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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/08/2023, 12/18/2024 has been considered by the examiner.
Election/Restrictions
Claim 6 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/23/2025.
Applicant’s election without traverse of claims 1-5 in the reply filed on 12/23/2025 is acknowledged.
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 1-5 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.
Claim 1 recites the limitation "the acetate" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-5 are indefinite because they recite incompatible ranges. For example, claim 2 requires a mass of supported metallic copper per kg of catalyst be 0.1g or more and simultaneously be 1.6g or less, which is unclear since this phrasing allows there to be 0.1g and 1.6g at the same time. Claims 3-5 are indefinite for the same reason.
Claim Rejections - 35 USC § 102
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by White et al (US 5347046).
Regarding claim 1, White discloses novel catalysts useful in the preparation of unsaturated organic esters (Col. 1 lines 8-9) where the preferred ethylenically unsaturated ester is vinyl acetate (Col. 7 lines 1-2) and methods for producing the catalyst (Examples 1-33, meeting limitation “a method for producing a vinyl acetate production catalyst”). The catalysts of this invention contain palladium group metals and/or compounds thereof (col. 3 lines 19-20 meeting limitation “comprising palladium”). Catalysts of this invention also contain gold (Col. 3 line 36 meeting limitation “comprising gold”). The catalysts of this invention also contain one or more promoters selected from the group consisting of copper (Col. 3 lines 42-44 meeting limitation “comprising copper”). The carrier may be of any configuration, shape or size which exposes the catalyst supported thereon to the reactants being catalyzed (Col. 4 lines 6-8 meeting limitation “comprising a carrier”). The catalysts of this invention may also contain one or more alkali or alkaline earth salts of an organic acid such as lithium, sodium, calcium or potassium acetate as a promoter and activator (Col. 6 lines 4-7 meeting limitation “comprising an acetate”).
White further discloses pretreated silica beads, i.e. carrier, are prepared by impregnating … with 2400 cc of an aqueous pretreatment solution containing 123.1 grams of potassium hydroxide and 954 grams of potassium silicate solution, i.e. alkaline solution (Col. 7 lines 49-54 meeting limitation “the method comprising the following steps in this order: step 1: impregnating a carrier with an alkaline solution”). The Pd-Au-Cu catalyst is prepared by impregnating the pretreated beads of Example 1 with… sodium palladium tetrachloride solution…sodium gold tetrachloride solution… and cupric chloride dihydrate (Col. 8 lines 3-8 meeting limitation “step 2: contacting and impregnating the carrier with a solution containing a copper- containing compound, a palladium-containing compound, and a gold-containing compound”). The Pd-Au-Cu impregnated beads are aged … and then reduced in 250 cc of deionized water containing 6 grams of hydrazine, held in contact with the hydrazine solution for two hours, washed… and then dried, i.e. reduction treatment (Col. 8 lines 12-18 meeting limitation “step 3: performing a reduction treatment”). The catalyst of Example 2 is further impregnated with 132.6 cc of an aqueous solution containing 8.8 grams of potassium acetate (Col 8 lines 24-26). The catalyst obtained has a nominal loading of potassium acetate of 22 grams per liter of catalyst (Col. 8 lines 31-33 meeting limitation “step 4: supporting the acetate on the carrier”).
Regarding claim 2 and 5, White discloses all the limitations in the claims as set forth above and further discloses a Pd-Au-Cu catalyst is prepared by impregnating one liter, 575 grams, of KA-160 silica beads with 339 cc of an aqueous solution containing 4.2 grams of palladium, 1.84 grams of gold and 0.307 grams of copper (Col. 9 lines 20-26). The resulting catalyst is dried in a forced air oven at 110° C., then spray impregnated with 30 grams of potassium acetate dissolved in 324 cc of deionized water and dried again to a moisture level of less than 2% in a forced air oven (Col.9 lines 38-42).
The instant specification discloses the mass of catalyst is the sum of the carrier mass, catalyst metal mass, acetate mass and the mass of the other components ([0049]).
The mass of the catalyst can be calculated as the sum of the disclosed carrier mass (575 g), catalyst metal mass (4.2g, 1.84g, 0.307g), and acetate mass (30 g). This would result in a catalyst mass of 611.3g in Example 7. Since the mass of supported metallic copper is disclosed as 0.307g, the mass of supported metallic copper would be 0.5g per kg of catalyst, which is within the claimed range of 0.1g or more and 1.6 g or less.
Likewise, since the mass of supported acetate is 30 grams, the mass of supported acetate would be 49g per kg of catalyst, which is within the claimed range of 40g or more and 100 g or less.
