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
This application claims the benefit of TW 111136451 with an effective filing date of 27 September 2022 as reflected in the filing receipt mailed on 28 December 2022.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-9 in the reply filed on 23 October 2025 was acknowledged.
Claims 10-13 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 October 2025. Claims 1-9 were previously examined on the merits in the office action dated 25 November 2025.
Status of the Claims
Claims 1, 5, and 8 are currently pending.
Claims 1, 5, and 8 are currently amended.
Claims 2-4, 6, 7, and 9 are currently cancelled.
Claims 10-13 were previously withdrawn.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 15 December 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendments
Applicant’s amendments filed 19 February 2026 are acknowledged.
Drawings
Applicant’s amendment to the drawings received on 19 February 2026 are not sufficient to overcome the objection of the drawings. The objection is maintained.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings, see 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Specification
Applicant’s amendment to the specification is not sufficient to overcome the
objection of the specification because an accompanying clean version (without markings) must also be supplied, see 37 CFR 1.125(c). The objection is maintained.
Claim Rejections - 35 USC § 103
Applicant’s amendments to claim 1 adding a carbon component content range, the specific imidazole first functional ionic liquid, the specific second functional ionic liquid, and the concentrations of the first and second functional ionic liquids not taught by Castillo in view of Chen are sufficient to overcome the rejection of claims 1, 2, and 6 under 35 U.S.C. 103 as being unpatentable over Castillo et al. (US20180371206, hereinafter Castillo) in view of Chen et al. (“Carbon Nanofibers Synthesized from Carbon Dioxide by Catalytic Hydrogenation on Ni-Na/Al2O3 Catalysts”, 19 January 2011, The Journal of Physical Chemistry, Vol. 115, Pgs. 1464-1473, hereinafter Chen). The rejection is withdrawn. Due to the amendments to claim 1 and the cancellation of claims, a new ground(s) of rejection is/are provided below.
Applicant’s amendment to claim 1 adding a specific carbon component content range not taught by Castillo in view of Chen and Perez are sufficient to overcome the rejection of claims 3-5 and 7-9 under 35 U.S.C. 103 as being unpatentable over Castillo et al. (US20180371206, hereinafter Castillo) in view of Chen et al. (“Carbon Nanofibers Synthesized from Carbon Dioxide by Catalytic Hydrogenation on Ni-Na/Al2O3 Catalysts”, 19 January 2011, The Journal of Physical Chemistry, Vol. 115, Pgs. 1464-1473, hereinafter Chen), as applied to claims 1, 2, and 6 in the 35 USC 103 rejection above, in further view of Perez (“New catalytic systems based on carbon nanotubes supported ionic liquid phase”, 14 December 2009, Thesis, Doctorate, Toulouse University, Pgs. 1-215). The rejection is withdrawn. Due to the amendment to claim 1 and the cancellation of claims, a new ground(s) of rejection is/are provided below.
Terminal Disclaimer
The terminal disclaimer filed on 19 February 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application #18491799 to Liao et al. has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer is sufficient to overcome the rejections of:
Claims 1-5 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4 of copending Application No. 18491799 to Liao et al. (hereinafter Liao) (reference application);
Claim 6 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4 of copending Application No. 18491799 to Liao et al. (hereinafter Liao) (reference application), as applied to claims 1-5 in the double patenting rejection above, in view of Chen et al. (“Carbon Nanofibers Synthesized from Carbon Dioxide by Catalytic Hydrogenation on Ni-Na/Al2O3 Catalysts”, 19 January 2011, The Journal of Physical Chemistry, Vol. 115, Pgs. 1464-1473, hereinafter Chen); and,
Claims 7-9 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4 of copending Application No. 18491799 to Liao et al. (hereinafter Liao) (reference application), as applied to claims 1-5 in the double patenting rejection above, in view of Perez (“New catalytic systems based on carbon nanotubes supported ionic liquid phase”, 14 December 2009, Thesis, Doctorate, Toulouse University, Pgs. 1-215).
