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 .
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-9 in the reply filed on 10/24/2025 is acknowledged. The traversal is on the grounds that Qin et al. (CN109179478A English) does not teach a polyester polyol because a polyester polyol requires an oxygen-containing acid ester as a raw material (defined in at least Claim 5). This is found persuasive because Qin does not teach an oxygen-containing acid ester as a raw material and rather teaches metal nitrate salts (Pg. 3, Embodiments 1-5).
Therefore, the restriction requirement of 08/26/2025 is withdrawn and claims 1-20 are examined below in their entirety.
Claim Objections
Claims 2, 3, 9, and 15-16 are objected to because of the following informalities:
Regarding claim 2, lines 4-5, the phrase “an air, a nitrogen, an inert gas, and an oxygen” is likely intended to read “air, nitrogen, an inert gas, and oxygen”.
Regarding claim 3, the phrases “350°C” and “900°C” are likely intended to read “350 °C” and “900 °C”.
Regarding claim 9, the phrases “80°C” and “180°C” are likely intended to read “80 °C” and “180 °C”.
Regarding claim 15, lines 4-5, the phrase “an air, a nitrogen, an inert gas, and an oxygen” is likely intended to read “air, nitrogen, an inert gas, and oxygen”.
Regarding claim 16, the phrases “350°C” and “900°C” are likely intended to read “350 °C” and “900 °C”.
Appropriate correction is required.
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 4-9 and 17-20 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “transesterification” in claims 4, 9, and 17 is used by the claim to mean “subjecting a raw material comprising an oxygen-containing acid ester and a polyol to a transesterification reaction,” while the accepted meaning is “an organic reaction in which the R” group of an alcohol is exchanged with an R” group of an ester.” The term is indefinite because the specification does not clearly redefine the term and it is unclear how a reaction lacking an ester functional group can be described as a “transesterification” under the art accepted definition of the term. The prior art byjus.com (2019, Chemistry_Transesterification) provides a depiction of a transesterification according to the art
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accepted meaning below: In the interest of compact prosecution and in view of the instant invention, a “transesterification” in the context of the instant invention is interpreted as a reaction of an oxygen-containing acid ester (described in Claim 18 and on Pg. 3 of the instant specification) with a polyol (described in Claim 8) in the presence of a catalyst at a temperature range from 80 to 180 °C for 3 to 10 h (Pg. 4-5 of the instant specification).
Claims 5-8 all depend from claim 4 and thus are also rendered indefinite.
Claims 18-20 all depend from claim 17 and thus are also rendered indefinite.
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 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. Angew. Chem. Int. Ed. 2011, 50, 11156 –11161).
Regarding claim 1, Chen teaches the preparation of a hierarchically interconnected porous titanosilicate material with three-level micro-meso-macroporous structure (Title; Abstract). Chen teaches the porous material is prepared by mixing titanium isopropoxide and tetramethyl orthosilicate (TMOS) with glycerol (Pg. 11160, Experimental Section).
While Chen does not explicitly describe the reaction mixture as producing “a polyester polyol as a raw material,” the reagents and conditions employed by Chen are identical and overlap those described in the instant invention, as compared in the table below, such that a “transesterification” would occur between the reagents to provide the “polyester polyol as a raw material”. Accordingly, the mixture of Chen is equivalent to preparing the “polyester polyol” required by the claim. See MPEP 2112.II.
Component
Instant Invention
Chen
oxygen-containing acid ester
trimethyl borate, triethyl borate, tripropyl borate, tributyl borate, tri-n-hexyl borate, triisooctyl borate, trioctyl borate, tetramethyl orthosilicate (TMOS), tetraethyl orthosilicate (TEOS), tetrapropyl orthosilicate (TPOS), tetrabutyl orthosilicate (TBOS), ethyl orthogermanate, triethyl phosphate (TEP), tripropyl phosphate (TPP), tributyl phosphate (TBP), tri-n-pentyl phosphate, trihexyl phosphate (THP), aluminum triethoxide, aluminum isopropoxide, aluminum n-butoxide, aluminum tert-butoxide, tetraethyl titanate, tetraisopropyl titanate (TIPT), tetrabutyl titanate, tetrahexyl titanate, tetraisooctyl titanate, tetrabutyl ferrite, tetrabutyl stannate, butyl orthovanadate, gallium ethoxide, tetra-n-propyl zirconate, tetrabutyl zirconate, tert-butyl chromate, ethyl antimonite, butyl antimonite, tungsten ethoxide, and tungsten isopropoxide (Pg. 3, par.2)
titanium isopropoxide and tetramethyl orthosilicate (TMOS)
Polyol
ethylene glycol (EG), diethylene glycol (DEG), triethylene glycol (TEG), tetraethylene glycol, 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, 1,6-hexanediol, polyethylene glycol (PEG)200, PEG400, PEG600, PEG800, 1,4-cyclohexanediol, 1,4-cyclohexanedimethanol (1,4-CHDM), 1,4-benzenedimethanol, glycerol, trimethylolpropane, pentaerythritol, xylitol, and sorbitol (Pg. 3, par. 7).