Claim Rejections - 35 USC § 103
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 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over White et al (US 5347046) in view of Saihata (JP 2008080326 A, cited in IDS 05/08/2023, machine translation used for citations).
Regarding claim 3, White discloses all the limitations in the claims as set forth above but does not disclose “wherein a mass of supported metallic palladium per kg of catalyst is 8.0 g or more and 16.0 g or less”.
Saihata discloses the present invention relates to a method for producing a catalyst for use in synthesizing alkenyl acetate ([0001]) including 1. A step of impregnating the carrier with an alkaline solution; 2. A step of contact-impregnating a support with a solution A of at least a compound containing palladium or platinum and a compound containing a Group 11 element; 3. A step of performing a reduction treatment; a step of supporting an acetate on a carrier ([0011]).
Saihata further discloses the mass ratio of (b) palladium or platinum to (a) the carrier is preferably (b):(a)=1:10-1000 ([0040]). In the catalyst for producing alkenyl acetate of the present invention, the mass ratio of (b) palladium or platinum, (c) Group 11 element, (d) acetate, and (e) alkaline earth metal element is preferably (b):(c):(d):(e)=1:0.001-10:0.1-100:0-100 ([0063]).
If the mass of the carrier is 100 g, with 1 g of palladium, 1 g of gold (Group 11 element), 1 g acetate, 0 g alkaline earth metal element, the total catalyst mass would be 103 g. Scaling up to 1 kg of catalyst, the mass of supported metallic palladium per kg of catalyst would be 9.7 g which is within the claimed range of 8.0 g or more and 16.0 g or less.
Saihata further discloses palladium or platinum is the main catalyst component, and palladium is particularly preferred because of its high vinyl acetate selectivity ([0036]).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the mass of supported metallic palladium per kg of catalyst is 8.0 g or more and 16.0 g or less in the method of White since palladium has high vinyl acetate selectivity as taught by Saihata.
Regarding claim 4, White discloses all the limitations in the claims as set forth above but does not disclose “wherein a mass of supported metallic gold per kg of catalyst is 4.0 g or more and 12.0 g or less”.
Saihata discloses the present invention relates to a method for producing a catalyst for use in synthesizing alkenyl acetate ([0001]) including 1. A step of impregnating the carrier with an alkaline solution; 2. A step of contact-impregnating a support with a solution A of at least a compound containing palladium or platinum and a compound containing a Group 11 element; 3. A step of performing a reduction treatment; a step of supporting an acetate on a carrier ([0011]). In the present invention, (c) Group 11 elements refer to Group 11 elements in the periodic table…specifically, it refers to gold, silver, or copper, and preferably gold or copper ([0041]).
Saihata further discloses the mass ratio of (b) palladium or platinum to (a) the carrier is preferably (b):(a)=1:10-1000 ([0040]). In the catalyst for producing alkenyl acetate of the present invention, the mass ratio of (b) palladium or platinum, (c) Group 11 element, (d) acetate, and (e) alkaline earth metal element is preferably (b):(c):(d):(e)=1:0.001-10:0.1-100:0-100 ([0063]).
If the mass of the carrier is 100 g, with 1 g of palladium, 1 g of gold (Group 11 element), 1 g acetate, 0 g alkaline earth metal element, the total catalyst mass would be 103 g. Scaling up to 1 kg of catalyst, the mass of supported metallic gold per kg of catalyst would be 9.7 g which is within the claimed range of 4.0 g or more and 12.0 g or less.
Saihata further discloses the gold promoter is thought to suppress palladium sintering ([0003]).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the mass of supported metallic gold per kg of catalyst is 4.0 g or more and 12.0 g or less in the method of White since gold is thought to suppress palladium sintering as taught by Saihata.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-12 of copending Application No. 18/861,269 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘269 claims a method for producing a catalyst for vinyl acetate production containing a carrier, copper, palladium, gold and an acetate (claim 1 meeting limitation “a method for producing a vinyl acetate production catalyst comprising a carrier, copper, palladium, gold, and an acetate”), the method comprising: Step 1: impregnating the carrier with an alkali solution (claim 1 meeting limitation “the method comprising step 1: impregnating a carrier with an alkaline solution”); Step 2: subjecting the carrier to contact impregnation with a solution containing a copper-containing compound, a palladium-containing compound, and a gold-containing compound (claim 1 meeting limitation “step 2: contacting and impregnating the carrier with a solution containing a copper- containing compound, a palladium-containing compound, and a gold-containing compound”); Step 5: performing a reduction treatment (claim 1 meeting limitation “step 3: performing a reduction treatment”); and Step 6: supporting an acetate on the carrier in this order (claim 1 meeting limitation “step 4: supporting the acetate on the carrier” and “the following steps in this order”).