Due to the above filed terminal disclaimer and the cancellation of claims, the above rejections are withdrawn.
Response to Arguments
Applicant’s arguments filed 19 February 2026 have been fully considered but they are either moot or not persuasive.
Applicant’s argue that Castillo, Chen, and Perez do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are either moot or not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 19 February 2026 with respect to Perez has been considered but are moot because the new ground of rejection does not rely on Perez applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant's arguments throughout the remarks filed on 19 February 2026 against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). “Where a rejection of a claim is based on two or more references, a reply that is limited to what a subset of the applied references teaches or fails to teach, or that fails to address the combined teaching of the applied references may be considered to be an argument that attacks the reference(s) individually”, see MPEP 2145 IV. In this case, the combination of Castillo in view of Chem is applied to teach the catalyst carrier.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
“A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”, see MPEP 2141.01(a).
Castillo is in the known prior art field of a “catalyst complex for catalysis of degradation of a polymer material”, see Abstract, where “the method is considered as a solid-liquid degradation process supported by addition of a recoverable catalyst complex”, see Para. [0032], the catalyst oxide “nanoparticles are selected so as to be substantially insoluble in the (alcoholic) solvents, also at higher temperatures of more than 100° C”, the catalyst includes insoluble in alcohol magnetic nickel and magnetic carbon, see Para. [0025], and further additives and dyes are removed by an absorbent, such as active coal, see Paras. [0024];[0036].
Chen is in the known prior art field of the catalytic reduction of CO2 creating a Ni-Na/Al2O3 catalyst loaded with carbon, see Abstract, where the created catalyst contains a catalyst complex having magnetic nickel and magnetic carbon and Al2O3 a catalyst oxide that is substantially insoluble in the (alcoholic) solvents at higher temperatures of more than 100° C, see Abstract; Pg. 1465, 2. Experimental Section. Chen is applied to solve the problem of the selection of the optimal recoverable catalyst complex that is substantially insoluble in the (alcoholic) solvents at higher temperatures of more than 100° C.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the catalyst complex of Castillo by using the carbon loaded catalyst and/or spent catalyst with coke loading as taught by Chen with a reasonable predictability of success for the purpose of efficiently utilizing waste materials involved in CO2 utilization that exhibit optimal catalytic properties at high temperatures and are recoverable from the process, see Chen, Abstract; Pgs. 1464-1465, 1., Introduction; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Castillo and Chen both teach magnetic nickel and magnetic carbon catalysts capable of maintaining stability at high temperatures, a person of ordinary skill in the art has good reason to modify Castillo by relying upon Chen before the effective filing date of the claimed invention for knowledge generally available within the high temperature magnetic nickel carbon catalyst art, see MPEP 2143 B & G and 2141, for the benefit of efficiently utilizing waste materials involved in CO2 utilization that exhibit optimal catalytic properties at high temperatures and are recoverable from the process, see Chen, Abstract; Pgs. 1464-1465, 1., Introduction; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Chen and Castillo teach magnetic nickel and magnetic carbon catalysts capable of maintaining stability at high temperatures, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the magnetic nickel and magnetic carbon catalysts capable of maintaining stability at high temperatures of Chen in the degradation of a polymer material catalysis of Castillo.
For the reasons indicated above, applicant’s above arguments are not persuasive.
Double Patenting
Applicant’s arguments on page 10 of the remarks filed on 19 February 2026 regarding the provisional nonstatutory double patenting rejections are acknowledged. As stated above, due to the above filed terminal disclaimer and the cancellation of claims, the nonstatutory double patenting rejections over the claims of copending Application No. 18491799 to Liao et al. are withdrawn.
