DETAILED ACTION
Claim(s) 1-10 was/were rejected in Office Action mailed on 03/24/2026.
Applicant filed a response, amended claim(s) 1-3, 8-9, and canceled claim(s) 5-6 on 04/27/2026.
Claim(s) 1-4, 7-14, 16, 18-20 and 41-42 are pending, and claim(s) 11-14, 16, 18-20 and 41-42 are withdrawn.
Claim(s) 1-4, and 7-10 are rejected.
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 § 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.
Claim(s) 1, 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Frank et al., WO 2016/198379 A1 (Frank) (provided in IDS received on 08/18/2025) in view of Nebesh et al., US 5,124,295A (Nebesh) and further in view of Guan et al., CN 102476056B (Guan).
The examiner has provided a machine translation of Guan et al., CN 102476056B. The citation of the prior art set forth below refers to the machine translation.
Regarding claims 1 and 9, Frank teaches a copper containing hydrogenation catalyst for e.g., producing methyl phenyl carbinol (i.e., an alcohol) (Frank, page 2, 1st paragraph);
prepared by a process comprising mixing a copper salt containing solution with a silicate salt containing composition resulting in a precipitated solid, subjecting the precipitated solid to a temperature in the range of from 150 to 500 °C (Frank, page 3, 1st-2nd paragraphs);
the copper salt is preferably copper nitrate (Frank, page 4, 2nd paragraph);
the silicate salt of the silicate containing composition is preferably a calcium silicate salt (Frank, paragraph spanning pages 4-5; page 5, 3rd paragraph);
the precipitation is preferably carried out in the presence of a base; this may be achieved by adding a base to the mixture of the copper salt containing solution and the silicate salt containing composition; preferably sodium carbonate is used (Frank, paragraph spanning pages 6-7).
Given that Frank teaches an essentially identical process, using essentially identical reagents, as set forth above, with those of the presently claimed (specification, [0055]), therefore, the copper containing hydrogenation catalyst would necessarily comprise copper oxide, calcium oxide, silicon dioxide and sodium oxide, and the hydrogenolysis/hydrogenation catalyst exhibits a crystallite phase of CuO.
Frank further teaches the solid catalyst obtained may be grinded (i.e., the solid catalyst is a powder) (Frank, page 8, 1st paragraph).
Given that Frank does not require reagents comprising chromium during the preparation of the copper containing hydrogenation catalyst, therefore, the copper containing hydrogenation catalyst would necessarily read upon substantially free of chromium.
Frank does not explicitly disclose the hydrogenolysis/hydrogenation catalyst exhibits an additional crystallite phase selected from the group consisting of cubic SiO2, rhombohedral calcium carbonate CaCO3, anorthic calcium silicate CaSiO3, calcium silicate hydroxide hydrate (Ca14Si24O58(OH)8·2H2O), calcium silicate hydrate 4CaO·5SiO2·5H2O, alumina, and combinations of two or more thereof.
With respect to the difference, Nebesh teaches hydrogenation catalyst comprising copper (Nebesh, column 1, 2nd paragraph). Nebesh specifically teaches the use of calcium silicate (Microcel E) as support materials (Nebesh, column 3, 3rd paragraph).
Nebesh is analogous art as Nebesh is drawn to hydrogenation catalyst comprising copper.
In light of the disclosure of Nebesh of using Microcel E, a specific source of calcium silicate for preparation of hydrogenation catalyst comprising copper, it therefore would have been obvious to a person of ordinary skill in the art to use Microcel E, as the calcium silicate in Frank, and yield expected results.