Regarding claim 2, ‘269 claims the production method according to claim 1, wherein a mass of supported metallic copper per 1 kg of the carrier is from 0.25 g to 5.00 g (claim 9).
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). In the instant case, the range claimed by ‘269 (from 0.25 g to 5.00 g) overlaps with the claimed range (0.1 g or more and 1.6 g or less). Therefore, the range in ‘269 renders obvious the claimed range.
Regarding claim 3, ‘269 claims the production method according to claim 1, wherein a mass of supported metallic palladium per 1 kg of the carrier is from 5.00 g to 20.0 g (claim 10).
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). In the instant case, the range claimed by ‘269 (from 5.00 g to 20.0 g) overlaps with the claimed range (8 g or more and 16.0 g or less). Therefore, the range in ‘269 renders obvious the claimed range.
Regarding claim 4, ‘269 claims the production method according to claim 1, wherein a mass of supported metallic gold per 1 kg of the carrier is from 4.00 g to 20.0 g (claim 11).
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). In the instant case, the range claimed by ‘269 (from 4.00 g to 20.0 g) overlaps with the claimed range (4.0 g or more and 12.0 g or less). Therefore, the range in ‘269 renders obvious the claimed range.
Regarding claim 5, ‘269 claims the production method according to claim 1, wherein a mass of supported acetate per 1 kg of the carrier is from 40 g to 125 g (claim 12).
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). In the instant case, the range claimed by ‘269 (from 40 g to 125 g) overlaps with the claimed range (40 g or more and 100 g or less). Therefore, the range in ‘269 renders obvious the claimed range.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8 of copending Application No. 18/856,082 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘082 claims a method for producing a catalyst for vinyl acetate production containing a carrier, copper, palladium, gold and an acetate, the method comprising (claim 1 meeting limitation “a method for producing a vinyl acetate production catalyst comprising a carrier, copper, palladium, gold, and an acetate”): Step 1: impregnating the carrier with an alkali solution (claim 1 meeting limitation “the method comprising step 1: impregnating a carrier with an alkaline solution”); Step 2: subjecting the carrier to contact impregnation with a solution containing a copper-containing compound, a palladium-containing compound, and a gold-containing compound (claim 1 meeting limitation “step 2: contacting and impregnating the carrier with a solution containing a copper- containing compound, a palladium-containing compound, and a gold-containing compound”); Step 4: performing a reduction treatment (claim 1 meeting limitation “step 3: performing a reduction treatment”); and Step 5: supporting an acetate on the carrier, in this order (claim 1 meeting limitation “step 4: supporting the acetate on the carrier” and “the following steps in this order”).
Regarding claim 2, ‘082 claims the production method according to claim 1, wherein a mass of supported metallic copper per 1 kg of the carrier is from 0.25 g to 5.00 g (claim 5).
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). In the instant case, the range claimed by ‘082 (from 0.25 g to 5.00 g) overlaps with the claimed range (0.1 g or more and 1.6 g or less). Therefore, the range in ‘082 renders obvious the claimed range.
Regarding claim 3, ‘082 claims the production method according to claim 1, wherein a mass of supported metallic palladium per 1 kg of the carrier is from 5.00 g to 20.0 g (claim 6).
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). In the instant case, the range claimed by ‘082 (from 5.00 g to 20.0 g) overlaps with the claimed range (8 g or more and 16.0 g or less). Therefore, the range in ‘082 renders obvious the claimed range.
Regarding claim 4, ‘082 claims the production method according to claim 1, wherein a mass of supported metallic gold per 1 kg of the carrier is from 4.00 g to 20.0 g (claim 7).
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). In the instant case, the range claimed by ‘082 (from 4.00 g to 20.0 g) overlaps with the claimed range (4.0 g or more and 12.0 g or less). Therefore, the range in ‘082 renders obvious the claimed range.
Regarding claim 5, ‘269 claims the production method according to claim 1, wherein a mass of supported acetate per 1 kg of the carrier is from 40 g to 125 g (claim 8).
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). In the instant case, the range claimed by ‘082 (from 40 g to 125 g) overlaps with the claimed range (40 g or more and 100 g or less). Therefore, the range in ‘082 renders obvious the claimed range.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE L QUIST whose telephone number is (571)270-5803. The examiner can normally be reached Mon-Fri 8:30-5:00.
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/N.L.Q./Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738