DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 3-7, 10-11, 13, 18, 20, 23, 29, 31, 33-34, 36, 38, and 40 have been amended. Claims 8-9, 12, 14-17, 19, 21-22, 24-28, 30, 32, 35, 37, and 39 are canceled. Claims 1-7, 10-11, 13, 18, 20, 23, 29, 31, 33-34, 36, 38, and 40 are pending in the instant application.
Priority
This application is a U.S. national stage entry under 35 U.S.C. §371 of International Application No. PCT/GB2021/052827 filed November 1, 2021, which claims priority benefit to United Kingdom Patent Application No. 2017254.0 filed October 30, 2020.
Information Disclosure Statements
Applicants’ Information Disclosure Statements, filed on 04/26/2023, 05/16/2023, and 04/04/2025 have been considered. Please refer to Applicant’s copies of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election with traverse of Group I (i.e., claims 1-31) in the reply filed by Applicant’s representative Jason A. Smith on 11/17/2025 is acknowledged. Applicant traversed the restriction requirement on the ground that unity a priori and unity a posteriori exists and all asserted Groups should be concurrently examined. Applicant’s argument has been fully considered, but is not persuasive because the pending claims lack unity to invention over the prior art cited in the art rejection in this Office action. Therefore, the lack unity of invention restriction requirement is maintained, and made Final.
Status of the Claims
Claims 33-34, 36, 38, and 40 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) due to the restriction requirement. Claims 1-7, 10-11, 13, 18, 20, 23, 29, and 31 are under examination on the merits.
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 1-7, 10-11, 13, 18, 20, 23, 29, and 31 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 pre-AIA the applicant regards as the invention.
Specifically, claim 1 defines the support for a catalyst has a substantially spherical or ellipsoidal macrostructure and comprises surface structures, and the support has a porosity of > 0.35 cm3/g. However, the term “substantially spherical or ellipsoidal macrostructure” is not defined in the claim nor described in Applicant’s specification. Because said term is not clearly defined, the resulting “surface structures” cannot be clearly defined.
In addition, the meaning of the term “porosity” in the phrase “porosity of > 0.35 cm3/g” is not clear. By definition of Merriam-Webster dictionary, porosity is the ratio of the volume of interstices of a material to the volume of its mass. However, the porosity of claim 1 is defined as larger than 0.35 cm3/g, which is not a ratio of the volume of interstices of a material to the volume of its mass. Therefore, claim 1 is indefinite. Claims 2-7, 10-11, 13, 18, 20, 23, 29, and 31 depending on claim 1 are rejected, accordingly.
Applicant’s specification [46] defines porosity (in cm3/g) as may also be termed 'total intruded volume', was measured by mercury intrusion porosimetry, using ASTM D4284- 12(2017)e1, Standard Test Method for Determining Pore Volume Distribution of Catalysts and Catalyst Carriers by Mercury Intrusion Porosimetry. It seems that the term “porosity of > 0.35 cm3/g” can be interpreted as a total porous volume per gm of the support measured by mercury intrusion porosimetry, using ASTM D4284- 12(2017)e1. To overcome the rejection, the term “porosity” is suggested to be amended to “total intruded volume > 0.35 cm3/g, measured by mercury intrusion porosimetry using ASTM D4284- 12(2017)e1”.
Claim 10 is 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 pre-AIA the applicant regards as the invention. Specifically, claim 10 uses the term “such as” for defining the claimed support/supported catalyst having a diameter or largest dimension of >8mm. However, the term renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 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.
Claims 1-7, 10-11, 13, 18, 20, 23, 29, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2020/053563 (“the `563 publication”) to Stuckey et al., published on March 3, 2020.
Applicant’s claim 1 is drawn to a support for a catalyst, wherein the support comprises ceramic material, and wherein the support has a substantially spherical or ellipsoidal macrostructure and comprises surface structures, and wherein the support has a porosity of > 0.35 cm3/g (i.e., total intruded volume > 0.35 cm3/g, measured by mercury intrusion porosimetry using ASTM D4284- 12(2017)e1).