glycerol
Reaction Catalyst
alcohol-soluble bases (such as NaOH, KOH, NaOCH3, and organic bases (Pg. 4, par. 10-11)
NaOH
Reaction Temperature
80-180 °C (Pg. 4, par. 16-Pg. 5, par. 1).
130 °C
Regarding claim 4, Chen teaches the preparation of a hierarchically interconnected porous titanosilicate material with three-level micro-meso-macroporous structure (Title; Abstract). Chen teaches the porous material is prepared by mixing titanium isopropoxide and tetramethyl orthosilicate (TMOS) with glycerol (Pg. 11160, Experimental Section).
While Chen does not explicitly describe the reaction mixture as producing “a polyester polyol as a raw material,” the reagents and conditions employed by Chen are identical and overlap those described in the instant invention, as compared in the table below, such that a “transesterification” would occur between the reagents to provide the “polyester polyol as a raw material”. Accordingly, the reaction outlined by Chen is equivalent to the “transesterification” and would provide the “polyester polyol” required by the claim. See MPEP 2112.II.
Component
Instant Invention
Chen
oxygen-containing acid ester
trimethyl borate, triethyl borate, tripropyl borate, tributyl borate, tri-n-hexyl borate, triisooctyl borate, trioctyl borate, tetramethyl orthosilicate (TMOS), tetraethyl orthosilicate (TEOS), tetrapropyl orthosilicate (TPOS), tetrabutyl orthosilicate (TBOS), ethyl orthogermanate, triethyl phosphate (TEP), tripropyl phosphate (TPP), tributyl phosphate (TBP), tri-n-pentyl phosphate, trihexyl phosphate (THP), aluminum triethoxide, aluminum isopropoxide, aluminum n-butoxide, aluminum tert-butoxide, tetraethyl titanate, tetraisopropyl titanate (TIPT), tetrabutyl titanate, tetrahexyl titanate, tetraisooctyl titanate, tetrabutyl ferrite, tetrabutyl stannate, butyl orthovanadate, gallium ethoxide, tetra-n-propyl zirconate, tetrabutyl zirconate, tert-butyl chromate, ethyl antimonite, butyl antimonite, tungsten ethoxide, and tungsten isopropoxide (Pg. 3, par.2)
titanium isopropoxide and tetramethyl orthosilicate (TMOS)
Polyol
ethylene glycol (EG), diethylene glycol (DEG), triethylene glycol (TEG), tetraethylene glycol, 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, 1,6-hexanediol, polyethylene glycol (PEG)200, PEG400, PEG600, PEG800, 1,4-cyclohexanediol, 1,4-cyclohexanedimethanol (1,4-CHDM), 1,4-benzenedimethanol, glycerol, trimethylolpropane, pentaerythritol, xylitol, and sorbitol (Pg. 3, par. 7).
glycerol
Reaction Catalyst
alcohol-soluble bases (such as NaOH, KOH, NaOCH3, and organic bases (Pg. 4, par. 10-11)
NaOH
Reaction Temperature
80-180 °C (Pg. 4, par. 16-Pg. 5, par. 1).
130 °C
Regarding claim 5, Chen teaches the preparation method uses titanium isopropoxide and tetramethyl orthosilicate (TMOS) (Pg. 11160, Experimental Section), which have the formula (Ti(iOPr)4) and Si(OMe)4, respectively. The reagent Ti(iOPr)4 has R1 groups of 3 and n =4, while Si(OMe)4 has R1 = 1 and n1 = 4, meeting the limitations required by the claim for M(OR1)n1.