Maintained and New Rejections Based on Amendments to the Claims in the reply filed on 19 February 2026
Drawings
The drawings are objected to because Fig. 2 states the first inorganic composite powder material is “C:Na-Ni/Al2O3” and the second inorganic composite power material is also “C:Na-Ni/Al2O3”, which appears to include a typographical mistake. The first inorganic composite power material is interpreted as “Na-Ni/Al2O3” as stated in Paras. [0051]-[0056] of the instant specification and claim 10 of the instant claims.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
As stated above, in addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings, see 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Specification
The disclosure is objected to because of the following informalities:
Para. [0020] of the instant specification states the first inorganic composite powder material is “C:Na-Ni/Al2O3” and the second inorganic composite power material is also “C:Na-Ni/Al2O3”, which appears to include a typographical mistake. The first inorganic composite power material is interpreted as “Na-Ni/Al2O3” as stated in Paras. [0051]-[0056] of the instant specification and claim 10 of the instant claims.
As stated above, an accompanying clean version (without markings) must also be supplied, see 37 CFR 1.125(c).
Appropriate correction is required.
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
For clarity between the new and previous rejections, the specific new rejections below are in italics.
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 1, 5, and 8 are newly rejected under 35 U.S.C. 103 as being unpatentable over Castillo et al. (US20180371206, published 27 December 2018, hereinafter Castillo) in view of Chen et al. (“Carbon Nanofibers Synthesized from Carbon Dioxide by Catalytic Hydrogenation on Ni-Na/Al2O3 Catalysts”, published 19 January 2011, The Journal of Physical Chemistry, Vol. 115, Pgs. 1464-1473, hereinafter Chen), in further view of Maschmeyer et al. (US20190097273, published 28 March 2019, hereinafter Maschmeyer).
Castillo is in the known prior art field of a “catalyst complex for catalysis of degradation of a polymer material”, see Abstract, where “the method is considered as a solid-liquid degradation process supported by addition of a recoverable catalyst complex”, see Para. [0032], the catalyst oxide “nanoparticles are selected so as to be substantially insoluble in the (alcoholic) solvents, also at higher temperatures of more than 100° C”, the catalyst includes insoluble in alcohol magnetic nickel and magnetic carbon, see Para. [0025], and further additives and dyes are removed by an absorbent, such as active coal, see Paras. [0024];[0036].
Castillo teaches the instant application claim 1 limitations of a multifunctional catalyst for the simultaneous decolorization and degradation/depolymerization of polyester polymers in order to obtain color free monomers useful as raw materials for PET materials, see Abstract; Paras. [0010]-[0018];[0036];[0041];[0050]-[0051], where the polyester includes “polyester clothing”, see Paras. [0049]-[0050], meeting the multifunctional catalysts, applicability, and decolorization and degradation/depolymerization of polyester fabric in instant application claim 1; and,
The catalyst is a nanoparticle A surrounded by a number of bridging moieties B and catalyst entities attached to the nanoparticle C1 & C2, see Paras. [0044]-[0045];[0053]; Figs. 1b-1c. The nanoparticle is a support particle, such as CoFe2O4, comprising C-Ni, see Paras. [0025]-[0026], and the catalysts entities are ionic liquids selected from positively charged aromatic heterocycles, such as pyrimidines, imidazoles, piperidines, pyrrolidine, pyridine, pyrazol, oxazol, triazol, thiazol, methimazol, benzotriazol, isoquinol and viologen-type compounds, preferred is an imidazole structure, which results in an imidazolium ion combined with a negatively charged moiety salt complex or a negatively charged ion, such as a halide, for example the ionic liquid butylimidazolium iron tetrachloride ((bim)FeCl4) or (bim)Cl, see Paras. [0030];[0043]-[0044];[0057], meeting:
The inorganic composite powder support/carrier and the first and second functional ionic liquid grafted on the carrier in instant application claim 1.
Castillo does not teach:
The instant application claim 1 limitations of the carrier is composed of the following chemical components: C: Na-Ni/Al2O3.
Chen is in the known prior art field of the catalytic reduction of CO2 creating a Ni-Na/Al2O3 catalyst loaded with carbon, see Abstract, where the created catalyst contains a catalyst complex having magnetic nickel and magnetic carbon and Al2O3 a catalyst oxide that is substantially insoluble in the (alcoholic) solvents at higher temperatures of more than 100° C, see Abstract; Pg. 1465, 2. Experimental Section. Chen is applied to solve the problem of the section of the optimal recoverable catalyst complex that is substantially insoluble in the (alcoholic) solvents at higher temperatures of more than 100° C.
