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 20-26 and 28-38 of S. Choi et al., US 18/011,857 (Jun. 25, 2021) are pending. Claims 20-25 and 35-38, drawn to non-elected Groups (I), (III) and (IV) are withdrawn as not reading on the elected invention. Claims 26 and 28-34 are under examination on the merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant previously elected Group II (claims 26-34) for examination with traverse, in the reply filed on August 11, 2025. Claims 20-25 and 35-38, drawn to non-elected Groups (I), (III) and (IV) are maintained as withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is maintained as FINAL.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim See MPEP § 2111.
Independent claim 26 recites as follows:
26. A process for producing a tableted alpha-alumina catalyst support, which comprises
i) forming a free-flowing feed mixture comprising, based on inorganic solids content, at least 50 wt.-% of a transition alumina,
having a loose bulk density of at most 600 g/L, a pore volume of at least 0.6 mL/g, and a median pore diameter of at least 15 nm,
wherein the free-flowing feed mixture further comprises a pore-forming material;
ii) tableting the free-flowing feed mixture to obtain a compacted body; and
iii) heat treating the compacted body at a temperature of at least 1100 °C to obtain the tableted alpha-alumina catalyst support
wherein the tableted alpha-alumina catalyst support is characterized by
an alpha-alumina content of at least 85 wt.-%,
a pore volume of at least 0.40 mL/g, as determined by mercury porosimetry, and
a BET surface area of 0.5 to 5.0 m2/g.
The specification’s working Examples teach “Preparation of Tableted Catalyst Supports A, B, C, D and E” and “Preparation of Comparative Extrudate F”, which aids in understanding the claimed process. Specification at pages 34-37. In Examples A-E, the specification teaches that a powder mixture of: (1) transition alumina, (2) alumina hydrate, (3) pore former, and (4) processing aid (compositions A-E shown in Table 2, page 36), was subjected to a tableting machine equipped with a hollow cylinder punch. Specification at page 35, lines 1-15. The obtained tablets were then thermally treated in a muffle furnace (under lean air with 5 vol.-% of oxygen) under a temperature gradient to 1,464 °C, then allowed to cool to room temperature. Specification at page 35, lines 16-21. Table 3 shows the physical properties of the supports A to E. Specification at page 37.
Interpretation of “pore-forming material”
Independent claim 26 recites “pore-forming material”. The specification does provide a definition for this term. The specification discusses “pore-forming material” as follows:
Pore-forming materials may be used to provide additional and/or wider pores in the support. The additional pore volume of wider pores can also advantageously allow for a more efficient impregnation of the support during the production of a catalyst. Preferably, pore-forming materials are essentially completely removed during heat treatment of the compacted bodies. The pore-forming function may be achieved by different mechanisms, such as combustion (i.e., burning) in the presence of oxygen, decomposition, sublimation, or volatilization.
Specification at page 17, lines 30-37 (emphasis added). The specification provides numerous examples of “pore-forming material” that vary over a very wide variety of structural classes, and also states that “pore-forming materials” include “burnout materials”. Specification at page 18, lines 1-18. The use of burnout materials in the conversion of alpha-alumina precursors to alpha alumina by high-temperature treatment is known in the art.
For example, N. Rizkalla et al., US 2007/0037991 (2007) (“Rizkalla”) teaches that temporary binders and burnout materials for producing alpha-alumina by calcination, include:
thermally decomposable organic compounds, polyolefin oxides, oil, e.g. mineral oil, acacia, carbonaceous materials such as coke, carbon powders, graphite, cellulose, substituted celluloses, e.g. methylcellulose, ethylcellulose, and carboxyethylcellulose, cellulose ethers, stearates, such as stearate esters, e.g. methyl or ethyl stearate, waxes, powdered plastics such as polyolefins, particularly polyethylene and polypropylene, polystyrene, polycarbonate, sawdust, starch, and ground nut shell flours, e.g. pecan, cashew, walnut and filbert shells, and combinations thereof, and the like which burn at the firing temperatures employed.
