support, such as silica, alumina and the like, on the surface of which an amount of nickel is present and the amounts of nickel may vary widely, from as low as 5 wt.% up to amounts of more than 75 wt.%. Reesink at col. 1, lines 14-19. Reesink teaches that on the one hand, the facile preparation of supported catalysts by adding the active metal to the already structured support, it is possible to maintain the structure of the support but at loadings over about 75 wt.%, it becomes increasingly difficult to provide a suitable catalyst structure. Reesink at col. 1, lines 19-26. Reesink teaches that catalysts with a high nickel content have a high capacity have a good sedimentation behavior, which is especially important in reactions that are carried out in the slurry phase, such as hydrogenations of fatty materials. Accordingly, Reesink teaches that accordingly there is a need for nickel catalysts having a high nickel loading and a high nickel surface area, combined with good structural properties, i.e. wide pores and a high porosity (pore volume), which also have the advantages of good sedimentation. Reesink at col. 1, lines 57-61. Reesink teaches that this is highly desirable as catalysts having the combination of these properties are expected to be highly active and selective in various reactions. Reesink at col. 1, lines 27-31.
Reesink teaches a nickel catalyst comprising 0.1 to 12.5 wt. % of at least one structural promoter, selected from the group of oxides of metals and metalloids and combinations thereof, and 87.5 to 99.9 wt.% of nickel, calculated on the weight of nickel and the structural promoter together, the catalyst having a nickel surface area, as defined herein, of at least 10 m/g catalyst and an average pore diameter, as defined herein, of 10 to 60 nm. Reesink at col. 2, lines 4-11. Reesink teaches that suitable structural promoters include silica (SiO2), silica-alumina, alumina, zirconia (ZrO2), titania, magnesia, or ceria. Reesink at col. 2, lines 23-25.
Reesink teaches preparation of the high nickel content catalyst by comprises first precipitating the nickel precursor (e.g., precipitation of nickel carbonate), ageing the precipitate and adding a solution or suspension of the (precursor) of the structural binder to the precipitate and subsequently treatment to produce a catalyst, which may
include drying, calcining, reducing and passivating. Reesink at col. 2, lines 34-45.
Reesink teaching that the catalyst may be used in hydrogenations, such as hydrogenation of nitro compounds, and is thus directed to the same utility as the instant application. Reesink at col. 3, lines 50-55.
Obviousness Rationale
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2114.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP § 2114.05(I). One of ordinary skill in the art to develop workable or optimum ranges for result-effective parameters, where Applicant can rebut a prima facie case of obviousness by showing the criticality (unexpected result) of the range. MPEP § 2144.05; see also, In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical). Known work in one field of endeavor may prompt variations of it for use in the same field based on design incentives if the variations are predictable to one of ordinary skill in the art. MPEP § 2143(I)(F).
It is first noted that Birke, Frohning and Reesink are all directed to the same utility/endeavor as the instant application; that, is ZrO2-SiO2 supported nickel-based catalysts for nitro-group hydrogenation. Birke at Abstract; Id. at cols. 7-8 (Example 5); Frohning at col. 5, lines 33-35; Reesink at col. 3, lines 50-55, instant specification at page 12, lines 31-40.
Under the instant facts, one of ordinary skill is motivated to increase the nickel content of either of Birke’s working Examples 2 or 3:
Content of Birke Working Examples 2 and 3
Birke
Example
Ni (58.69 g/mol)
ZrO2 (123.22 g/mol)
SiO2 (60.08 g/mol)
Ni:Zr atomic ratio*
2
65%
18%
3%
7.5
3
60%
16%
5%
7.8
*Calculated by the Examiner.
to within the claimed range of “75 to 95 weight-% of Ni, calculated as elemental Ni”; for example, to a nickel content to within the upper Birke range of 80% and also within the Reesink range of 87.5 to 99.9 wt.% of nickel. Upon modification of Birke Examples 2 and 3 by raising the Ni content, as proposed above, the Ni:Zr atomic ratio naturally becomes higher so as to fall within the claim 16 range of “a Ni:Zr atomic ratio in the range of from 8.5 to 50.0”.