Chen relating to the catalytic reduction of CO2 creating a Ni-Na/Al2O3 catalyst loaded with carbon, see Abstract. The Ni-Na/Al2O3 carbon loaded catalysts is synthesized by adding the requisite volume of aqueous NaNO3 to the Ni/Al2O3 and subjecting the resultant Ni-Na/Al2O3 to a CO2 atmosphere, see Pg. 1465, 2. Experimental Section, where the carbon is additionally deposited on the surface of the Ni-Na/Al2O3 prior to exposure to CO2 in order to create a carbon surface that is flatter than that present before the growth of carbon on the surface, see Pg. 1472, 5. Conclusions, and the carbon loading in the experiments with 20 milligrams of catalysts having collected/grown/deposited carbon thereon in less than about 1 hour, as calculated by the examiner is less than about 25 wt.% carbon, i.e., about a 0.25 carbon yield at about less than 1 hour = 5 mg carbon deposited/20 mg catalyst, see Fig. 4(B); Pg. 1465, 2.2. Catalytic Activity and Carbon Deposition Measurements, meeting:
The specific C: Na-Ni/Al2O3 catalyst in instant application claim 1;
Within the carbon range in instant application claim 1; and,
“[T]he sizes of the nickel particles obtained from the XRD spectra slightly increased with increasing Na loading on the Ni/Al2O3 catalyst. However, the amount of CO adsorbed on the catalysts significantly decreased with increasing Na content because this additive covered the Ni surfaces”, see Pg. 1466, Col. 1, Last Para.-Col. 2; Table 2, i.e., the nickel atom absorbs the carbon, meeting the functional limitation of the carbon component is absorbed at the nickel atom end in instant application claim 1.
In regard to the instant application claim 1 functional limitations pertaining to “the carbon component is absorbed at a nickel atom end of the sodium-nickel/alumina composite”. Castillo teaches a multifunction catalysts used in the recycle of polyester with ionic liquids grafted to the catalyst in order to simultaneously decolorization and degrade/depolymerize and Chen teaches a Ni-Na/Al2O3 catalyst loaded with carbon, see MPEP 2112.01 stating ““[p]roducts of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.” As a result, the catalyst of Castillo in view of Chen will inherently possess the functional limitations regarding the absorption of carbon by nickel, see MPEP 2112, meeting the carbon absorbed by the nickel atom in instant application claim 1.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified Castillo to use the carbon loaded catalysts as taught by Chen with a reasonable predictability of success for the purpose of efficiently removing additives and impurities from the reaction mixture by utilizing a catalysts with highly stable catalytic activity as the carbon weight increases, see Chen, Pg. 1465, Col. 1 Lns. 3-9; Pg. 1467, Col. 2; Pg. 1471, Col. 2- Pg. 1472, Col. 1, Ln. 11.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the catalyst complex of Castillo by using the carbon loaded catalyst and/or spent catalyst with coke loading as taught by Chen with a reasonable predictability of success for the purpose of efficiently utilizing waste materials involved in CO2 utilization that exhibit optimal catalytic properties at high temperatures and are recoverable from the process, see Chen, Abstract; Pgs. 1464-1465, 1., Introduction; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Castillo and Chen both teach magnetic nickel and magnetic carbon catalysts capable of maintaining stability at high temperatures, a person of ordinary skill in the art has good reason to modify Castillo by relying upon Chen before the effective filing date of the claimed invention for knowledge generally available within the high temperature magnetic nickel carbon catalyst art, see MPEP 2143 B & G and 2141, for the benefit of efficiently utilizing waste materials involved in CO2 utilization that exhibit optimal catalytic properties at high temperatures and are recoverable from the process, see Chen, Abstract; Pgs. 1464-1465, 1., Introduction; and, MPEP 2141 and 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Chen and Castillo teach magnetic nickel and magnetic carbon catalysts capable of maintaining stability at high temperatures, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the magnetic nickel and magnetic carbon catalysts capable of maintaining stability at high temperatures of Chen in the degradation of a polymer material catalysis of Castillo.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[t]he 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”, such as the amount of carbon on the catalytic surface, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as a supported adsorbent catalyst, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Castillo does not teach:
The instant application claim 1 limitations of the specific content of the carbon component in the catalyst; the specific first functional ionic liquid; the specific second functional ionic liquid; and, the first and second ionic liquids are “configured to” decolorize and depolymerize a polyester fabric; and,
The limitations in instant application claims 5 and 8.