Rizkalla at pages 2-3, [0024] (emphasis added). The above bolded Rizkalla substances are the same substances taught in the instant specification as (per instant claim 26) a “pore-forming material” or lubricants. Specification at page 17, line 21 - page 19, line 35. The specification specifically lists magnesium stearate and graphite as pore formers/lubricants. Specification at page 19, line 35.
In view of the forgoing, the term “pore-forming material” is broadly and reasonably interpreted, consistently with the speciation, as any gas, liquid, or solid (which necessarily occupies a volume) and contained within the claim 26 “free-flowing feed mixture” and that functions such that it is removed (e.g., by decomposition and/or volatilization) upon the claim 26 step of “heat treating the compacted body at a temperature of at least 1100 °C”, thereby forming pores.
Withdrawal Claim Rejections - 35 USC § 102 (AIA )
Rejection of claims 26 and 28-34 under 35 U.S.C. 102(a)(1)/(2) over W. Junicke et al., WO 2006/122948 (2006) (“Junicke”) is withdrawn in view of Applicant’s amendments.
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 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 26 and 28-34 are rejected under 35 U.S.C. 103 as obvious over W. Junicke et al., WO 2006/122948 (2006) (“Junicke”) in further view of UOP VersalTM Alumina (2012) (“UOP Versal”) and/or Sasol Performance Chemicals GmbH (“Sasol”).
An English-language machine translation (by way of Google Translate) is attached as the second half of reference Junicke. Junicke thus consists of 24 total pages (including the English-language portion). This Office action references Junicke page numbers in the following format “xx of 24”.
W. Junicke et al., WO 2006/122948 (2006) (“Junicke”)
Junicke was discussed in detail above. Junicke teaches the use of alpha-aluminum oxide (α-Al2O3) in the form of hollow cylinders or ring tablets as an inert material in exothermic reactions. Junicke at page 17 of 24, lines 5-6.
Junicke teaches that by calcining tableted [Symbol font/0x67]-Al2O3 (a transition alumina) at temperatures above 900 °C, rings made of α-Al2O3can be obtained in which the properties of low-pressure loss due to the ring geometry can be combined with high mechanical strength. Junicke at page 18 of 24, lines 27-34.
Junicke teaches that the inert materials shaped according to the invention can be obtained by tableting a high-surface-area [Symbol font/0x67]-Al2O3 and/or [Symbol font/0x64]-Al2O3 and/or [Symbol font/0x71]-Al2O3 with subsequent calcination at high temperatures and this process converts the aluminum oxide modifications used into α-Al2O3; and the various forms of aluminum oxide can be used pure or in any mixtures with one another. Junicke at page 20 of 24, lines 5-10 (with reference to page 4 of 24, lines 13-17, for the incorrectly machine translated symbols [Symbol font/0x67], [Symbol font/0x64], and [Symbol font/0x71]).
With regard to the claim 26 “pore-forming material”, Junicke teaches that:
[In] addition, conventional tableting aids, such as graphite or magnesium stearate, can be added to the starting material to be tableted. Tableting mixtures containing magnesium stearate in an amount of 0.5 to 7 wt.%, preferably 2 to 5 wt.%, or graphite in an amount of 0.5 to 3 wt.% preferably 1 to 1.5 wt.%, each based on the total mass of the mixture, are typically used. The various tableting aids can be used neat or in any mixture with each other.
Junicke at page 20 of 24, lines 19-25. Junicke’s graphite or magnesium stearate correspond to the claim 26 “pore-forming material”. The specification specifically lists magnesium stearate and graphite as pore formers/lubricants. Specification at page 19, line 35.
Junicke thus teaches the claim 26 limitation of:
Claim 26 . . . wherein the free-flowing feed mixture further comprises a pore-forming material . . .