Given that Frank teaches an essentially identical process, using essentially identical reagents, as set forth above, including the use of Microcel E as the calcium silicate, with those of the presently claimed (specification, [0055]), therefore, the copper containing hydrogenation catalyst would necessarily exhibit an additional crystallite phase selected from the group consisting of cubic SiO2, rhombohedral calcium carbonate CaCO3, anorthic calcium silicate CaSiO3, calcium silicate hydroxide hydrate (Ca14Si24O58(OH)8·2H2O), calcium silicate hydrate 4CaO·5SiO2·5H2O, alumina, and combinations of two or more thereof; and the copper containing hydrogenation catalyst would necessarily exhibit a crystallite phrase of CuO and an additional crystallite phase selected from the group consisting of cubic SiO2, rhombohedral calcium carbonate CaCO3, anorthic calcium silicate CaSiO3, calcium silicate hydroxide hydrate (Ca14Si24O58(OH)8·2H2O), calcium silicate hydrate 4CaO·5SiO2·5H2O, and combinations of two or more thereof.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further regarding claim 1, Frank in view of Nebesh teaches the amount of copper in the catalyst is of from 40 to 95 wt%, calculated as copper oxide (CuO) based on total weight of the catalyst (Frank, page 4, 3rd paragraph); overlapping the range of the presently claimed.
Frank in view of Nebesh further teaches the precipitated solid can be removed therefrom by filtration, and the separated solid may be washed with water, preferably deionized (Frank, page 7, 3rd paragraph).
Given that Frank in view of Nebesh teaches an essentially identical process, using essentially identical reagents, as set forth above, including the use of Microcel E as the calcium silicate, and overlapping content of CuO, with those of the presently claimed (specification, [0055], claim 5), therefore Frank in view of Nebesh would necessarily overlap the ranges of the presently claimed, including wherein prior to activation, the catalyst comprises CaO from about 8 wt% to about 20 wt%, SiO2 from about 10wt% to about 30 wt%,and Na2O from about 0.1wt% to about 5 wt%; and wherein prior to activation, the hydrogenolysis/hydrogenation catalyst comprises Na2O from about 0.5 wt% to about 1 wt%.
Furthermore, Frank in view of Nebesh teaches the separated solid may be washed with water, preferably deionized, alkali metal free water, for example in order to remove substantially all alkali metal ions (Frank, page 7, 3rd paragraph). Therefore, it therefore would have been obvious to a person of ordinary skill in the art to apply the washing with deionized, alkali metal free water, to remove to remove substantially all alkali metal ions, and obtain a catalyst, and wherein prior activation, with Na2O content of the presently claimed, in order to achieve desired product performance.
Further regarding claims 1 and 8, Frank in view of Nebesh does not explicitly disclose wherein the hydrogenolysis/hydrogenation catalyst exhibits a Brunauer-Emmett-Teller surface area of about 5 m2/g to about 85 m2/g, or about 15 m2/g to about 80 m2/g.
With respect to the difference, Guan teaches catalyst for preparing alcohol by catalytic hydrogenation (Guan, Abstract).
As Guan expressly teaches, each component is dispersed on the surface of carrier to obtain higher specific surface area, improves the unit mass component, the catalytic efficiency (Guan, [0018]).
Guan is analogous art as Guan is drawn to catalyst for preparing alcohol by catalytic hydrogenation.
In light of the motivation of having high surface area on the catalyst, as taught by Guan, it therefore would have been obvious to a person of ordinary skill in the art prepare the catalyst of Frank in view of Nebesh and provide a high surface area to improve the unit mass component, the catalyst efficiency.
Although there are no disclosures on the amounts of surface area as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of surface area, including over the amounts presently claimed, in order to improve the unit mass component, the catalyst efficiency, and thereby arrive at the claimed invention.
Although there is no disclosure that the test method is conformity with Brunauer-Emmett-Teller, given that Frank in view of Nebesh and Guan teaches the surface area as the presently claimed and absent evidence criticality how the surface area is measured, it is an examiner's position that surface area taught by Frank in view of Nebesh and Guan to meet the claim limitation.
Alternatively, further regarding claim 1, specifically regarding, “wherein prior to activation, the hydrogenolysis/hydrogenation catalyst comprises CuO from about 35 wt% to about 85 wt%, CaO from about 8 wt% to about 20 wt%, SiO2 from about 10 wt% to about 30 wt%, and Na2O from about 0.5 wt% to about 1 wt%”, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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 Frank in view of Nebesh and Guan meets the requirements of the claimed product, Frank in view of Nebesh clearly meets the requirements of the present claim.
