DETAILED ACTION
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 Amendment
The amendment filed on 03/23/2026 has been entered. Claims 1, 3, 7-10, 12-14, 16, and 20 are pending in the application.
Applicant’s amendments to the claims have not introduced new matter and are supported in the specification in at least the claims filed 10/24/2025 and Pg. 2 of the instant specification.
Applicant’s amendment filed 03/23/2026 has overcome the previous Claim Objections and 112(b) rejections set forth in the action dated 01/14/2026 and accordingly those are withdrawn.
Response to Arguments
Applicant’s arguments, see Pg. 5-14 filed 03/23/2026 with respect to the previous claim set filed 10/24/2025, have been fully considered however are solely directed to limitations set forth in the previous claim set of 10/24/2025. The claim set filed 03/23/2026 substantially changes the scope of the claims by removing Si and Ti from the list of oxygen-containing acid esters. Accordingly, because the new limitations are introduced in the amendment filed 03/23/2026, which postdates the non-final rejection mailed 01/14/2026, further search and consideration was necessitated.
Upon further search and consideration and as necessitated by the amendment, the 35 U.S.C. 102(a)(1) and 35 USC § 103 rejections over Chen et al. Angew. Chem. Int. Ed. 2011, 50, 11156 –11161; Chen et al. Angew. Chem. Int. Ed. 2011, 50, 11156 –11161, Supporting Information) are withdrawn and a new grounds of rejection is made under 35 U.S.C. 103 as being unpatentable over Shu et al. (CN106145143B English) in view of Tan et al. (CN104445079B English; cited in IDS dated 04/03/2023).
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, 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shu et al. (CN106145143B English) in view of Tan et al. (CN104445079B English; cited in IDS dated 04/03/2023). Note, the translation of Tan et al. (CN104445079B) provided by Applicant only contains an English abstract). All citations below are from the full translation provided by Examiner.
Regarding claim 1, Shu teaches a method for synthesizing a micro-mesoporous composite material comprising a heteroatom that is prepared by reacting a mixture of a heteroatom source with water and a polyhydric alcohol prior to roasting the product (also called calcining) (Abstract; Claim 1; Pg. 9, par. 8). Shu teaches the heteroatom is one or more of a heteroatom acid ester M(alkoxy)4, where M comprises Fe, Co, Cu, Sn, Zr, B, Ge, V, Cr and Mn and the alkoxy comprises 1-6 carbon atoms (Claim 31; Pg. 4, par. 2-3, 8). Shu further teaches the polyhydric alcohol preferably contains 2 to 8 carbon atoms and 2 or 3 hydroxyl groups, where examples of the polyhydric alcohol include glycerol, ethylene glycol, hexylene glycol, and diethylene glycol (Pg. 9, par. 2).
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 2144.05 (I). In the instant case, the ranges taught by Shu (R1 and R2 contain 1-6 carbon atoms; 4 alkoxy groups) overlaps with the claimed ranges (R1 and R2 are C1-C8 alkyls; n is 2 to 8). Therefore, the ranges in Shu renders obvious the claimed ranges.
The claim further requires the calcining atmosphere comprises “a gas A”, where the “the gas A is at least one selected from the group consisting of air, nitrogen, an inert gas, and oxygen,” to which Shu does not explicitly state the atmosphere during the calcining/roasting.
Tan teaches a method of preparing a multi-element porous oxide material that comprises combining a metal-organic solution and a solvent including ethylene glycol to prepare a metal organic framework compound that is then calcined at temperatures from 200 to 900 °C in an air or oxygen atmosphere (Abstract; Claims; Pg. 3, Contents of the Invention).
Advantageously, the porous oxide material prepared by Tan is prepared in an extremely simple fashion and provides a porous oxide material with smaller pores that provides the material a large specific surface area (Pg. 3, Contents of the Invention; Compared with the prior art…).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform the calcination in an air or oxygen atmosphere in the process of Shu in order to perform an extremely simple process that provides a porous oxide material with large specific surface area, as taught by Tan.