Junicke further teaches that in the starting material used in tableting, the high-surface [Symbol font/0x67]-Al2O3 and/or [Symbol font/0x64]-Al2O3 and [Symbol font/0x71]-Al2O3 can also be wholly or partially replaced by further aluminum oxide modifications, such as chi-aluminum oxide (x- Al2O3) or compounds of the precursors of these aluminum oxides, such as pseudoboehmite, which also convert to the desired α-Al2O3 after calcination. Junicke at page 20 of 24, lines 11-16.
Junicke teaches that tableting into the hollow cylinders or ring tablets described above is carried out in a known manner using conventional presses and the pressing force is preferably more than 9 kN, particularly preferably between 9 and 11 kN. Junicke at page 20 of 24, lines 26-30.
Junicke teaches working Example B1:
Example B1
A dry mixture of 6 kg [Symbol font/0x67]-Al2O3 (Puralox SCFa230, Sasol), 4 kg pseudo-boehmite (Pural 25 SCF, Sasol), 324 g magnesium stearate, and 100 g graphite was tableted into ring tablets with dimensions of 7 mm x 7 mm x 3 mm (height x outer diameter x diameter of inner hole) and then calcined for one hour at 1300°C. The physical properties of the material are given in Table 1.
Junicke at page 21 of 24, lines 21-29 (emphasis added.
Junicke Table 1 shows that the product of Example B1 is >99% alpha alumina.
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Junicke working Example B1 is substantially similar to the specification working Examples A, B, C, D, and E. Specification at pages 34-36. The primary difference being that the specification working tablet/calcine the transition aluminas Versal VGL-15, Puralox TH 200/70, or Puralox TM 100/150 UF, whereas Junicke working Example B1 tablets/calcines Pural 25 SCF, Sasol as the transition alumina.
Differences between Junicke and the Claims
Junicke differs from claim 26 in that it is not clear whether or not Junicke’s transition alumina [Symbol font/0x67]-Al2O3 (Puralox SCFa230, Sasol, as used in Example B1), meets the claim 26 physical properties as indicted by strikeout text below (that is, the strikeout text is used to indicate that it is not clear whether or not Junicke teaches that respective limitation).
26 . . . i) forming a free-flowing feed mixture comprising, based on inorganic solids content, at least 50 wt.-% of a transition alumina,
A further difference is that Junicke’s tableted calcined alumina product of Example B1 does not meet the claim 26 ‘pore volume’ limitation, as indicted by strikeout text below:
26 . . . wherein the tableted alpha-alumina catalyst support is characterized by
an alpha-alumina content of at least 85 wt.-% ,
a BET surface area of 0.5 to 5.0 m2/g.
This is confirmed by the Declaration of Dr. Sung Yeun Choi, under 37 C.F.R. § 1.132 (February 27, 2026) (the “Choi Declaration”), as discussed below regarding Applicant’s argument.
UOP VersalTM Alumina (2012) (“UOP Versal”)
UOP Versal teaches one of ordinary skill transition alumina Versal VGL-15 was in public use, on sale or otherwise available to the public before the earliest possible instant effective filing date of Jun. 26, 2020.
UOP Versal teaches that Versal gamma aluminas are transition phase aluminas derived directly by calcination of the Versal pseudoboehmite product line. UOP Versal at page 3, col. 1. UOP Versal teaches that due to the unique Versal pseudoboehmite precursor powders, Versal gamma alumina products tend to produce supports and films that have high macropore volume. UOP Versal at page 3, col. 3.
With respect to instant claim 26 limitations physical characteristics of: “free-flowing feed mixture comprising, based on inorganic solids content, at least 50 wt.-% of a transition alumina”:
26 . . . having a loose bulk density of at most 600 g/L,
a pore volume of at least 0.6 mL/g, and
a median pore diameter of at least 15 nm . . .
Applicant’s specification Table 1 teaches that UOP Versal transition alumina Versal VGL-15 (as well as the listed Puralox aluminas) have the claimed physical properties as follows.1
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See instant specification at page 34 (Table 1).
In sum, as can be seen from above Table 1, UOP Versal VGL-15 meets the claim 26 transition alumina physical properties.