Regarding claim 7, as applied to claim 1, given that Frank in view of Nebesh does not require reagents comprising manganese during the preparation of the copper containing hydrogenation catalyst, therefore, the copper containing hydrogenation catalyst would necessarily read upon substantially free of manganese.
Alternatively, regarding claim 7, applied to claim 1, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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 Frank in view of Nebesh and Guan meets the requirements of the claimed product, Frank in view of Nebesh clearly meets the requirements of the present claim.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Frank in view of Nebesh and Guan, as applied to claim 1 above, and further in view of Thakur et al., Catalysts for fatty alcohol production from renewable resources, J. Am. Oil Chem. Soc., 2016 (Thakur’2016) in view of Thakur et al., US 5,134,108 (Thakur’1992).
Regarding claims 2-4, as applied to claim 1, Frank in view of Nebesh and Guan does not explicitly disclose wherein the powder has a d10% particle size of about 1 µm to about 10 µm; wherein the powder has a d50% particle size of about 10 µm to about 25 µm; or wherein the powder has a d90% particle size of about 30 µm to about 45 µm.
With respect to the difference, Thakur’2016 teaches catalysts for fatty alcohol production such as copper catalysts (Thakur’2016, page 1580, right column, 3rd paragraph); Thakur’1992 teaches catalyst for hydrogenation to produce alcohol (Thakur’1992,). Thakur’1992 specifically teaches the catalysts having a relatively narrow particle size distribution, the average particle diameter of the powder catalyst is from about 6 to about 20 microns (Thakur’1992, column 3, 3rd paragraph)
As Thakur’2016 expressly teaches, improvements in filtration rates were achieved by precipitating uniform sized spherical particles (Thakur’2016).
Both Thakur’2016 and Thakur’1992 are analogous art as Thakur’2016 is drawn to catalysts for fatty alcohol production such as copper catalysts; and Thakur’1992 is drawn to catalyst for hydrogenation to produce alcohol.
In light of the motivation of improvements in filtration rates by precipitating uniform sized spherical particles, as taught by Thakur’2016, it therefore would have been obvious to a person of ordinary skill in the art to precipitating uniform sized spherical particles, with the average particle diameter of the powder catalyst is from about 6 to about 20 microns and narrow distribution, as taught by Thakur’1992, in order to achieve improvements in filtration rates.
Although there are no disclosures on the amounts of wherein the powder has a d10% particle size of about 1 µm to about 10 µm; wherein the powder has a d50% particle size of about 10 µm to about 25 µm; and wherein the powder has a d90% particle size of about 30 µm to about 45 µm, as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the particle size distribution of the catalyst of Frank in view of Nebesh, Thakur’2016 and Thakur’1992, which would vary the D10%, D50% and D90%, and make the distribution narrow, i.e., the values of D10%, D50% and D90% would be close to the average of 6 to 20 microns, including over the amounts presently claimed, in order to improve filtration performances, and thereby arrive at the claimed invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Frank in view of Nebesh and Guan, as applied to claim 1 above, and further in view of Bankmann et al., EP 0669163 A1 (Bankmann).
The examiner has provided a machine translation of Bankmann et al., EP 0669163 A1 (Bankmann). The citation of the prior art set forth below refers to the machine translation.
Regarding claim 10, as applied to claim 1, Frank in view of Nebesh and Guan does not explicitly disclose wherein the hydrogenolysis/hydrogenation catalyst exhibits a CuO crystallite size of about 50 Å to less than about 240 Å.
With respect to the difference, Bankmann teaches copper catalyst for hydrogenation to produce alcohol (Bankmann, Abstract). Bankmann specifically teaches the mean size of the copper crystallites, is between 5 and 50 nm (Bankmann, page 3, 2nd paragraph from bottom).