Regarding claim 3, Shu in view of Tan teach the method of claim 1 and Shu further teaches the calcination is conducted at 350-650 °C for 2-10 hours (Pg. 9, par. 7). 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 2144.05 (I). In the instant case, the ranges taught by Shu (350-650 °C for 2-10 hours) overlaps with the claimed range (350-900 °C for 1.5-25 hours). Therefore, the ranges in Shu renders obvious the claimed ranges.
Regarding claim 7, Shu in view of Tan teach the method of claim 1 and Shu further teaches the polyhydric alcohol has 2 to 3 hydroxyl groups (Pg. 9, par. 2). 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 2144.05 (I). In the instant case, the ranges taught by Shu (2 to 3 hydroxyl groups) overlaps with the claimed range (no less than two hydroxyl groups). Therefore, the ranges in Shu renders obvious the claimed ranges.
Regarding claim 8, Shu in view of Tan teach the method of claim 1 and Shu further teaches the polyhydric alcohol preferably contains 2 to 8 carbon atoms and 2 or 3 hydroxyl groups, where examples of the polyhydric alcohol include glycerol, ethylene glycol, hexylene glycol, and diethylene glycol (Pg. 9, par. 2).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shu et al. (CN106145143B English) in view of Tan et al. (CN104445079B English; cited in IDS dated 04/03/2023) and further in view of Shan et al. (US20050164870A1; cited in IDS dated 10/23/2025).
Regarding claim 9, Shu in view of Tan teach the method of claim 1 and Shu further teaches the heteroatom source, and polyhydric alcohol are mixed at 0 to 150 °C and stirred for 2 to 30 hours (Pg. 9, par. 2). 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 2144.05 (I). In the instant case, the ranges taught by Shu (0 to 150 °C and stirred for 2 to 30 hours) overlaps with the claimed ranges (80 to 180 °C and stirred for 2 to 10 hours). Therefore, the ranges in Shu renders obvious the claimed ranges.
The claim further requires the reaction is conducted “under stirring in an inert atmosphere” to which Shu and Tan are silent.
Shan teaches a process of preparing mesoporous/microporous inorganic oxides that includes mixing alkoxides such as tetraethyl orthosilicate (“TEOS), aluminum alkoxides (e.g., aluminum isopropoxide), magnesium alkoxides (e.g., magnesium ethoxide), and like compounds with amino compounds and organic glycol solvents such as ethylene glycol (EG), triethylene glycol, tetraethylene glycol, propylene glycol, tripropylene glycol, and tetrapropylene glycol (Abstract; [0010]; [0015]; [0018-[0020]). Shan teaches the reaction is carried out with stirring from about 150 °C to about 250 °C for a period of time of about 10 minutes to 48 hours under an atmosphere of inert gas such as nitrogen or argon ([0014]; [0043]-[0044]). 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 2144.05 (I). In the instant case, the range taught by Shan (about 150 °C to about 250 °C) overlaps with the claimed range (80 °C to 180 °C). Therefore, the range in Shan renders obvious the claimed range.
Advantageously, the method of Shan allows for the preparation of porous inorganic oxide materials with less expensive materials and is more environmentally compatible ([0007]-[0009]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to prepare the porous oxide with stirring under inert atmosphere in the process of Shu in order to use less expensive materials and provide a more environmentally compatible synthesis, as taught by Shan.
Claim 10, 12-13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Schunk et al. (US20050130827A1)
Regarding claim 10, Schunk teaches a method of preparing a ceramic material with at least a bimodal pore distribution, comprising at least micropores and mesopores, where the material is an oxide ([0055]). Schunk teaches the pore sizes the size of the mesopores are from 5 nm to 50 nm and the size of the micropores are from 1 nm to 3 nm and that the material displays a surface area ranging from 235 to 902 m2/g (Abstract; [0055]; [0118]; [0139]). 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 2144.05 (I). In the instant case, the ranges taught by Schunk (pore size from 1 nm to 50 nm; surface area from 235 to 902) overlaps with the claimed ranges (pore size of 0.4 to 80 nm; surface area of 150 to 1500 m2/g). Therefore, the ranges in Schunk renders obvious the claimed ranges.