26 . . . having a loose bulk density of at most 600 g/L,
a pore volume of at least 0.6 mL/g, and
a median pore diameter of at least 15 nm . . .
Further, UOP Versal VGL-15 was available to one of ordinary skill, before the instant effective filing date, for practice in the method of Junicke. In this regard, in the Reply filed on February 27, 2026, Applicant states that “It is not disputed that different types of alumina materials were commercially available before the priority date of the present application”.
Sasol Performance Chemicals GmbH (“Sasol”)
Sasol’s Puralox transition aluminas were in public use, on sale or otherwise available to the public before the earliest possible instant effective filing date of Jun. 26, 2020.
With respect to instant claim 26 limitations physical characteristics of: “free-flowing feed mixture comprising, based on inorganic solids content, at least 50 wt.-% of a transition alumina”:
26 . . . having a loose bulk density of at most 600 g/L,
a pore volume of at least 0.6 mL/g, and
a median pore diameter of at least 15 nm . . .
Applicant’s priority document (EP 20182584) teaches that certain Sasol Puralox transition alumina products have the claimed physical properties. See footnote 1.
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See, EP 20182584 (2020) (instant priority document) at page 28 (Table 1).
The Above Listed Sasol’s Puralox transition aluminas Are Prior Art
Each of the following five references evidence that Sasol’s Puralox transition aluminas were in public use, on sale or otherwise available to the public before the earliest possible instant effective filing date of Jun. 26, 2020.
1. P. Wolf et al., 9 RCS advances, 27732-27742 (2019) (“Wolf”) (at page 27734, col. 1 stating that “Puralox TM 100/150 UF with an average diameter of 2.5 mm were kindly donated from Sasol Germany GmbH”).
2. C. Larabi et al., 148 Biosource Technology, 255-260 (2013) (“Larabi”) (at page 256, col. 1, identifying the alumina source by stating “[Symbol font/0x67]-Al2O3 (Puralox TM 50/150, Sasol)”.
3. H. Silva et al., 9 Catalysis Science & Technology, 6691-6699 (2019) (“Silva”) (at page 6693, col. 1, identifying the alumina source by stating “15 mg of the catalyst sample was diluted with an inert γ-Al2O3 (100 mg) powder support (Sasol, Puralox TM 100/150)”
4. F. Su, US 2016/0176794 (2016) (“Su”), stating at page 10, col 1, lines 5-11 “The following alumina based oxides have been used as supports: gamma-Al2O3 (Puralox TM 100/150, Puralox TH 100/150, Puralox SCFa-140, Puralox SCCa-5/150), delta/theta-Al2O3 (Puralox TH 100/90), 9.7 wt % TiO/Al2O3 (Puralox TH 100/150 Ti10) were provided by Sasol as powders and used as received”.
5. Puralox Catalox, High-Purity Calcined Alumina’s, Sasol Performance Chemicals (no date) (downloaded on Nov. 20, 2025).
A prima facie case is therefore established that Puralox transition aluminas were in public use, on sale or otherwise available to the public before the earliest possible instant effective filing date of Jun. 26, 2020, and therefore are competent prior art under § 102(a)(1).
In sum, each of Sasol’s transition aluminas: Puralox TH 200/70, Puralox TM 100/150, Puralox TM 100/150 UF, Puralox 200/90, and Puralox TM 100/150 UF, meet the claim 26 transition alumina physical properties.
26 . . . having a loose bulk density of at most 600 g/L,
a pore volume of at least 0.6 mL/g, and
a median pore diameter of at least 15 nm . . .
and were available to one of ordinary skill, before the instant effective filing date, for practice in the method of Junicke.
In this regard, in the Reply filed on February 27, 2026, Applicant states that “It is not disputed that different types of alumina materials were commercially available before the priority date of the present application”.
Obviousness Rationale
One of ordinary skill is motivated to employ UOP’s transition alumina Versal VGL-15 or any of Sasol’s transition aluminas: Puralox TH 200/70, Puralox TM 100/150, Puralox TM 100/150 UF, Puralox 200/90, and Puralox TM 100/150 UF, in the process Junicke and thereby meet the following limitations of claim 26 which further limit the transition alumina physical properties.