As Bankmann expressly teaches, the person skilled in the art can determine the optimum crystallite size for the respective requirement profile (type of catalytic reaction; desired conversion and selectivity; necessary stability of the catalytic activity under the reaction condition used) with a few orienting experiments (Bankman, paragraph spanning pages 3-4).
Bankmann is analogous art as Bankmann is drawn to copper catalyst for hydrogenation to produce alcohol.
In light of the motivation of optimize the crystallite size of copper for a catalyst for hydrogenation to produce alcohol, as taught by Bankmann, it therefore would have been obvious to a person of ordinary skill in the art to optimize the crystallite size of copper of the catalyst of Frank in view of Nebesh, e.g., with a copper crystallite size of between 5 and 50 nm (i.e., 50 and 500 Å), in order to achieve desired conversion and selectivity, necessary stability of the catalytic activity under the reaction condition used, and thereby arrive at a range that encompasses that of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
In response to the amended claims, the previous claim objections are withdrawn.
Applicant primarily argues:
“In contrast, Frank has no disclosure of the amount of CaO or SiO2 in its compositions, and most importantly, teaches no control of sodium content: it does not teach or suggest Na2O from about 0.5 wt% to about 1 wt%. In contrast to the present disclosure, Frank does not control for amount Na, and indeed prefers sodium silicate for use in precipitation with a copper salt, thereby teaching away from the present disclosure.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Frank does not expressly teach the claimed “wherein prior to activation, the hydrogenolysis/hydrogenation catalyst comprises CuO from about 35 wt% to about 85 wt%, CaO from about 8 wt% to about 20 wt%, SiO2 from about 10 wt% to about 30 wt%, and Na2O from about 0.5 wt% to about 1 wt%”. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Frank does not disclose the entire claimed invention. Rather, Nebesh is relied upon to teach claimed elements missing from Frank, with proper motivation to combine, namely, use Microcel E, as the calcium silicate in Frank, and yield expected results (Nebesh, column 3, 3rd paragraph). See pages 6-7 of the Office Action mailed 01/27/2026.
Alternatively, further regarding claim 1, specifically regarding, “wherein prior to activation, the hydrogenolysis/hydrogenation catalyst comprises CuO from about 35 wt% to about 85 wt%, CaO from about 8 wt% to about 20 wt%, SiO2 from about 10 wt% to about 30 wt%, and Na2O from about 0.5 wt% to about 1 wt%”, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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 Frank in view of Nebesh and Guan meets the requirements of the claimed product, Frank in view of Nebesh clearly meets the requirements of the present claim.
Applicant further argues:
“Also, as acknowledged in the Action, Frank in view of Nebesh does not explicitly disclose wherein the hydrogenolysis/hydrogenation catalyst exhibits a Brunauer-Emmett-Teller surface area of about 5 m2/g to about 85 m2/g.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Frank in view of Nebesh does not expressly teach the claimed Brunauer-Emmett-Teller ("BET") surface area of about 10 m2/g to about 85 m2/g. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Frank in view of Nebesh does not disclose the entire claimed invention. Rather, Guan is relied upon to teach claimed elements missing from Frank in view of Nebesh, with proper motivation to combine, namely, improves the unit mass component, the catalytic efficiency (Guan, [0018]). See pages 11-12 of the Office Action mailed 11/27/2026.