The `563 publication [07] discloses a support for use as a catalyst support in a packed bed reactor, wherein the packing member comprises ceramic material and wherein the packing member has a geometric surface area per volume of >0.7cm2/cm3 and a side crush strength of >250kgf; or a geometric surface area per volume of >1.5 cm2/cm3 and a side crush strength of >150kgf; or a geometric surface area per volume of >3 cm2/cm3 and a side crush strength of >60kgf, and wherein the packing member optionally has a porosity of at least 6%, such as at least 15% or at least 20%. The `563 publication [08] discloses the catalyst support is a ceramic catalyst support. The `563 publication [102] discloses that the support 402 of Figures 2(a)
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and 2(b)
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has a spherical macrostructure with four equally spaced parallel bores 404 extending between opposite sides of the support. In addition, the `563 publication [112-116] discloses the support was prepared by mixing Alumina powder 475g, pore former 60g, dispersant 12.25g, polymerizable monomer 16.3g, and crosslinking member 8.2g, catalyst 3ml,
initiator 8ml, and water 135g to form a slurry. The resulting aqueous slurry was then cast into the mound. Once the slurry had gelled into a solid green body after 4-5 mins it was then demolded. At this point the green body support had a rubbery, jelly-like consistency. The green body was then left to dry at room temperature for 24 hours. The dried green body was then fired to 1450°C, at which point the binder and pore formers were burnt off to leave a solid, porous, supported catalyst.
The `563 publication does not teach the support has a porosity of > 0.35 cm3/g. Because the claimed limitation “the support has a porosity of > 0.35 cm3/g” is indefinite, the exact scope of the limitation of Applicant’s claims are not clear. On the other hand, the `563 publication (claim 1) teaches the packing member has a porosity of at least 6%, such as at least 15% or at least 20%. However, both the `563 publication [112-116] and present specification [85] teaches significantly similar process of preparing the catalyst support by calcining the mixed slurry to higher than 1400 °C. The claimed subject matter is considered not novel to the skilled in the art over the disclosure by the `563 publication. Therefore, the `563 publication anticipates claims 1-3, 18, and 20.
In terms of claims 4-7, see Figures 2(a) and 2(b) of the `563 publication.
In terms of claim 10, see paragraph [30] of the `563 publication.
In terms of claim 11, see claims 4-6 of the `563 publication.
In terms of claim 13, see claims 1 and 4-6 of the `563 publication.
In terms of claim 23, see claim 19 of the `563 publication.
In terms of claim 29, see claim 30 of the `563 publication.
In terms of claim 31, wherein the support/supported catalyst is for use in a packed-bed reactor for the production of ethylene oxide, 1,9-decadiene oxide, 1,3-butadiene oxide, 2-butene oxide, isobutylene oxide, 1-butene oxide or propylene oxide, the intend-to-use phrase “for use in a packed-bed reactor for the production of ethylene oxide, 1,9-decadiene oxide, 1,3-butadiene oxide, 2-butene oxide, isobutylene oxide, 1-butene oxide or propylene oxide” is simply a statement of intend-to-use or purpose of the invention, not a separate claim limitation. [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017). The statement of intend-to-use or purpose of the invention is considered as inherited property of the pharmaceutical composition because a product is inseparable from its property. Recitation of an intended to use or utility in the preamble which can otherwise stand alone is not considered a further limitation of the claim and therefore cannot impart patentability to a known composition of matter. See, in re Spada, 15 USPQ.2d 1655 (Fed. Cir. 1990). Therefore, the `563 publication also anticipates claim 31.
Alternatively, claims are also rejected under 35 U.S.C. 103.
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 of this title, 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 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.