26 . . . having a loose bulk density of at most 600 g/L,
a pore volume of at least 0.6 mL/g, and
a median pore diameter of at least 15 nm . . .
One of ordinary skill is so motivated because Sasol and UOP Versal both teach convenient commercial sources of [Symbol font/0x67]-alumina and Junicke teaches that by calcining tableted [Symbol font/0x67]-Al2O3 rings at a temperature of 1300 °C, rings made of α-Al2O3 can be obtained in which the properties of low-pressure loss due to the ring geometry can be combined with high mechanical strength. Junicke at page 18 of 24, lines 30-35. And Junicke further teaches that the various forms of aluminum oxide can be used pure or in any mixtures with one another. Junicke at page 20 of 24, lines 5-10 (with reference to the German language portion at page 4 of 24, lines 13-17, for the symbols [Symbol font/0x67], [Symbol font/0x64], and [Symbol font/0x71]). Junicke thus teaches that any of the transition aluminas (i.e., [Symbol font/0x67], [Symbol font/0x64], and [Symbol font/0x71]-alumina) can be used in his process to form high-mechanical strength α-alumina. Sasol and UOP Versal simply teach convenient commercial sources of these transition aluminas.
One of ordinary skill is particularly motivated to employ Versal VGL-15 because UOP Versal teaches that due to the unique Versal pseudoboehmite precursor powders, Versal gamma alumina products tend to produce supports and films that have high a macropore volume. UOP Versal at page 3, col. 3. UOP Versal further teaches that the Versal pseudoboehmite starting aluminas are supplied as loosely agglomerated, easily dispersed, spray-dried powders (about 50 microns mean diameter) possessing high-purity, high surface area and low bulk density. UOP Versal at page 1, second paragraph. One of ordinary skill would recognize that the Versal VGL-15 prepared from high purity starting materials would itself be of high purity, thereby further motivating one of ordinary skill to employ Versal VGL-15 in the process of Junicke.
Regarding the claim 26 limitations respecting the final calcined alumina product:
Claim 26 . . . wherein the tableted alpha-alumina catalyst support is characterized by
an alpha-alumina content of at least 85 wt.-%,
a pore volume of at least 0.40 mL/g, as determined by mercury porosimetry, and
a BET surface area of 0.5 to 5.0 m2/g.
Junicke working Example B1 calcining transition alumina [Symbol font/0x67]-Al2O3 (Puralox SCFa230, Sasol) provides a tableted alpha-alumina catalyst support having of greater than 99% alpha-alumina content and a BET surface area of 4 m2/g, both of which values fall within the above claimed 26 ranges. However, as already noted, Junicke does not teach the above claim 26 limitation of “a pore volume of at least 0.40 mL/g”.
However, by practice of Junicke with the prior art transition alumunas as proposed above, one of ordinary skill necessarily meets all the claim 26 limitations for the following reasons. Junicke working Example B1 is substantially similar to the specification working Examples A, B, C, D, and E. Specification at pages 34-36.
The specification teaches the following tableting/calcining procedure:
The powder mixture was subjected to a tableting machine equipped with a hollow cylinder punch having an outer diameter of 6.6 mm and an inner diameter of 3.7 mm.
The obtained tablets were thermally treated in a muffle furnace. The furnace temperature was ramped up to 600 °C at a heating rate of 5 °C /min, held at 600 °C for 2 h, then ramped up to 1,464 °C at a heating rate of 2 °C /min and held at 1,464 °C for 4 h.
Subsequently, the active heating was switched off and the furnace cooled down to room temperature (about 23 °C) overnight. Heat treatment was performed under lean air with 5 vol.-% of oxygen.
Specification at page 35, lines 14-21.