To give but one example, in view of Birke, Frohning and Reesink, one of ordinary skill can readily arrive at the following supported nickel catalysts falling within the claim 16 ranges (where the parenthetical and strikeout text indicate the proposed modification of the Birke working Examples).
Examples of Proposed Modification of Birke Examples 2 and 3
Birke
Example
Ni (58.69 g/mol)
ZrO2 (123.22 g/mol)
SiO2 (60.08 g/mol)
Ni:Zr atomic ratio*
2
18%
3%
3
16%
5%
One of ordinary skill is motivated to so increase the nickel content because Burke teaches that the full scope of nickel content of from 60, and in particular 61% by mass to 80% by mass (based on the total mass of the catalyst), which overlaps with the claimed range, is effective. Birke at col. 2, lines 13-19; MPEP § 2114.05(I). Further, Frohning teaches one of ordinary skill that the entire range of Ni contents in the range of 20 to 90% by weight of nickel (which overlaps with the claim 16 range) are useful in supported Ni catalysts that include ZrO2 and may be supported on SiO2. One of ordinary skill is further motivated to increase the nickel content of Birke’s working Examples 2 or 3 because Reesink teaches that higher nickel loading supported catalysts have advantageous properties such as activity and good sedimentation. Reesink at col. 1, lines 57-61; Id. at col. 1, lines 27-31. Reesink clearly teaches that nickel loading in supported catalysts is an optimizable, result-effective parameter. Reesink at col. 1, lines 19-26; MPEP § 2144.05. Further, Birke, Frohning and Reesink all teach precipitation methods to prepare the disclosed supported nickel catalysts. Birke at col. 2, line 65 – col. 3, line 11; Frohning at col 2, lines 15-20; Reesink at col. 2, lines 34-45.
In sum, claim 16 is obvious because the cited art is directed to the same utility/endeavor as the claimed supported nickel catalyst and provides an incentive for higher nickel loadings in such catalysts (particularly Reesink,). MPEP § 2143(I)(F). Here, the differences between claim 16 and the cited art were encompassed in known catalyst variations (overlapping and/or close component ranges between claim 16 and the cited art). MPEP § 2114.05(I). One of ordinary skill in the art, in view of the identified design incentives, could have predictably implemented the prior art so as to arrive at the catalyst of claim 16, with the expectation that such catalysts that would be active and useful in catalytic hydrogenations. MPEP § 2143(I)(F).
Claim 17 is obvious because the proposed catalysts “comprise 81 to 90 weight-% of Ni, calculated as elemental Ni, based on the total weight of the catalytic material”.
The limitations of claims 18-20 are clearly met.
The limitations of claim 21 are met because Birke teaches calcination of the Ni catalyst supported on ZrO2-SiO2. Birke at col. 3, lines 7-11.
The limitations of claim 22 are met because Birke teaches reduction of the Ni catalyst supported on ZrO2-SiO2 and degree of reductions of at least 70%. Birke at col. 2, lines 15-19; Id. at col. 2 lines 60-64.
The limitations of claim 23 are clearly met.
Respecting claim 25, per above, Birke teaches that either before or after the calcining, the catalyst precursor may be shaped into tablets, extrudates, cushions, spheres or the like, which meets the claim 25 limitation of “in the form of a molding”. See specification at page 6, lines 18-20 (more preferably a tablet having a cylindrical shape or an ellipsoidal shape”). Here the catalyst shape is obvious because it relates merely to design choice. See MPEP § 2144.04 (IV)(B) (citing In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), where the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant).
Applicant’s Argument
Applicant argues that the specification as originally filed demonstrates that the claimed catalytic material brings about unexpected results to overcome any purported prima facie obviousness. Reply at page 6. Applicant argues that it has surprisingly been found that the catalytic material according to the present invention exhibits an improved activity in the hydrogenation of nitro group-containing compounds, in particular a comparatively higher selectivity towards desired amine group-containing compounds in a hydrogenation reaction of nitro group-containing compounds. Applicant states that this is shown in Example 6. Id.