Regarding claim 6, Chen teaches the metal is Si and Ti (Pg. 11160, Experimental Section).
Regarding claim 7, Chen teaches the polyol is glycerol (Pg. 11160, Experimental Section), which has three hydroxyl groups.
Regarding claim 8, Chen teaches the polyol is glycerol (Pg. 11160, Experimental Section)
Claims 10-13 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. Angew. Chem. Int. Ed. 2011, 50, 11156 –11161; Chen et al. Angew. Chem. Int. Ed. 2011, 50, 11156 –11161, Supporting Information). Note, Chen et al. is considered a single publication despite the Article and the Supporting Information being separate documents. Citations below are all for the article and when the Supporting Information is cited, such citations are clearly noted.
Regarding claim 10, Chen teaches the preparation of a hierarchically interconnected porous titanosilicate material with three-level micro-meso-macroporous structure (Title; Abstract). Chen teaches the porous material is prepared by mixing titanium isopropoxide and tetramethyl orthosilicate (TMOS) with glycerol (Pg. 11160, Experimental Section).
While Chen does not explicitly describe the reaction mixture as producing “a polyester polyol as a raw material,” the reagents and conditions employed by Chen are identical and overlap those described in the instant invention, as compared in the table below, such that a “transesterification” would occur between the reagents to provide the “polyester polyol as a raw material”. Accordingly, the mixture of Chen is equivalent to preparing the “polyester polyol” required by the claim. See MPEP 2112.II.
Component
Instant Invention
Chen
oxygen-containing acid ester
trimethyl borate, triethyl borate, tripropyl borate, tributyl borate, tri-n-hexyl borate, triisooctyl borate, trioctyl borate, tetramethyl orthosilicate (TMOS), tetraethyl orthosilicate (TEOS), tetrapropyl orthosilicate (TPOS), tetrabutyl orthosilicate (TBOS), ethyl orthogermanate, triethyl phosphate (TEP), tripropyl phosphate (TPP), tributyl phosphate (TBP), tri-n-pentyl phosphate, trihexyl phosphate (THP), aluminum triethoxide, aluminum isopropoxide, aluminum n-butoxide, aluminum tert-butoxide, tetraethyl titanate, tetraisopropyl titanate (TIPT), tetrabutyl titanate, tetrahexyl titanate, tetraisooctyl titanate, tetrabutyl ferrite, tetrabutyl stannate, butyl orthovanadate, gallium ethoxide, tetra-n-propyl zirconate, tetrabutyl zirconate, tert-butyl chromate, ethyl antimonite, butyl antimonite, tungsten ethoxide, and tungsten isopropoxide (Pg. 3, par.2)
titanium isopropoxide and tetramethyl orthosilicate (TMOS)
Polyol
ethylene glycol (EG), diethylene glycol (DEG), triethylene glycol (TEG), tetraethylene glycol, 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, 1,6-hexanediol, polyethylene glycol (PEG)200, PEG400, PEG600, PEG800, 1,4-cyclohexanediol, 1,4-cyclohexanedimethanol (1,4-CHDM), 1,4-benzenedimethanol, glycerol, trimethylolpropane, pentaerythritol, xylitol, and sorbitol (Pg. 3, par. 7).
glycerol
Reaction Catalyst
alcohol-soluble bases (such as NaOH, KOH, NaOCH3, and organic bases (Pg. 4, par. 10-11)
NaOH
Reaction Temperature
80-180 °C (Pg. 4, par. 16-Pg. 5, par. 1).
130 °C
Regarding claim 11, Chen anticipates the porous oxide of claim 10.
Chen further teaches the prepared materials display surface areas of 260 m2/g and 580 m2/g and that they contain micropores, mesopores, and macropores, where the mesopores are 4.8 nm (Pg. 11158, right col.; Table 1; Pg. 11160, left col.; Supporting Information, Pg. 3, Fig. S3).
Regarding claims 12 and 13, Chen anticipates the porous oxide of claim 10.
Chen further teaches the preparation of a hierarchically interconnected porous titanosilicate material with three-level micro-meso-macroporous structure (Title; Abstract). Chen teaches the micropores of a sample are about 0.54 nm while the mesopores are about 4.8 nm (Pg. 11158, right col.; Table 1; Pg. 11160, left col.; Supporting Information, Pg. 3, Fig. S3).
