Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This Office action is responsive to Applicant's Remarks and Amendment after Non-Final Rejection, filed August 25, 2025. As filed, Claims 5, 9-11 are pending of which claims 5, 9-11 are amended. Claims 1-4, 6-8 are cancelled.
Response to Remarks
Applicant’s amendments have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
The rejection of claims 5, 9-11 under 35 U.S.C. § 112 second paragraph is maintained. While the claims are amended to delete “particular”, the recitation in claim 5” A solid catalyst having a single or multiple catalytic zone(s), each of which independently comprising a mixed metal oxide compound having….”, renders claim 5 and its dependent claims indefinite because is not clear what the limitation “catalytic zone(s)” is referring to in reference to the claimed solid catalyst. A compound – in the instant case the claimed solid catalyst- requires a definite chemical structure or formula and the recitation “having a single or multiple catalytic zone(s)” is in contradiction to the meaning commonly associated with a compound.
2.The rejection of claims 5, 9-11 under 35 U.S.C. § 112 fourth paragraph is maintained. Claims 9-11 are dependent from claim 5 which is drawn to a solid catalyst system having a single or multiple catalytic zone(s), each of which independently comprising a mixed metal oxide compound. Claim 9-11 are drawn to “the process” Therefore, claims 9-11 fail to further limit the subject matter of claim 5, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C. § 112.
3.The rejection of claims 5, 9-11 under 35 U.S.C. § 102 (b) as being anticipated by US 2008/0177106 A1, by Lin et al. Jul. 24, 2008 is maintained.
Applicant's arguments filed 8/25/2025 have been fully considered but they are not persuasive.
Regarding Applicants argument that “the limitations of the claimed invention as presented in the present application include the composition of matter of the claimed catalyst method of preparation and its use by subjecting a feed gas mixture of a primary aliphatic alcohol or a diol, or that of an alcohol or a diol selected from the group consisting of 1, 2-propanediol or 1,3-propanediol and isobutanol, respectively, to a vapor phase catalytic oxidation” (Remarks page 2) and further that “a simple "product-by-process" interpretation of claim 5, which contains detailed limitations of the corresponding manufacturing and catalytic transforming processes, “(Remarks page 3)- these arguments pertaining to process are not relevant to the claimed solid catalyst.
As discussed in the previous office action and reiterated herein, Claim 5 is a product-by-process claims; claims 9-11 are depended from claim 5 and are interpreted as product-by-process claims; the product-by-process claims are examined based upon a claim interpretation of the structure of the product only; i.e., without any limitations based on recited steps. See MPEP § 2113. In the instant case, regarding the preparation process conditions, the conditions do not add structural features to the claimed solid catalyst composition nor do the conditions further limit the claimed composition. The ‘106 publication teaches a solid catalyst comprising a compound
having the formula AaBbXxYyZzOo which reads on claimed mixed-oxide catalyst of claim 5, therefore the prior art teaches the limitations of instant claims.
4.The rejection of claims 5, 9-11 under 35 U.S.C. § 103 over 102 (b) as being anticipated by US 2008/0177106 A1, by Lin et al. Jul. 24, 2008 is maintained for the same reason as outlined above.
Claim Rejections - 35 USC § 112
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 5, 9-11 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 5 as amended recites “ A solid catalyst having a single or multiple catalytic zone(s), each of which independently comprising a mixed metal oxide compound having….”, which renders claim 5 and its dependent claims indefinite because is not clear what the limitation “catalytic zone(s)” is referring to in reference to the claimed solid catalyst. Claim 5 ca be interpreted as a mixture of mixed metal oxide compounds is claimed or as a system with catalytic zone(s).
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.
Claims 9-11 are 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.
Claims 9-11 are dependent from claim 5 which is drawn to a solid catalyst system having a single or multiple catalytic zone(s), each of which independently comprising a mixed metal oxide compound. Claim 9-11 are drawn to “the process”. Therefore claims 9-11 fail to further limit the subject matter of claim 5, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C. § 112.
As stated in MPEP § 608.01(n), a dependent claim should “contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and include all the limitations of the previous claim”.
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
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
1.Claim(s) 5, 9-11 are rejected under pre-AIA 35 U.S.C. 102 (b) as being anticipated by US 2008/0177106 A1, by Lin et al. Jul. 24, 2008 (“the ‘106 publication”; cited in PTO892 mailed 4/11/2025).