Proffered Results in Support of Unexpected Properties
Applicant proffers specification Example 6. In Example 6, samples of a catalytic material (catalyst from Examples 1, 2, 3, comp. 4, and comp. 5) were crushed under an inert gas atmosphere to particles having a particles size of smaller than 250 μm and used to hydrogenate 2,4-dinitrotoluene to the corresponding aniline. Specification at pages 31-32. The data is shown in specification Table 1, reproduced below. Specification at page 32.
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Specification at page 32.
The following amounts of the above proffered catalysts are tabulated below by the Examiner from the specification.
Catalyst
%Ni
%ZrO2
%SiO2
%HfO2
%Na2O
Ni:Zr atomic ratio
1
64.3%
13.7%
3.1%
0.3%
0.2%
9.9
2
68.9%
8.6%
2.0%
0.2%
-
16.8
3
71.4%
5.8%
2.2%
-
-
25.9
Comp. 4
60.1
20.9
1.8
-
-
6.0
Comp. 5
60.3
18.6
3.4
-
-
6.8
Applicant argues that as it can be gathered from the results shown in Table 1 of the present application the catalytic materials according to the present invention achieve a higher TDA selectivity after 50 h as well as after 100 h time on stream. Reply at page 6. Applicant states that in particular, the selectivity towards TDA was about 0.5-1 % higher in comparison to the selectivity achieved by the catalytic materials according to Comparative Examples 4 and 5. Reply at page 6. In contrast to this the cited references disclose comparatively lower Ni content. Reply at page 6.
Examiner Response
The proffered results are not persuasive as unexpected to the extent that the above obviousness rejection is overcome for the following reasons. The burden is on Applicant to establish that the evidence relied upon demonstrates that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b). Applicant has not explained how a TDA selectivity difference of about 0.5-1 % higher with catalysts in the comprising Ni in the range of 64-73% versus is in fact unexpected and unobvious and of both statistical and practical significance. Here, one of ordinary skill would expect that higher nickel to support ratios improve selectivity because there is more active metal available; the hydrogenation substrate is more likely to contact the active nickel under the reaction conditions. Further, the proffered results do not appear to teach nickel weight-to-weight comparison.
In this respect, specification Example 6 teaches that:
The reactor was loaded with 140 +/- 2 g (calculated as material in dried form) of a catalytic material suspended in water
Specification at page 32, lines 6-7. Specification Example 6 thus appears to compare on a total catalyst weight basis rather than comparing catalysts respecting the total amount of active metal. Stated differently, 140 g 60.1% Ni catalyst (Ex. comp. 4) has less available active metal than 140 g of 71.4% Ni catalyst (Ex. 3). Applicant has not provided any discussion on this point.
In any case, the proffered results do not appear persuasive in view of Reesink. Based on Reesink, one of ordinary skill would expect higher nickel content supported catalysts to have some degree of improved selectivity. Reesink (as cited above in the § 103 rejection) is specifically directed to supported Ni catalysts having a higher Ni loadings and correspondingly lower support loadings.
The present invention is based on the surprising discovery that the use of only a small amount of a structural promoter in the preparation of high nickel content catalysts makes it possible to produce nickel catalysts having a high nickel loading, a good nickel surface area in combination with good sinter resistance and wide pores. The invention is accordingly directed to a nickel catalyst comprising 0.1 to 12.5 wt. % of at least one structural promoter, selected from the group of oxides of metals and metalloids and combinations thereof, and 87.5 to 99.9 wt.% of nickel, calculated on the weight of nickel and the structural promoter together, the catalyst having an nickel surface area, as defined herein, of at least 10 m/g catalyst and an average pore diameter, as defined herein, of 10 to 60 nm.
Reesink at col. 1, line 65 – col. 2 line 11 (emphasis added).
Reesink teaches one of ordinary skill that the impetus for designing such higher-nickel-content catalysts is, at least in part, due expected increased selectivity as follows:
At loadings of over about 75 wt.%, it becomes increasingly difficult to provide a suitable catalyst structure, more in particular to provide a catalyst having a reasonably high nickel surface area in combination with large pores. This would, however, be highly desirable as catalysts having the combination of these properties are expected to be highly active and selective in various reactions. Furthermore, catalysts with such a high nickel content have a high capacity for sulfur uptake in desulfurisation systems and generally have a good sedimentation behaviour.