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Figure 1. Reproduced Figure S3 from Chen et al. (Supporting Information) displaying the micropore and mesopore size.
Regarding claim 17, Chen anticipates the porous oxide of claim 10.
Chen further teaches the preparation of a hierarchically interconnected porous titanosilicate material with three-level micro-meso-macroporous structure (Title; Abstract). Chen teaches the porous material is prepared by mixing titanium isopropoxide and tetramethyl orthosilicate (TMOS) with glycerol (Pg. 11160, Experimental Section).
While Chen does not explicitly describe the reaction mixture as producing “a polyester polyol as a raw material,” the reagents and conditions employed by Chen are identical and overlap those described in the instant invention, as compared in the table below, such that a “transesterification” would occur between the reagents to provide the “polyester polyol as a raw material”. Accordingly, the reaction outlined by Chen is equivalent to the “transesterification” and would provide the “polyester polyol” required by the claim. See MPEP 2112.II.
Component
Instant Invention
Chen
oxygen-containing acid ester
trimethyl borate, triethyl borate, tripropyl borate, tributyl borate, tri-n-hexyl borate, triisooctyl borate, trioctyl borate, tetramethyl orthosilicate (TMOS), tetraethyl orthosilicate (TEOS), tetrapropyl orthosilicate (TPOS), tetrabutyl orthosilicate (TBOS), ethyl orthogermanate, triethyl phosphate (TEP), tripropyl phosphate (TPP), tributyl phosphate (TBP), tri-n-pentyl phosphate, trihexyl phosphate (THP), aluminum triethoxide, aluminum isopropoxide, aluminum n-butoxide, aluminum tert-butoxide, tetraethyl titanate, tetraisopropyl titanate (TIPT), tetrabutyl titanate, tetrahexyl titanate, tetraisooctyl titanate, tetrabutyl ferrite, tetrabutyl stannate, butyl orthovanadate, gallium ethoxide, tetra-n-propyl zirconate, tetrabutyl zirconate, tert-butyl chromate, ethyl antimonite, butyl antimonite, tungsten ethoxide, and tungsten isopropoxide (Pg. 3, par.2)
titanium isopropoxide and tetramethyl orthosilicate (TMOS)
Polyol
ethylene glycol (EG), diethylene glycol (DEG), triethylene glycol (TEG), tetraethylene glycol, 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, 1,6-hexanediol, polyethylene glycol (PEG)200, PEG400, PEG600, PEG800, 1,4-cyclohexanediol, 1,4-cyclohexanedimethanol (1,4-CHDM), 1,4-benzenedimethanol, glycerol, trimethylolpropane, pentaerythritol, xylitol, and sorbitol (Pg. 3, par. 7).
glycerol
Reaction Catalyst
alcohol-soluble bases (such as NaOH, KOH, NaOCH3, and organic bases (Pg. 4, par. 10-11)
NaOH
Reaction Temperature
80-180 °C (Pg. 4, par. 16-Pg. 5, par. 1).
130 °C
Furthermore, despite Chen teaching the process step claimed, 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.
Regarding claim 18, Chen anticipates the porous oxide of claim 10 and 17.
Chen further teaches the preparation method uses titanium isopropoxide and tetramethyl orthosilicate (TMOS) (Pg. 11160, Experimental Section), which have the formula (Ti(iOPr)4) and Si(OMe)4, respectively. The reagent Ti(iOPr)4 has R1 groups of 3 and n =4, while Si(OMe)4 has R1 = 1 and n1 = 4, meeting the limitations required by the claim for M(OR1)n1.
Regarding claim 19, Chen anticipates the porous oxide of claim 10 and 18.
Chen further teaches the metal is Si and Ti (Pg. 11160, Experimental Section).
Regarding claim 20, Chen anticipates the porous oxide of claim 10 and 17.
Chen further teaches the polyol is glycerol (Pg. 11160, Experimental Section), which has three hydroxyl groups.
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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. Angew. Chem. Int. Ed. 2011, 50, 11156 –11161) in view of Pan et al. (US20180194700A1).
Regarding claim 2, Chen anticipates the method of claim 1 and Chen further teaches the material is calcined (i.e. roasted) at 550 °C for 4 h (Pg. 11160, Experimental Section).