The specification working examples differ in that they tablet/calcine the transition aluminas Versal VGL-15, Puralox TH 200/70, or Puralox TM 100/150 UF, whereas Junicke working Example B1 tablets/calcines Pural 25 SCF, Sasol as the transition alumina. Specification at page 34, Table 1. The specification working examples further differ in the nature of the pore forming materials. Specification at page 36, Table 2. However, as discussed above, the specification body specifically lists Junicke’s magnesium stearate and graphite as listed in the specification as alternative pore formers/lubricants. Specification at page 18, line 16; Id at page 19, line 35.
The above obviousness rational proposes the same transition aluminas (i.e., any of Versal VGL-15, Puralox TH 200/70, or Puralox TM 100/150 UF), as per the specification working examples, and the same instantly disclosed pore former/lubricants (i.e., magnesium stearate and graphite).
As such, it is reasonable that practice of the prior art as proposed would produce a tableted alumina product meeting the claim 26 limitations of:
Claim 26 . . . wherein the tableted alpha-alumina catalyst support is characterized by
an alpha-alumina content of at least 85 wt.-%,
a pore volume of at least 0.40 mL/g, as determined by mercury porosimetry, and
a BET surface area of 0.5 to 5.0 m2/g.
A prima facie case of inherency is therefore established subject to Applicant’s rebuttal. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). In sum the proposed practice of the prior art meets each and every limitation of claim 26.
The limitations of claim 28 are met for the following reasons. Base claim 26 recites the open-ended transitional phrase “comprises".2 As the Junicke tableted composition is subject to the calcination, it necessarily must start at ambient temperature and continue to reach the final 1300°C temperature. See specification discussion of drying at page 23, lines 5-31; Id. at page 23, lines 27-28 (“[i]n another embodiment, drying and heat treatment are carried out in the same apparatus”).
The limitations of claim 29 are clearly met by Junicke’s gama-alumina.
The limitations of claims 30 and 31 are met because Junicke’s Example B1 composition comprises 4 kg of the alumina hydrate pseudo-boehmite as part of a total inorganic solids content of 10.42 kg (i.e., 38%), which meets the claim 30 limitation of “in an amount of at most 40 wt.-%”.
The limitations of claim 32 are met because Junicke’s pore-forming material(s) (i.e., graphite or alternatively magnesium stearate) are thermally decomposable and are also know in the art as “burnout materials”. See Claim Interpretation above. Junicke’s magnesium stearate and graphite listed in the specification as alternative pore formers/lubricants. Specification at page 18, line 16; Id at page 19, line 35.
The limitations of claim 33 are met when magnesium stearate is assigned as the “pore-forming material” (see footnote 3). Magnesium stearate is water soluble. P. Pawar et al., 5 Indian Research Journal of Pharmacy and Science (2018) (see page 4 of 9, Table 1 stating that the water solubility of magnesium stearate is 0.004g/100ml (25°C)).
The limitation of claim 34 are met because either of Junicke’s magnesium stearate or graphite can be assigned as the lubricant. The specification specifically lists magnesium stearate as an exemplary lubricant. Specification at page 19, line 28.
Applicant’s Argument
Applicant submits the Declaration of Dr. Sung Yeun Choi, under 37 C.F.R. § 1.132 (February 27, 2026) (the “Choi Declaration”).
Applicant argues that in the Choi Declaration, two different powder mixtures are prepared according to Table P2. Reply at page 6. These powders were then subjected to tableting in a tableting machine. Id. The mixture containing alpha alumina was unsuitable for preparing stable tablets, as they required a high ejection force and did not maintain their shape after ejection. Id. The powder mixture S2 serves as a representative reproduction of Example B1 in Junicke. Applicant states that seen in the results presented in Table P3, tablets made from S2 (i.e., Junicke working Example B1) have pore volumes significantly outside the instantly claim 26 range. Id.
In response, the Choi Declaration does indeed show that the Junicke working Example B1 alumina support has a total pore volume of 0.15 mL/g, which falls outside of the claim 26 range of
Claim 26 . . . a pore volume of at least 0.40 mL/g, as determined by mercury porosimetry . . .