The claim further requires the porous oxide is prepared according to the method of claim 1.
However, although Schunk does not disclose all of the method steps according to claim 1, it is noted that “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Schunk meets the requirements of the claimed porous oxide product, Schunk meets the requirements of the present claims.
Regarding claims 12-13, Schunk teaches the porous oxide of claim 10 and Schunk teaches the size of the mesopores are from 5 nm to 50 nm and the size of the micropores are from 1 nm to 3 nm (Abstract; [0055]; [0118]; [0139]). 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 2144.05 (I). In the instant case, the ranges taught by Schunk (mesopores are from 5 nm to 50 nm and the size of the micropores are from 1 nm to 3 nm) overlaps with the claimed ranges (micropores from 0.4 to 2.0 nm (Claim 12); mesopore 2.0 to 50 nm (Claim 13)). Therefore, the ranges in Schunk renders obvious the claimed ranges.
Regarding claim 16, Schunk teaches the porous oxide of claim 10 and Schunk further teaches calcination can be performed at a temperature ranging from 500 to 1000 °C for durations ranging from a few hours to a few days, depending on the desired degree of hardening required by the artisan ([0077]-[0078]). 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 2144.05 (I). In the instant case, the ranges taught by Schunk (calcination from 500 to 1000 °C for durations ranging from a few hours to a few days) overlaps with the claimed ranges (roasting from 350 to 900 °C; 1.5 h to 25 h). Therefore, the ranges in Schunk renders obvious the claimed ranges.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Schunk et al. (US20050130827A1) in view of Pan et al. (US20180194700A1).
Regarding claim 14, Shu in view of Tan teach the method of claim 1 and Shu in view of Tan and Wei teach the method of claim 10.
The claim further requires “porous oxide comprises a macropore with a pore size of 50 to 80 nm,” to which Schunk teaches the macropores range from 0.1 to 100 µm (100 nm to 100,000 nm) ([0139]).
Pan teaches a process of obtaining a multicomponent metal oxide composite with hierarchical pores that contains with micropores, mesopores, and macropores, where the macropore has a pore size of greater than 50 nm (Abstract; [0017]-[0020]; [0055]). 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 2144.05 (I). In the instant case, the range taught by Pan (macropore greater than 50 nm) overlaps with the claimed range (macropore pore size of 50 nm to 80 nm). Therefore, the range in Pan renders obvious the claimed range.
Advantageously, the hierarchical porous materials of Pan display good stability and long life, where the hierarchical pore structure further allows for regulation of products for use in catalysis ([0083]-[0085]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a porous material where the macropores are greater than 50 nm in size in the product of Schunk in order to provide a material with good stability and long life with hierarchical pores as taught by Pan.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Schunk et al. (US20050130827A1) in view of Shu et al. (CN106145143B English).
Regarding claim 20, Schunk teaches the porous oxide of claim 10 and the claim further requires the polyol has “no less than two hydroxyl groups,” to which Schunk is silent.
Shu teaches the polyhydric alcohol has 2 to 3 hydroxyl groups (Pg. 9, par. 2). 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 2144.05 (I). In the instant case, the ranges taught by Shu (2 to 3 hydroxyl groups) overlaps with the claimed range (no less than two hydroxyl groups). Therefore, the ranges in Shu renders obvious the claimed ranges.
Advantageously, including a polyol with the hydroxyl groups taught by Shu provides a material with smaller grain size and higher activity (Pg. 4, par. 3).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a polyol with no less than two hydroxyl groups in the product of Schunk in order to provide a material with smaller grain size and higher activity, as taught by Shu.
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 Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.W.T./Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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