The claim further requires performing the roasting “in an atmosphere comprising gas A…wherein gas A is at least one selected from the group consisting of air, nitrogen, an inert gas, and oxygen” to which Chen does not disclose the gas atmosphere of the calcination.
Pan teaches a process of obtaining a catalyst with micropores, mesopores, and macropores that is calcined in an atmosphere of flowing or standing air (Abstract; [0017]-[0020]; [0055]).
Advantageously, performing the calcination of Pan provides materials with good stability, long life, and a hierarchical pore structure that 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 calcine the material in an air atmosphere in the process of Chen in order to provide a material with good stability and long life with hierarchical pores as taught by Pan.
Regarding claim 3, Chen anticipates the method of claim 1 and Chen in view of Pan teach the method of claim 2.
Chen further teaches the calcination is performed at 550 °C for 4 h (Pg. 11160, Experimental Section). 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 Chen (550 °C for 4 h) overlaps with the claimed range (350 to 900 °C for 1.5 to 25 h). Therefore, the range in Chen renders obvious the claimed range.
Claim 9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. Angew. Chem. Int. Ed. 2011, 50, 11156 –11161) in view of Shan et al. (US20050164870A1; cited in IDS dated 10/23/2025).
Regarding claim 9, Chen anticipates the method of claim 1 and 4 and Chen further teaches the reaction is performed for 3 h (Pg. 11160, Experimental Section). 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 Chen (3 h) overlaps with the claimed range (2 h to 10 h). Therefore, the range in Chen renders obvious the claimed range.
The claim further requires the “transesterification” is conducted “under stirring in an inert atmosphere” to which Chen is 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.
As noted above in the 112(B) section, the “transesterification” reaction described in the instant invention is interpreted as being the reaction of “an oxygen-containing acid ester and a polyol” under temperature and catalyst conditions described in Pg. 3-5 of the instant specification. Accordingly, the reaction described by Shan, including overlapping reagents and reaction conditions to that of the instant invention, is consistent with a “transesterification” and meets the limitation required by the claim.
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 Chen in order to use less expensive materials and provide a more environmentally compatible synthesis, as taught by Shan.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable 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) in view of Pan et al. (US20180194700A1). Note, Chen et al. is considered a single publication despite the Article and the Supporting Information being separate documents. Citations below are all for the article and when the Supporting Information are cited such citations are clearly noted.
Regarding claim 14, Chen anticipates the porous oxide of claim 10 and Chen further teaches the material has a macropore with a size of around 1 µm (Pg. 11157, right col.).
The claim further requires the macropore has a “pore size of 50 nm to 80 nm” to which Chen is silent.
Pan teaches a process of obtaining a catalyst 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 Chen in order to provide a material with good stability and long life with hierarchical pores as taught by Pan.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable 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). Note, Chen et al. is considered a single publication despite the Article and the Supporting Information being separate documents. Citations below are all for the article and when the Supporting Information are cited such citations are clearly noted.
Regarding claim 15, Chen anticipates the porous oxide of claim 10 and Chen further teaches the material is calcined (i.e. roasted) (Pg 11160, right col.).
The claim further requires the roasting is conducting in “an atmosphere comprising a gas A”…wherein the gas A is at least one selected from the group consisting of an air, a nitrogen, an inert gas, and an oxygen,” to which Chen is silent.
However, although Chen does not disclose the calcination (i.e. roasting) atmosphere, 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 Chen meets the requirements of the claimed porous oxide, Chen meets the requirements of the present claims.
Regarding claim 16, Chen anticipates the porous oxide of claim 10 and Chen teaches the method of claim 15.
Chen further teaches the material is calcined (i.e. roasted) at 550 °C for 4 h (Pg. 11160, right col.). 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 Chen (550 °C for 4 h) overlaps with the claimed range (350 °C to 900 °C for 1.5 h to 25 h). Therefore, the range in Chen renders obvious the claimed range.
Despite Chen teaching the process step claimed, it is further 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Schunk et al. (US20050130827A1); Schunk teaches the preparation of monolithic ceramic materials with micropores, mesopores, and macropores (Abstract; Claim 1).
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/JORDAN W TAYLOR/Examiner, Art Unit 1738