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Choi Declaration at page 4, ¶ 16. Nonetheless, for the reasons discussed in detail above, it is asserted that one of skill practicing Junicke with one of the prior art transition aluminas (e.g., UOP’s transition alumina Versal VGL-15) would inherently arrive at the claimed pore volume. In other words, the claim 26 pore volume range naturally flows from practice of the prior art as proposed. “The fact that appellant 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." MPEP 2145(II) (quoting Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985))
Applicant further argues that the catalyst supports of Junicke are described as suitable for inert materials as fillers in oxychlorination rather than for catalyst supports in ethylene oxide production and such fillers are not necessarily porous, and Junicke appears in fact to be completely silent on the use of the low porosity inert material disclosed therein as a catalyst support. Reply at paragraph bridging pages 6-7.
In response, Junicke teaches that the invention relates to an inert material for use in exothermic reactions, containing α-Al2O3 in the form of hollow cylinders or annular pellets. Junicke at page 17 of 24 (“Summary”). The invention further relates to a method for producing such inert materials and to their use in exothermic gas-phase reactions. Junicke at page 17 of 24 (“Summary”). In this regard, Junicke teaches that
Inert materials are used in exothermic reactions to reduce the formation of so-called hot spots by heat removal. The use of inert materials in exothermic fixed-bed reactions is necessary because, when using an undiluted catalyst at the beginning of the catalyst bed, a large amount of heat is released due to the high reaction rate. The formation of hot spots must be avoided because, on the one hand, they can adversely affect the selectivity of the reaction and, on the other hand, lead to faster deactivation of the catalysts. Towards the end of the reaction, i.e., When a large proportion of the reactants have reacted (at the end of the catalyst bed), a significant amount of heat is no longer released. Therefore, in state-of-the-art fixed -bed processes, a catalyst bed with a graded activity profile is used, with the activity of the catalyst bed increasing in the flow direction. This is usually achieved by providing the catalysts with graded concentrations of active components and, if necessary, with selectivity promoters. In addition, in the reactor sections where the driving force of the reaction is still very high, i.e., usually at the beginning of the bed, the catalyst is diluted with chemically inert materials, such as crushed graphite, tableted or extruded graphite powder.
Junicke at page 17 of 24, lines 8-21 (emphasis added). The implication is clear that Junicke teaches the disclosed α-alumina tablets/pellets are useful to mix with catalysts in gas phase reactions. Applicant’s argument is not persuasive because one of ordinary skill is motivated practice Junicke as proposed above, at least, for the use Junicke teaches.
Applicant further argues that in light of the experimental data [i.e., the Choi Declaration], the specific choice of transition alumina plays a crucial role in obtaining a catalyst support with beneficial pore structure. Rely at page 7. Applicant argues that Junicke does not indicate that suitable transition aluminas exhibit the properties of present claim 26, much less connects beneficial effects with these properties. Applicant concludes that the skilled person following the teachings of Junicke would not arrive at the claimed subject-matter, even when taking into consideration the disclosure of "UOP Versal" and/or "Sasol". Rely at page 7.
This argument is not persuasive for the following reasons. Junicke effectively teaches that the disclosed invention can be practiced with various transition aluminas. Junicke at page 20 of 24, lines 5-10. UOP Versal teaches that due to the unique Versal pseudoboehmite precursor powders, Versal gamma alumina products tend to produce supports and films that have high macropore volume. UOP Versal at page 3, col. 3. This very feature argued by Applicant. UOP Versal further teaches that the Versal pseudoboehmite starting aluminas are supplied as loosely agglomerated, easily dispersed, spray-dried powders (about 50 microns mean diameter) possessing high-purity, high surface area and low bulk density. UOP Versal at page 1, second paragraph.
Here, one of ordinary skill is motivated to practice Junicke with Versal VGL-15 not only as a convenient transition alumina source but also in view of its disclosed advantageous properties, particularly its high purity. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. MPEP § 2144(IV). It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. MPEP § 2144(IV) (citing In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention)).