Applicant further argues:
“Nebesh does not remedy the defects of Frank. Nebesh is not analogous art to the presently claimed invention for several reasons, including that Nebesh is a copper chromite catalyst, whereas the present catalyst is substantially free of chromium. Any combination of the teachings of the references would result in a catalyst that comprised chromium, whereas Cr is excluded in the instantly claimed catalyst.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Firstly, it is noted that while Nebesh does not disclose all the features of the present claimed invention, Nebesh is used as teaching reference, namely using Microcel E as the source of calcium silicate for preparation of hydrogenation catalyst comprising copper, and yield expected results, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Secondly, Nebesh is only used as teaching reference in order to teach using Microcel E as the source of calcium silicate for preparation of hydrogenation catalyst comprising copper. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference Frank. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant further argues:
“Thakur'2016 merely teaches that improvements in filtration rates were achieved by precipitating uniform sized spherical particles.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
It is noted that while Thakur'2016 does not disclose all the features of the present claimed invention, Thakur'2016 is used as teaching reference, namely improvements in filtration rates by precipitating uniform sized spherical particles (Thakur’2016)., and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Thakur' 1992 teaches catalyst for hydrogenation to produce alcohol and specifically teaches the catalysts having a relatively narrow particle size distribution, the average particle diameter of the powder catalyst is from about 6 to about 20 microns.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
It is noted that while Thakur'1992 does not disclose all the features of the present claimed invention, Thakur'1992 is used as teaching reference, namely the catalysts having a relatively narrow particle size distribution, the average particle diameter of the powder catalyst is from about 6 to about 20 microns (Thakur’1992, column 3, 3rd paragraph), in order to achieve improvements in filtration rates by precipitating uniform sized spherical particles (Thakur’2016)., and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Guan is alleged to teach catalyst for preparing alcohol by catalytic hydrogenation, where each component is dispersed on the surface of carrier to obtain higher specific surface area, improves the unit mass component, the catalytic efficiency.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Given that Guan expressly teaches, each component is dispersed on the surface of carrier to obtain higher specific surface area, improves the unit mass component, the catalytic efficiency (Guan, [0018]).
Guan is analogous art as Guan is drawn to catalyst for preparing alcohol by catalytic hydrogenation.
In light of the motivation of having high surface area on the catalyst, as taught by Guan, it therefore would have been obvious to a person of ordinary skill in the art prepare the catalyst of Frank in view of Nebesh and provide a high surface area to improve the unit mass component, the catalyst efficiency.
Although there are no disclosures on the amounts of surface area as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of surface area, including over the amounts presently claimed, in order to improve the unit mass component, the catalyst efficiency, and thereby arrive at the claimed invention.
Although there is no disclosure that the test method is conformity with Brunauer-Emmett-Teller, given that Frank in view of Nebesh and Guan teaches the surface area as the presently claimed and absent evidence criticality how the surface area is measured, it is an examiner's position that surface area taught by Frank in view of Nebesh and Guan to meet the claim limitation, as set forth on pages 11-12 of Office Action mailed 01/27/2026.
Applicant further argues:
“Bankmann merely teaches copper catalyst for hydrogenation to produce alcohol, with the mean size of the copper crystallites, is between 5 and 50 nm.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
It is noted that while Bankmann) does not disclose all the features of the present claimed invention, Bankmann is used as teaching reference, namely the mean size of the copper crystallites, is between 5 and 50 nm (Bankmann, page 3, 2nd paragraph from bottom), in order to achieve desired conversion and selectivity, necessary stability of the catalytic activity under the reaction condition used (Bankmann, paragraph spanning pages 3-4), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“None of the cited reference provide motivation (or reasonable expectation for success) for forming a catalyst wherein, prior to activation, the hydrogenolysis/hydrogenation catalyst simultaneously has all the following technical features: it comprises CuO from about 35 wt% to about 85 wt%, CaO from about 8 wt% to about 20 wt%, SiO2 from about 10 wt% to about 30 wt%, and Na2O from about 0.5 wt% to about 1 wt%; and wherein the hydrogenolysis/hydrogenation catalyst exhibits a Brunauer-Emmett-Teller ("BET") surface area of about 10 m2/g to about 85 m2/g; and an additional crystallite phase selected from the group consisting of cubic SiO2, rhombohedral calcium carbonate CaCO3, anorthic calcium silicate CaSiO3, calcium silicate hydroxide hydrate (Ca14Si24O58(OH)8.2H20), calcium silicate hydrate 4CaO-5SiO2 5H2O, alumina, and combinations of two or more thereof.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Firstly, regarding the composition, Nebesh teaches the use of calcium silicate (Microcel E) as support materials (Nebesh, column 3, 3rd paragraph). Nebesh is analogous art as Nebesh is drawn to hydrogenation catalyst comprising copper.