Reesink at col. 1, lines 23-33 (emphasis added). Thus, based on Reesink, one of ordinary skill would expect higher nickel content supported catalysts to have some degree of improved reaction selectivity.
The results are further not persuasive because the catalysts proffered are not within the amended claimed nickel range of “from 75 to 95 weight-% of Ni, calculated as elemental Ni”. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. MPEP § 716.02(b)(III). Here, Applicant has made no comparison with the invention as claimed.
Non-Statutory Double Patenting
The non-statutory 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 non-statutory 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).
Non-statutory Double Patenting Rejection over M. Sander et al., US 6,140,539 (2000) (“Sander”)
Claims 16-23 and 25 are rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claim 1 of M. Sander et al., US 6,140,539 (2000) (“Sander”) in further view of P. Birke et al., US 6,680,280 (2004) (“Birke”); C. Frohning et al., US 4,956,328 (1990) (“Frohning”); and B. Reesink et al., US 6,524,994 (2003) (“Reesink”).
Conflicting claim 1 recites “process for preparing amines, in which at least one compound containing at least one nitro group is reacted with hydrogen in the presence of a supported catalyst comprising, as catalytically active metal, nickel” where the catalyst is as follows.
Conflicting claim 1 . . . the reduced and stabilized supported catalyst comprises nickel crystallites having a bimodal nickel crystallite size distribution having maxima at 30-80 Angström and 81–150 Angström on a support comprising ZrO2, ZrO2 HfO2 and/or SiO-ZrO2 and/or SiO2-ZrO2-HfO2 and in the reduced and passivated state has
a nickel content of 60-80 percent by mass,
an SiO2 content of 0-20 percent by mass,
a ZrO2 content of 0-40 percent by mass,
an HfO2 content of 0-4 percent by mass and
after further reduction for one hour at 100 has a degree of reduction of at least 70%.
The catalyst of conflicting claim 1 differs from that of instant claim 16 respecting the Ni-SiO2-ZrO2 ranges, which overlap with one another. Also conflicting claim 1 does not specify the instant claim 1 limitation of “a Ni:Zr atomic ratio in the range of from 8.5 to 50.0”.
Birke teaches a reduced catalyst having nickel crystallites with a bimodal nickel crystallite size distribution, a nickel content of from 60, in particular 61% by mass to 80% by mass (based on the total mass of the catalyst) and a degree of reduction of at least 70%. Birke at col. 2, lines 13-19. Birke teaches that the same two conflicting claim 1 maxima of the nickel crystallite size distribution lying at 30 to 80 Angstrom and 81 to 150 Angstrom. Birke at col. 2, lines 20-25.
Instant claim 16 is an obvious variation of conflicting claim 1 for the following reasons. MPEP § 803(II)(B)(4). One of ordinary skill is motivated by conflicting claim 1, in view of Birke and Reesink, to practice conflicting claim 1 with a bimodal Ni-SiO2-ZrO2 catalyst, having a nickel content of 61% by mass to 80% (as taught by Birke) thereby arriving at the catalyst of instant claim 16 where “a Ni:Zr atomic ratio in the range of from 8.5 to 50.0”. The reasoning is the same as given above for the § 103 rejection, where the instant claim 16 limitation of “a Ni:Zr atomic ratio in the range of from 8.5 to 50.0” is met as a natural result of modifying the Ni and ZrO2 content of conflicting claim 1.
The further limitations of instant dependent claims 17-23 and 25 are obvious variations of conflicting claim 1 for the same reasons given above in the § 103 rejection.
Terminal Disclaimer
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.
Applicant’s Argument
Applicant argues the is based on the same reasoning as provided in the above obviousness rejection and the instant double patenting rejection should be withdrawn.
This argument is not persuasive because the § 103 rejection has been modified and new art has been applied in view of Applicant’s amendments.
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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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
Prosecution Insights