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 S. Choi et al., US 18/011,540, published as US 2023/0256414 (2023)
Instant claims 26 and 28-34 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claims 15-24 of S. Choi et al., US 18/011,540, published as US 2023/0256414 (2023). The rejection is provisional because the conflicting claims have not been patented. However, it is noted that the instant and conflicting claims have the same patent term filing date.
Conflicting claims 15, 22 and 24 recite:
15. A process for producing a porous alpha-alumina catalyst support, comprising
i) preparing a precursor material comprising, based on inorganic solids content, at least 50 wt.-% of a transition alumina having a loose bulk density of at most 600 g/L, a pore volume of at least 0.6 mL/g and a median pore diameter of at least 15 nm; and at most 30 wt.-% of an alumina hydrate;
ii) forming the precursor material into shaped bodies; and
iii) calcining the shaped bodies to obtain the porous alpha-alumina catalyst support.
22. The process according to claim 15, wherein the precursor material further comprises pore-forming materials, lubricants, organic binders, and/or inorganic binders.
24. The process according to claim 15, wherein calcining is performed at a temperature of at least 1300° C.
The combination of conflicting claims 22 and 24 teach each and every limitation of instant claims 26-30 and 32-34. Conflicting claim 20 teaches the further limitations of instant claim 31. The instant and conflicting claims are therefore patentably indistinct.
Non-Statutory Double Patenting Rejection over C. Walsdorff et al., US 18/573,474, published as US 2024/0293802 (2024)
Instant claims 26-34 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claims 29-37 of C. Walsdorff et al., US 18/573,474, published as US 2024/0293802 (2024). The rejection is provisional because the conflicting claims have not been patented.
Conflicting claims 29 and 30 recite:
29. A process for producing a tableted alpha-alumina catalyst support, which comprises
i) forming a free-flowing feed mixture comprising
i-a) at least one aluminum compound which is thermally convertible to alpha-alumina, the aluminum compound comprising a transition alumina and/or an alumina hydrate; and
i-b) 30 to 120 wt.-%, relative to i-a), of a pore-forming material;
ii) tableting the free-flowing feed mixture to obtain a compacted body; and
iii) heat treating the compacted body at a temperature of at least 1100° C. to obtain the tableted alpha-alumina catalyst support.
30. The process according to claim 29, wherein the at least one aluminum compound i-a) comprises, based on inorganic solids content, a total amount of at least 90 wt.-% of a transition alumina and/or an alumina hydrate, wherein the transition alumina and/or alumina hydrate is comprised of at least 50 wt.-% of a highly voluminous transition alumina and/or alumina hydrate,
the highly voluminous transition alumina and/or alumina hydrate each having a loose bulk density of at most 600 g/L, a pore volume of at least 0.6 mL/g, and a median pore diameter of at least 15 nm.
The combination of conflicting claims 29-31, 34, 36, and 37 teach each and every limitation of instant claims 26-34. The instant and conflicting claims are therefore patentably indistinct.
Applicant’s Argument
Applicant states that it is premature to address these provisional rejections until it is known what, if any, claimed subject matter is in condition for allowance. It is requested that the provisional rejections be held in abeyance until such time.
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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Note that it is appropriate to look to the instant specification for evidence that a claimed feature is inherent in the prior art. The specification itself can provide evidence that a claimed feature is inherent in the prior art. See, MPEP § 2112.02(I) (discussing Ex parte Novitski, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (In Ex parte Novitski the Board rejected a claim directed to a method for protecting a plant from plant pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of P. cepacia. A U.S. patent to Dart disclosed inoculation using P. cepacia type Wisconsin 526 bacteria for protecting the plant from fungal disease. Dart was silent as to nematode inhibition but the Board concluded that nematode inhibition was an inherent property of the bacteria. The Board noted that applicant had stated in the specification that Wisconsin 526 possesses an 18% nematode inhibition rating).
2 The claim 30 and 31 transitional phrase "comprising" is open-ended and does not exclude additional, unrecited elements or method steps. MPEP § 211.03(I).
Prosecution Insights