In light of the disclosure of Nebesh of using Microcel E, a specific source of calcium silicate for preparation of hydrogenation catalyst comprising copper, it therefore would have been obvious to a person of ordinary skill in the art to use Microcel E, as the calcium silicate in Frank, and yield expected results. Given that Frank teaches an essentially identical process, using essentially identical reagents, as set forth above, including the use of Microcel E as the calcium silicate, with those of the presently claimed (specification, [0055]), therefore, the copper containing hydrogenation catalyst would necessarily exhibit an additional crystallite phase selected from the group consisting of cubic SiO2, rhombohedral calcium carbonate CaCO3, anorthic calcium silicate CaSiO3, calcium silicate hydroxide hydrate (Ca14Si24O58(OH)8·2H2O), calcium silicate hydrate 4CaO·5SiO2·5H2O, alumina, and combinations of two or more thereof; and the copper containing hydrogenation catalyst would necessarily exhibit a crystallite phrase of CuO and an additional crystallite phase selected from the group consisting of cubic SiO2, rhombohedral calcium carbonate CaCO3, anorthic calcium silicate CaSiO3, calcium silicate hydroxide hydrate (Ca14Si24O58(OH)8·2H2O), calcium silicate hydrate 4CaO·5SiO2·5H2O, and combinations of two or more thereof.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Frank in view of Nebesh further teaches the precipitated solid can be removed therefrom by filtration, and the separated solid may be washed with water, preferably deionized (Frank, page 7, 3rd paragraph).
Given that Frank in view of Nebesh teaches an essentially identical process, using essentially identical reagents, as set forth above, including the use of Microcel E as the calcium silicate, and overlapping content of CuO, with those of the presently claimed (specification, [0055], claim 5), therefore Frank in view of Nebesh would necessarily overlap the ranges of the presently claimed, including wherein prior to activation, the catalyst comprises CaO from about 8 wt% to about 20 wt%, SiO2 from about 10wt% to about 30 wt%,and Na2O from about 0.1wt% to about 5 wt%; and wherein prior to activation, the hydrogenolysis/hydrogenation catalyst comprises Na2O from about 0.5 wt% to about 1 wt%.
Furthermore, Frank in view of Nebesh teaches the separated solid may be washed with water, preferably deionized, alkali metal free water, for example in order to remove substantially all alkali metal ions (Frank, page 7, 3rd paragraph). Therefore, it therefore would have been obvious to a person of ordinary skill in the art to apply the washing with deionized, alkali metal free water, to remove to remove substantially all alkali metal ions, and obtain a catalyst, and wherein prior activation, with Na2O content of the presently claimed, in order to achieve desired product performance.
Secondly, regarding the BET surface area, Guan teaches catalyst for preparing alcohol by catalytic hydrogenation (Guan, Abstract).
Guan provides a proper motivation to combine,i.e., each component is dispersed on the surface of carrier to obtain higher specific surface area, improves the unit mass component, the catalytic efficiency (Guan, [0018]).
Guan is analogous art as Guan is drawn to catalyst for preparing alcohol by catalytic hydrogenation.
In light of the motivation of having high surface area on the catalyst, as taught by Guan, it therefore would have been obvious to a person of ordinary skill in the art prepare the catalyst of Frank in view of Nebesh and provide a high surface area to improve the unit mass component, the catalyst efficiency.
Although there are no disclosures on the amounts of surface area as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of surface area, including over the amounts presently claimed, in order to improve the unit mass component, the catalyst efficiency, and thereby arrive at the claimed invention.
Although there is no disclosure that the test method is conformity with Brunauer-Emmett-Teller, given that Frank in view of Nebesh and Guan teaches the surface area as the presently claimed and absent evidence criticality how the surface area is measured, it is an examiner's position that surface area taught by Frank in view of Nebesh and Guan to meet the claim limitation.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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 KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights