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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 24-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The limitation “the layer has a thickness between 10 pm and 150 pm” cannot physically exist because a single palladium atom is about 280 pm in diameter and a monolayer of Pd atoms about 250-300 pm thick. Therefore, even a single atomic layer exceeds the upper limit of 150 pm. No artisan could make such thickness. Thus, the specification does not actually enable what it says.
Claims 24-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The Inventors did not possess a 10-150 pm layer, because such a structure cannot exist. A disclose of an impossible parameter is not adequate written description.
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 24-30 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.
The limitations “the layer has a thickness between 10 pm and 150 pm” in claims 24-30 renders that claim indefinite because a physically impossible structural limitation does not “inform with reasonable certainty” the scope of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The 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, 4-6, 11, 13, 14, 17, 18 and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Radivojevic et al. (US 10,596,556 B2) in view of Pinkos et al. (US 2019/0210010 A1), Bubreuil et al. (WO 2018/114399 A1) and Niu et al. “Palladium deposits spontaneously grown on nickel foam for electrocatalyzing methanol oxidation: Effect of precursors” Journal of Power Sources, 306 (2016), pages 361-368
Radivojevic discloses a hydrogenation catalyst comprising a metallic foam (nickel foam) support with a geometric surface area of between 1000 and 6000 m2 /m3, a pore diameter of 0.45 mm (450 µm), and a porosity in the range of from .5 to .95 (50-95%). The catalyst comprises an active phase consisting of at least one metal such as Pd and Ag (group IB) having a layer thickness of 15 µm. Metals deposited on support by immersing. Radivojevic teaches that the catalyst can be used in a wide range of hydrogenation processes. Radivojevic further teaches that the catalyst can be used for all Raney-type hydrogenation reaction. (See column 5, lines 26-34; col. 7, lines 30-50; col. 9; lines 44-63; example 2, claims 1-3, 11 ).
Radivojevic does not explicitly teach that the catalyst is used in a hydrogenation of a polyunsaturated compound, does not disclose the amount of Pd and Ag as claimed, and does not teach steps of making a catalyst as claimed.
Pinkos teaches that it is well known that a Raney catalyst can be used for hydrogenation of mono- or polyunsaturated organic compounds. (See [0009]).
Bubreuil discloses a process for the selective hydrogenation of polyunsaturated compounds containing at least 2 carbon atoms per molecule contained in a hydrocarbon feedstock having a final boiling point of less than or equal to 300°C. The process is carried out at a temperature of between 0 and 300°C, at a pressure of between 0.1 and 10 MPa, at a hydrogen/(polyunsaturated compounds to be hydrogenated) molar ratio of between 0.1 and 10 and at an hourly volumetric flow rate of between 0.1 and 200 h-1 when the process is carried out in the liquid phase, or at a hydrogen/(polyunsaturated compounds to be hydrogenated) molar ratio of between 0.5 and 1000 and at an hourly volumetric flow rate of between 100 and 40,000 h-1 when the process is carried out in the gas phase, in the presence of a catalyst comprising an .05-10 wt. % active phase based on at least one additional metal from group VIII, (e.g., palladium) and Group IB (e.g., Ag) and alumina supporter. Metal is impregnated or immersed into the supporter in a solution containing a precursor and then dry at 120o C. (See abstract; page 10, line 33; claims 1-17). The feedstock is also selected from a C2 steam cracking cut or a C2-C3 steam cracking cut, and the molar ratio (hydrogen)/(polyunsaturated compounds to be hydrogenated) is between 0.5 and 1000, the temperature is between 0 and 300°C, the hourly volumetric velocity is between 100 and 40000 h-1, and the pressure is between 0.1 and 6.0 MPa (see claim 17).
Nui teaches a method of making a catalyst wherein palladium is deposited on a support by immersion of the support in a solution containing precursor salt(s) of palladium to produce an impregnated foam.
Nui does not teach the drying step is at a temperature of from 50-250o C.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Radivojevic by making the catalyst as suggested by Nui because such process is known to be effective.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Nui by drying the catalyst at a temperature of from 50-250o C because it is within the level of one of skill in the art to dry the catalyst at any effective temperature including the claimed temperature to reduce moisture from the catalyst.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified process of Radivojevic by utilizing the catalyst for a hydrogenation of polyunsaturated compounds as suggested by Pinkos because Radivojevic teaches that the catalyst can be used for all Raney-type hydrogenation reactions whereas Pinkos teaches that it is well known that a Raney catalyst can be used for hydrogenation of mono- or polyunsaturated organic compounds. (See Pinkos: [0009])
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Radivojevic by utilizing the amount of Pd and Ag as claimed because Bubreuil teaches that the amount of active phase in the catalyst is from .05-10 wt. %.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 1 above, and further in view of either Tsuzuki et al. (US 2018/0134550 A1) or Borsotti et al. (US 2017/0362537 A1).
The process of Radivojevic is as discussed above.
Radivojevic does not teach that the catalyst comprise a ceramic support.
Both Tsuzuki and Borsotti teach a hydrogenation catalyst comprising a ceramic support (e.g., alumina). See Borsotti: [0013], [0029], claim 7; Tsuzuki: abstract; [0074].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process Bubreuil by utilizing a ceramic support as suggested by either Tsuzuki or Borsotti because such supporter is known to be effective.
Response to Arguments
The argument that Radivojevic does not teach a process of making a catalyst as claimed is not persuasive because of the new reference above.
The argument that Pinkos does not suggest a catalyst as claimed is not persuasive because the examiner relied upon Pinkos to teach that it is well known that a Raney catalyst can be used for hydrogenation of mono- or polyunsaturated organic compounds.
The argument that Bubreuil does not suggest a catalyst in which the active phase consists of palladium and possibly a group Ib metal is not persuasive because Bubreuil teaches that the mount amount of Pd and Ag as claimed is known in the art.
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 TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached on 571-273-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM M NGUYEN/Primary Examiner, Art Unit 1771