DETAILED ACTION
Claims 14-26 are pending, of which claims 24-26 have been withdrawn.
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 .
Response to Arguments
Applicant's arguments filed 3/10/26 have been fully considered but they are not persuasive.
On pages 5-6, Applicant argues that the method used to measure tortuosity in US 2016/0354760 (“Suchanek”) are different than the claimed tortuosity measurement method. Applicant argues that the claimed method provides a more meaningful determination of tortuosity and that the two methods cannot be directly compared.
Suchanek teaches that tortuosity is determined by the ratio of the real length of flow path through a porous body to the shortest distance across that porous body (see Suchanek at paragraph [0025]). This is the same definition for tortuosity as provided in the instant application (see Specification at paragraph [0023]). That is, the tortuosity as determined by Suchanek is the same parameter as the tortuosity as recited in claim 14. Although the claimed method for measuring the tortuosity may be more accurate than the method used by Suchanek, Applicant has not shown that the tortuosity value of the porous bodies of Suchanek would be meaningfully different using a different measurement method. Absent evidence that the claimed method of measurement would provide a meaningfully different result, the tortuosity as measured by Suchanek is presumed to be the same, or very close to, the tortuosity as measured using the method of claim 14.
On page 6, Applicant argues that Suchanek fails to provide enough information to manufacture the porous bodies described in the specification. Specifically, Applicant argues that Suchanek fails to provide the particle size of the alumina powder, or the chemical composition of the binder, lubricants, solvents, and burn-out materials.
Examiner disagrees. Suchanek teaches that the particle size of the milled alumina powder is 0.1 microns to 6 microns and the particle size of the unmilled alumina powder is from 10 microns to 100 microns (see e.g. paragraphs [0060] and [0062]). Although these are ranges and not exact numbers, the disclosure of Suchanek is sufficient to allow a person of ordinary skill to select appropriate particle sizes without undue experimentation. Although Suchanek does not provide the specific binder used in the examples, Suchanek is clear that the binder should be a non-silicate binder (see e.g. paragraph [0060]). Based on the disclosure, a person of ordinary skill in the art would be able to select a non-silicate binder to make the alpha-alumina porous body. Although Suchanek doesn’t explicitly state which lubricant is used, Suchanek does expressly suggest using Petrolatum, and as such, a person of ordinary skill in the art would be able to use the same lubricant (see e.g. paragraph [0064]). Suchanek expressly states that the solvent is water (see e.g. paragraphs [0060] and [0091]). Suchanek also provides a specific listing of possible burnout materials that can be used (see e.g. paragraph [0061]). Suchanek provides ranges for the amounts of each of the materials used, but these ranges are small enough that a person of ordinary skill in the art would be able to select appropriate amounts of each (see e.g. Table 1). Although Suchanek does not provide an exact combination to result in the described porous body, the guidance provided by Suchanek is sufficient to allow one of ordinary skill in the art to make the porous body without undue experimentation.
On pages 6-7, Applicant argues that the method described in the instant specification for non-inventive carrier B is actually closer to the method for inventive carrier A than the method of Suchanek. However, as the claim is directed to the actual carrier and not the method of making the carrier, this argument is not persuasive. The fact that certain changes to the method used in making carrier A results in a non-inventive carrier B does not mean that the measurements described in Suchanek are necessarily incorrect.
On page 7, Applicant argues that the low tortuosity of the carrier results in a selectivity that is higher than that of a higher tortuosity carrier. However, even if this assertion is correct, as Suchanek teaches a carrier with the claimed tortuosity, the carrier of Suchanek would have the same characteristics. Further, selectivity of the carrier is not claimed and therefore immaterial to patentability.
On pages 7-8, Applicant argues that the properties of the starting materials have a significant influence on the pore structure of the carriers obtained. Examiner notes that the claims are drawn to the carrier itself, and not the method of making the carrier. Although claims 17-23 are product by process claims, per MPEP §2113(I), the patentability of a product by process claim is still determined based on the product itself and not the method of making it. Although certain changes in starting materials might change the characteristics of the final carrier, Applicant has not shown that the method of Suchanek would result in a carrier that has parameters outside of the claimed ranges. The information provided in the examples in the instant specification do not show that the described method is the only possible way to obtain the claimed carrier. Suchanek teaches a final carrier with the claimed parameters, and Applicant has not shown that the measured values of Suchanek are somehow incorrect and outside of the claimed range.
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.
Claims 14 and 16-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20160354760 (“Suchanek”).
Regarding claim 14, Suchanek teaches a porous catalyst support (see e.g. paragraph [0002]). The support of Suchanek is greater than 80%, and up to 99% alpha alumina, which overlaps with the claimed range (see e.g. paragraph [0044]). The pore volume of the support is between 0.3 and 1.2 mL/g, almost the entirety of which is within the claimed range (see e.g. paragraph [0044]). Suchanek teaches a tortuosity that is in certain embodiments 3 or less, and down to close to 1, which overlaps significantly with the claimed range (see e.g. paragraph [0056]). Although Suchanek does not specifically describe the effective diffusion parameter, Suchanek does describe that the effective diffusion is a function of tortuosity and porosity (see e.g. paragraph [0037]). Given that the tortuosity and porosity of Suchanek is the same as that in claim 14, it is understood that the effective diffusion would also likely be the same. Although Suchanek does not provide any specific examples meeting all of the limitations of claim 14 simultaneously, given the significant overlap in the ranges for each recited parameter, the porous catalyst carrier of claim 14 is obvious over Suchanek. Examiner notes that Suchanek does not use the recited image analysis techniques to determine the tortuosity or effective diffusion parameter. However, given that both Suchanek and the instant application describe tortuosity in the same way, the specific method by which these parameters are measured would likely not have any significant on the measured results.
Regarding claim 16, Suchanek teaches that the surface area of the porous carrier is 0.3 to 3.0 m2/g, which is almost entirely within the claimed range (see e.g. paragraph [0046]).
Regarding claims 17-23, these claims are each product-by-process claims. As noted in MPEP §2113(I), 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. Here, Suchanek teaches or suggests the porous catalyst carrier of claim 14, and as such, claims 17-23 are likewise obvious even if Suchanek teaches a different method for making the carrier.
Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Suchanek as applied to claim 14 above, and further in view of US 20040225138 (“McAllister”).
Suchanek teaches the porous catalyst carrier of claim 14 as described above. Suchanek does not teach that the density of the carrier inside of a packed tube is greater than 450 g/L. Examiner notes, the density of the packed carrier will depend on the method of packing, as well as the size and shape of the catalyst. McAllister teaches a similar system to that of Suchanek for the catalytic conversion of ethylene to ethylene oxide, which is the same reaction as used with the catalyst of Suchanek (see e.g. paragraph [0018]). McAllister teaches that for the catalytic reaction, the catalytic performance increases with increased density, and should be above 550 kg per cubic cm, or over 550 g/L, which is within the claimed range (see e.g. paragraphs [0003] and [0034]). Accordingly, prior to the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to make a catalyst carrier that would have a density inside of a packed reactor tube of greater than 550 g/L as taught by McAllister in order to improve catalyst performance.
Conclusion
THIS ACTION IS MADE FINAL. 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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/E.S.S./Examiner, Art Unit 1736
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736