Claim interpretation:
Claim 5 recites “ A solid catalyst…”
Claim 5 is a product-by-process claims. Claims 9-11 are depended from claim 5 and are interpreted as product-by-process claims.
During patent prosecution, product-by-process claims are examined based upon a claim interpretation of the structure of the product only; i.e., without any limitations based on recited steps. See MPEP § 2113; In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”).
Regarding the preparation process conditions, the conditions do not add structural features to the claimed solid catalyst composition nor do the conditions further limit the claimed composition.
The ‘106 publication teaches a catalytic process for preparing unsaturated oxygenates in the presence of at least one solid catalyst comprising a compound
having the formula AaBbXxYyZzOo wherein when A is at least one of the group of elements Mo, W, B is Sb, X is at least one of the group of elements Ca, Ce, Co, Fe, Ga, Mg, Ni, Nb, Sn, W and Zn, Y is at least one of the group of elements Ag, Au, B, Cr, Cs, Cu, K, La, Li, Mg, Mn, Na, Nb, Ni, P, Pb, Rb, Re, Ru, Sn, Te, Ti, V, Zr, and Z is at least one element selected from said X or Y groups and wherein a=1, 0.05<b<1.5, 0.01<x<1,0<y<0.5, 0<z<0.2 and o is dependent on the oxidation state of the other elements- which is encompassed in the claimed formula (I) of mixed metal oxide.
Example 4 of the ‘106 publication illustrates the oxidation catalyst (Table 1) Mo1.0Sb0.5Ce0.09Sn0.005Ag0.001 which teach the instantly claimed catalyst of formula (I) wherein A is Mo and a= 1.0; b=0.5, within the claimed range 0.05 < b < 1.5; X is Ce and x= 0.09 and within the range 0.01 < X < 1, Y is Ag, y= 0.001 within the range 0 < Y < 0.5, Z is Sn (one or more elements from the groups X or Y, wherein Sn belongs to the group X) and z=0.005 within the range 0 < z < 0.2) [see 0040].
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Therefore, the prior art teaches the limitations of instant claims.
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 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 of this title, 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 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 5, 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0177106 A1, by Lin et al. Jul. 24, 2008 (“the 106 publication”; cited in PTO-892 mailed 4/11/2025).
The ‘106 publication teaches a catalytic process for preparing unsaturated oxygenates in the presence of at least one solid catalyst comprising a compound
having the formula AaBbXxYyZzOo wherein when A is at least one of the group of elements Mo, W, B is Sb, X is at least one of the group of elements Ca, Ce, Co, Fe, Ga, Mg, Ni, Nb, Sn, W and Zn, Y is at least one of the group of elements Ag, Au, B, Cr, Cs, Cu, K, La, Li, Mg, Mn, Na, Nb, Ni, P, Pb, Rb, Re, Ru, Sn, Te, Ti, V, Zr, and Z is at least one element selected from said X or Y groups and wherein a=1, 0.05<b<1.5, 0.01<x<1,0<y<0.5, 0<z<0.2 and o is dependent on the oxidation state of the other elements- which is encompassed in the claimed formula (I) of mixed metal oxide.
Example 4 of the ‘106 publication illustrates the oxidation catalyst (Table 1) Mo1.0Sb0.5Ce0.09Sn0.005Ag0.001 which teach the instantly claimed catalyst of formula (I) wherein A is Mo and a= 1.0; b=0.5, within the claimed range 0.05 < b < 1.5; X is Ce and x= 0.09 and within the range 0.01 < X < 1, Y is Ag, y= 0.001 within the range 0 < Y < 0.5, Z is Sn (one or more elements from the groups X or Y, wherein Sn belongs to the group X) and z=0.005 within the range 0 < z < 0.2) [see 0040].
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Regarding the preparation process conditions, the conditions do not add structural features to the claimed solid catalyst composition nor do the conditions further limit the claimed composition.
In conclusion, the multicomponent-mixed metal oxides was known in the art at the time the instant invention was made.
In 2007, the Supreme Court clarified that standard for obviousness in KSR International Co. v. Teleflex Inc., USPQ2d, 1385, 1398; 127 SCt 1727; 167 Led2d 705; 550 US 398 (2007) (stating: “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, 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 the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”)
In the instant case, the Mo-based oxidation catalyst is the known options for preparation of acrylic acid or methacrylic acid as discussed in the prior art and within the technical grasp of one of ordinary skill in the art.
The rationale to support a conclusion that the claim would have been obvious is that teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. KSR, 550 U.S. at_, 82 USPQ2d at 1395.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692