DETAILED ACTION
Claims 1-10 were rejected in Office Action mailed on 10/21/2025.
Applicant filed a response, amended claims 1, 4, 8 and 10, withdrew claims 11-20 and canceled claim 7, on 01/14/2025.
Claims 1-6 and 8-20 are pending, and claims 11-20 are withdrawn.
Claims 1-6 and 8-10 are rejected.
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
Upon further consideration of Jung and applicant’s remarks regarding Hucul in view of Szesni, Sabokatakin, An and Jung, it is agreed that the cited Hucul in view of Szesni, Sabokatakin, An and Jung does not meet the previous claim 7, which limitation is added to the present claim 1. It is also agreed that Adam in view of Sabokatakin, and Hucul in view of Szesni, Sabokatakin and An would not meet the present claim 1. Therefore, the previous 35 U.S.C. 103 rejections of record over Adam in view of Sabokatakin, Hucul in view of Szesni, Sabokatakin and An, and Hucul in view of Szesni, Sabokatakin, An and Jung are withdrawn from the rejections of record. However, upon further searches, new sets of rejections are provided as set forth below. This is a second non-final Office action.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Adam et., WO 2020/086574A1 (Adams) in view of Urmes et al., Kinetic study of the selective hydrogenation of acetylene over supported palladium under tail-end conditions, 2019 (Urmes).
Regarding claims 1-3, 6 and 8, Adams teaches hydrogenation catalyst useful for selectively hydrogenating acetylene (Adams, Abstract);
a hydrogenation catalyst composition comprising: a porous support, present in the composition in an amount within the range of 90 wt.% to 99.9 wt.%, having a BET surface area of no more than 10 m2/g and a pore volume of at least 0.1 mL/g; palladium, present in the composition in an amount within the range of at least 0.02 wt.%, calculated on an elemental mass basis (Adams, [0018]), which overlap the ranges of the presently claimed.
Adams further teaches the palladium obtained from reducing metal particles (Adams, [0072]); [00107]), usually have a diameter within a range of 1 to 60 nm, preferably within a range of 1 to 30 nm (Adams, [0074]), which overlaps the range of claim 6.
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).
Adams further teaches the porous support selected from alumina, silica, titania, and any mixture thereof (Adams, [0051]).
Given that the palladium being a particle having a diameter within a range of 1 to 60 nm, preferably 1 to 30 nm in Adam (Adam, Abstract; [0072]; [0074]) is substantially identical to the catalytic metal nanoparticle used in the present invention, it is clear the palladium nanoparticle of Adam would necessarily and inherently meet the claimed limitation of wherein the dispersion of catalytic metal atoms on the catalytic metal nanoparticle surface is from 30% to 80% with respect to the total metal atoms in the nanoparticle.
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).
Further regarding claims 1 and 4, Adams does not explicitly disclose a median particle diameter of 0.1 microns to 300 microns, or wherein the catalyst has the median particle diameter of 1 micron to 150 microns.
With respect to the difference, Urmes teaches kinetics of the selective hydrogenation of acetylene over Pd/Al2O3 catalyst (Urmes, Abstract).
Urmes further teaches the catalyst was sieved between 100 and 200 µm (Urmes, page 10, section 3.2).
As Urmes expressly teaches, the catalyst was sieved between 100 and 200 µm to improve heat transfer (Urmes, page 10, section 3.2).
Urmes is analogous art as Urmes is drawn to kinetics of the selective hydrogenation of acetylene over Pd/Al2O3 catalyst.
In light of the motivation of sieving catalyst between 100 and 200 µm for Pd/Al2O3 catalyst used for the selective hydrogenation of acetylene, as taught by Urmes, it therefore would have been obvious to a person of ordinary skill in the art to sieve the catalyst of Pd on porous support of Adams, between 100 and 200 µm, in order to improve heat transfer, and thereby arrive at the claimed inventions.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Adams in view of Urmes, as applied to claim 1 above, and further in view of Haag et al., US 3,668,271 (Haag).
Regarding claim 9, as applied to claim 1, Adams in view of Urmes does not explicitly teaches wherein the catalyst metal nanoparticles are Pt nanoparticles.
With respect to the difference, Haag teaches hydrogenation of unsaturated hydrocarbons (Haag, Abstract).
Haag further teaches catalyst materials containing platinum, palladium are useful for hydrogenation reactions, such as in the conversion of acetylenes (Haag, column 4, lines 65-71).
Haag is analogous art as Haag is drawn to hydrogenation of unsaturated hydrocarbons.
In light of the disclosure of Haag of the equivalence and interchangeability of using palladium as disclosed in Adams in view of Urmes (Adams, Abstract), with platinum as presently claimed, it would therefore been obvious to one of ordinary skill in the art to use platinum as the catalyst metal material in Adam in view of Urmes, and thereby arrive claimed invention.
Response to Arguments
In response to the amendment, the previous claim objections and 35 U.S.C. 112(b) rejections are withdrawn.
In light of the amendment in claim 1, respect to “wherein the dispersion of catalytic metal atoms on the catalytic metal nanoparticle surface is from 30% to 80% with respect to the total metal atoms in the nanoparticle”, it is agreed that Adam in view of Sabokatakin, and Hucul in view of Szesni, Sabokatakin and An and Hucul in view of Szesni, Sabokatakin, An and Jung, it would not meet the present claim 1. Therefore, the previous 35 U.S.C. 103 rejections of record over Adam in view of Sabokatakin, Hucul in view of Szesni, Sabokatakin and An, and Hucul in view of Szesni, Sabokatakin, An and Jung are withdrawn from the rejections of record. However, upon further searches, new sets of rejections are provided as set forth above.
Applicant primarily argues:
“Adams in combination with Sabokatakin does not teach or suggest a dispersion of catalytic metal atoms on the catalytic metal nanoparticle surface is from 30% to 80% with respect to the total metal atoms in the nanoparticle.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
Given that the palladium being a particle having a diameter within a range of 1 to 60 nm, preferably 1 to 30 nm in Adam (Adam, Abstract; [0072]; [0074]) is substantially identical to the catalytic metal nanoparticle used in the present invention, it is clear the palladium nanoparticle of Adam would necessarily and inherently meet the claimed limitation of wherein the dispersion of catalytic metal atoms on the catalytic metal nanoparticle surface is from 30% to 80% with respect to the total metal atoms in the nanoparticle, as set forth in item #7 above, absent evidence to the contrary.
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).
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).
Conclusion
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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