Maschmeyer is in the known prior art field of coatings of differing ionic liquids on and within carbon-sodium-transition metal complex carriers for redox reactions, see Abstract; Paras. [0006]-[0012];[0019];[0117]-[0127];[0130]-[0140], where the carbon complex ionic liquid carriers are able to maintain stability at high temperatures and temperature variations, see Paras. [0042];[0137].
Regarding the limitations of instant application claims 1, 5, and 8 Maschmeyer teaches a carrier “gel matrix encapsulating an ionic liquid may comprise from about 1 wt % to about 30 wt % gel matrix precursor”, such as solid carbon, any suitable electrolyte salt, such as “sodium chloride”, “Na+” in amounts from “0 wt % to about 20 wt %”, and “any suitable additional dissolved redox species”, such as “transition metal” in amounts of “0 wt % to about 20 wt %”, see Paras. [0109];[0115];[0130]-[0137]. The ionic liquids are also solid powders, see Para. [0174]. The gel matrix is then further deposited on a conductive, nickel, or carbon surface, see Para. [0141]. Therefore, a gel matrix carrier composed of about 1 wt % to about 30 wt % of solid carbon, about “0 wt % to about 20 wt %” Na+, and about “0 wt % to about 20 wt %” of “transition metal” species is the ionic liquid carrier containing about 1 wt % to about 30 wt % of solid carbon, meeting:
Within the carbon content range based on 100% of the gel matrix ionic liquid carrier in instant application claim 1;
The gel matrix carrier “may comprise a mixture of two or more different ionic liquids”, “where two or more ionic liquids are encapsulated within the same gel matrix, the resultant mixture of ionic liquids may be a eutectic mixture”, such as 1-butyl-3-methylimidazolium as the cation and hexafluorophosphate as the anion, aka [C4mim][PF6], see Paras. [0061];[0117]-[0127], meeting the first functional ionic liquid in instant application claim 1;
The second ionic liquid cation, such as tetrabutylphosphonium, where R1-R4 are each separately butyl, and the anion is “one or more anions selected from the group consisting of bromide, chloride, iodide, bis(trifluoromethylsulfonyl)imide, bis(fluorosulfonyl)imide, acetate, propionate, pentanoate, hexanoate, hexafluorophosphate, and tris(pentafluoro)trifluorophosphate, see Paras. [0061];[0117]-[0122], meeting:
The second functional ionic liquid in instant application claim 1;
Formula (3) in instant application claim 5;
The gel matrix carrier comprises “from about 1 wt % to about 30 wt % gel matrix precursor”, “electrolyte salt in the gel matrix may be from 0 wt % to about 20 wt %”, “each additional dissolved redox species in the gel matrix or film may be from 0 wt % to about 20 wt %”, and “the residual solvent amount in the gel or gelated ionic liquid film may be between about 0 wt % and about 25 wt %”, see Paras. [0130]-[0137]. Therefore, a gel matrix carrier with, for example, 15 wt% carbon + 20 wt% salt + 20 wt% redox species + 25 wt% solvent = A sum of ionic liquids of up to 20 wt% if only one redox species is added, meeting within the weight sum range of the first and second functional liquid as compared to the carrier in instant application claim 1 and in instant application claim 8;
“Where a mixture of two different ionic liquids (designated as ‘A’ and ‘B’) is used, where each of ‘A’ and ‘B’ is an ionic liquid as described in this section entitled ‘Ionic Liquids’ and ‘A’ and ‘B’ are different, the proportion by weight of ionic liquid ‘A’ in the gel matrix may be between about 0.1 wt. % and about 50 wt. %, and the proportion by weight of ionic liquid ‘B’ in the gel matrix may be between about 50 wt. % and about 99.9 wt. %”, i.e., either liquid A or B is the first or second ionic liquid, such as 66.66 wt% [C4mim][PF6] to 33.33 wt% tetrabutylphosphonium bromide, see Paras. [0061];[0118]-[0125], meeting within the weight ratio of the first ionic liquid to the second ionic liquid in instant application claim 1.