Claims 1-7, 10-11, 13, 18, 20, 23, 29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over the `563 publication in view of
Determination of the scope and content of the prior art (MPEP §2141.01)
The `563 publication [07] discloses a support for use as a catalyst support in a packed bed reactor, wherein the packing member comprises ceramic material and wherein the packing member has a geometric surface area per volume of >0.7cm2/cm3 and a side crush strength of >250kgf; or a geometric surface area per volume of >1.5 cm2/cm3 and a side crush strength of >150kgf; or a geometric surface area per volume of >3 cm2/cm3 and a side crush strength of >60kgf, and wherein the packing member optionally has a porosity of at least 6%, such as at least 15% or at least 20%. The `563 publication [08] discloses the catalyst support is a ceramic catalyst support. The `563 publication [102] discloses that the support 402 of Figures 2(a) and (b) has a spherical macrostructure with four equally spaced parallel bores 404 extending between opposite sides of the support. In addition, the `563 publication [112-116] discloses the support was prepared by mixing Alumina powder 475g, pore former 60g,
dispersant 12.25g, polymerizable monomer 16.3g, and crosslinking member 8.2g, catalyst 3ml,
initiator 8ml, and water 135g to form a slurry. The resulting aqueous slurry was then cast into the mound. Once the slurry had gelled into a solid green body after 4-5 mins it was then demolded. At this point the green body support had a rubbery, jelly-like consistency. The green body was then left to dry at room temperature for 24 hours. The dried green body was then fired to 1450°C, at which point the binder and pore formers were burnt off to leave a solid, porous, supported catalyst.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and the `563 publication is that the prior art does not teach the support has a porosity of > 0.35 cm3/g.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, the instant claims would have been obvious over the `563 publication because the claimed limitation “the support has a porosity of > 0.35 cm3/g” is indefinite, the exact scope of the limitation of Applicant’s claims are not clear. On the other hand, the `563 publication (claim 1) teaches the packing member has a porosity of at least 6%, such as at least 15% or at least 20%. However, both the `563 publication [112-116] and present specification [85] teaches significantly similar process of preparing the catalyst support by calcining the mixed slurry to higher than 1400 °C. The claimed subject matter is considered to be obvious for the skilled in the art over the disclosure by the `563 publication. Therefore, the `563 publication would have rendered claims 1-3, 18, and 20 obvious.
In terms of claims 4-7, see Figures 2(a) and 2(b) of the `563 publication.
In terms of claim 10, see paragraph [30] of the `563 publication.
In terms of claim 11, see claims 4-6 of the `563 publication.
In terms of claim 13, see claims 1 and 4-6 of the `563 publication.
In terms of claim 23, see claim 19 of the `563 publication.
In terms of claim 29, see claim 30 of the `563 publication.
In terms of claim 31, wherein the support/supported catalyst is for use in a packed-bed reactor for the production of ethylene oxide, 1,9-decadiene oxide, 1,3-butadiene oxide, 2-butene oxide, isobutylene oxide, 1-butene oxide or propylene oxide, the intend-to-use phrase “for use in a packed-bed reactor for the production of ethylene oxide, 1,9-decadiene oxide, 1,3-butadiene oxide, 2-butene oxide, isobutylene oxide, 1-butene oxide or propylene oxide” is simply a statement of intend-to-use or purpose of the invention, not a separate claim limitation. [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017). The statement of intend-to-use or purpose of the invention is considered as inherited property of the pharmaceutical composition because a product is inseparable from its property. Recitation of an intended to use or utility in the preamble which can otherwise stand alone is not considered a further limitation of the claim and therefore cannot impart patentability to a known composition of matter. See, in re Spada, 15 USPQ.2d 1655 (Fed. Cir. 1990). Therefore, the `563 publication would have also rendered claim 31 obvious.
Conclusions
Claims 1-7, 10-11, 13, 18, 20, 23, 29, and 31 are rejected.
Claims 33-34, 36, 38, and 40 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731