In regard to the instant application claim 1 functional limitations pertaining to “wherein the first functional ionic liquid is configured to decolorize a polyester fabric, and the second functional ionic liquid is configured to depolymerize the polyester fabric”. Castillo teaches a multifunction catalysts used in the recycle of polyester with ionic liquids, such as “pyrimidines, imidazoles, piperidines, pyrrolidine, pyridine, pyrazol, oxazol, triazol, thiazol, methimazol, benzotriazol, isoquinol and viologen-type compounds … preferred is an imidazole structure, which results in an imidazolium ion”, grafted to the catalyst in order to simultaneously decolorization and degrade/depolymerize, see Abstract; Paras. [0010]-[0018];[0030];[0036];[0041];[0050]-[0051]. Maschmeyer teaches the first functional ionic liquid, such as 1-butyl-3-methylimidazolium as the cation and hexafluorophosphate as the anion, aka [C4mim][PF6], and the second functional ionic liquid cation, such as tetrabutylphosphonium, see Paras. [0061];[0117]-[0127]. MPEP 2112.01 states ““[p]roducts of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.” As a result, the catalyst of Castillo in view of the ionic liquids of Maschmeyer will inherently possess the functional limitations regarding the first and second ionic liquids are “configured to” decolorize and depolymerize a polyester fabric, see MPEP 2112, meeting the “configured to” limitations in instant application claim 1.
In addition, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use of “configured to” decolorize and depolymerize polyester fabric is not considered a claim limitation.
In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the ionic liquids and catalyst of Castillo to use the carbon loaded catalysts and ionic liquids as taught by Maschmeyer with a reasonable predictability of success for the purpose of efficiently utilizing carbon complex ionic liquid carriers that are able to maintain stability at high temperatures and temperature variations, see Maschmeyer, Paras. [0042];[0137].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the catalyst complex and ionic liquids of Castillo by using the carbon complex ionic liquid carriers as taught by Maschmeyer with a reasonable predictability of success for the purpose of efficiently utilizing carbon complex ionic liquid carriers that are able to maintain stability at high temperatures and temperature variations, see Maschmeyer, Paras. [0042];[0137]; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Castillo and Maschmeyer both teach sodium-transition metal catalysts capable of maintaining stability at high temperatures, a person of ordinary skill in the art has good reason to modify Castillo by relying upon Maschmeyer before the effective filing date of the claimed invention for knowledge generally available within the high temperature carbon catalyst art, see MPEP 2143 B & G and 2141, for the benefit of efficiently utilizing carbon complex ionic liquid carriers that are able to maintain stability at high temperatures and temperature variations, see Maschmeyer, Paras. [0042];[0137]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[t]he 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”, such as the amount of carbon on the catalytic surface, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as a supported carbon-sodium-transition metal containing ionic liquid catalyst, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Conclusion
No claims are allowed.
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 Y. Lynnette Kelly-O'Neill whose telephone number is (571) 270-3456. The examiner can normally be reached Tuesday-Friday, 8:30 a.m. - 6:30 p.m., EST, with Flex Time.
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, Scarlett Yen-Ye Goon can be reached at (571) 270-5241. 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.
/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
Prosecution Insights