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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, claim 1 recites “contacting a hydrocarbon feed having from 2 to 30 or more carbon atoms comprising dehydrogenatable hydrocarbon at hydrocarbon conversion conditions comprising a temperature from about 200°C (392°F) to 1000°C (1832°F), a pressure from 25 kPa (3.6 psia) to about 2550 kPa (370 psia) with a catalytic composite to generate at least one product”, it is noted that instant specification does not describe contacting a hydrocarbon feed having from 2 to 30 or more carbon atoms including any dehydrogenatable hydrocarbon ( any hydrocarbon compound comprising 2 to 30 carbon atoms and hydrogen atom(s) with another functional group, atoms) at hydrocarbon conversion conditions comprising a temperature from about 200°C (392°F) to 1000°C (1832°F), a pressure from 25 kPa (3.6 psia) to about 2550 kPa (370 psia) with a catalytic composite to generate at least one product, i.e., instant specification does not describe all dehydrogenatable hydrocarbon conversion as that of instantly claimed being performed under such claimed conditions. Rather instant specification only describes paraffins specific hydrocarbon conversion – i.e. dehydrogenation process being performed under such claimed condition (see published application US20230201805 para. [0036], [0039]), but such claimed hydrocarbon conversion encompasses any hydrocarbon conversion process with any dehydrogenatable hydrocarbons containing 2 to 30 carbon atoms, such as hydrodesulfurization or alkylation or reforming etc. processes, which are completely different hydrocarbon conversion processes as compared to the described paraffins dehydrogenation process. Therefore, the applicant does not have the possession of such claimed subject matter at the time of the invention being filed. All claim 1’s depending claims are rejected for similar reasons.
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.
Claim 1-6 and 9-10 are rejected under 35 U.S.C. 103 as obvious over Uzio (US6498280) in view of Kowaleski (US20090062588).
Uzio teaches a dehydrogenation process (i.e. a hydrocarbon conversion process) comprising contacting a hydrocarbon feed of n-paraffin containing 3 to 22 carbon atoms under pressure range 0.02 to 2 MPa (i.e. 20-2000 KPa), preferably 0.05 to 0.5 MPa ( i.e. 50-500 KPa), and a temperature of 300 to 800 °C to generate at least one product (col. 5 lines 45-61, example 8 catalyst A, B, C, D, table in col. 7 and col. 8), wherein the catalytic composite comprises a first group VIII noble metal Pt, a second component of lithium, a third component of tin, supported on an alumina support (example 1-4, claim 20-22). Uzio expressly teaches using a delta alumina as alumina support, i.e. 100% of delta alumina and 0% of theta alumina (example 1-4) -- apparently more than 95% by weight of delta alumina and no greater than 5% of theta alumina-- as that of instant claimed.
As for the claimed “an alumina support comprising delta alumina having an X-ray diffraction pattern comprising at least three 2ө diffraction angle peaks between 32.0° and 70.0°, wherein a first 2ө diffraction angle peak is at 32.7°±0.4°, a second 2ө diffraction angle peak is at 50.8°±0.4°, and a third 2ө diffraction angle peak is at 66.7°±0.8°, and wherein the second 2ө diffraction angle peak has an intensity of less than about 0.06 times the intensity of the third 2ө diffraction angle peak”, Uzio already teaches a same or substantially the same delta alumina as that of instantly claimed (see instant application published US20230201805 para. [0012]-[0014] showing XRD pattern for delta alumina), therefore, same or substantially the same X-ray diffraction pattern, i.e. a same or substantially the same X-ray diffraction pattern having same or substantially the same peaks of at least three 2ө diffraction angle peaks between 32.0° and 70.0°, wherein a first 2ө diffraction angle peak is at 32.7°±0.4°, a second 2ө diffraction angle peak is at 50.8°±0.4°, and a third 2ө diffraction angle peak is at 66.7°±0.8°, and corresponding same or substantially the same intensities with such peaks, i.e. the second 2ө diffraction angle peak has an intensity of less than about 0.06 times the intensity of the third 2ө diffraction angle peak as those of instantly claimed would be expected.
As for the claimed “wherein the alumina support is formed by calcined an alumina precursor to a temperature from 800 ºC to about 1000 ºC”, this is a product process limitation, such “calcining alumina precursor calcined about 800 ºC to about 1000 ºC” is only used to obtain a final delta alumina support having more than 95% of combination of delta alumina and no greater than 5% of theta alumina. Even 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 (See § MPEP 2113). In this case, Uzio already teaches a same or substantially the same delta alumina support as that of instant application -- comprising 100% of delta alumina and 0% of theta alumina.
Regarding claim 1, Uzio does not expressly teach the hydrocarbon feed including alkylaromatics, naphthenes or olefins.
However, Kowaleski teaches dehydrogenable hydrocarbon contains paraffins (para. [0033]-[0034]), or alkyl substituted benzene ( i.e. alkylaromatics), aromatic compounds such as alkyl substituted naphthalene ( i.e. naphthene), 1-butene (i.e. an olefin containing 4 carbon atoms), 3-methyl-1-butene (i.e. an olefin containing 5 carbon atoms) (para. [0035]).
It would have been obvious for one of ordinary skill in the art to adopt such well-known dehydrogenable hydrocarbon as shown by Kowaleski to modify the hydrocarbon feed of Uzio because combining such well-known dehydrogenable hydrocarbon material as shown by Kowaleski into Uzio disclosed hydrocarbon stream according to known dehydrogenation method would yield predictable results (see MPEP § 2143 KSR).
Regarding claim 2-5, Uzio already teaches a same or substantially the same delta alumina support as that of instantly claimed, therefore, same or substantially the same X-ray diffraction pattern as that of instantly claimed, i.e. an same or substantially the same X-ray diffraction pattern having same or substantially the same highest third 2ө diffraction angle peak, first 2ө diffraction angle being an intensity of 0.3 to 0.7 of the third 2ө diffraction angle peak intensity, having a single peak between the diffraction angles (2ө) of 50°±0.4° to 52°±0.4°, having a peak splitting between the diffraction angles (2ө) of about 43°±0.4° to about 49°±0.4° as those of instantly claimed would be expected.
Regarding claim 6, Uzio teaches delta alumina having a specific surface area of 130 m2/g (example 1). Alternatively, Uzio also discloses the catalyst support supports are preferably transition aluminas or silicas with a specific surface area in the range 25 to 300 m2 /g, preferably in the range 80 to 200 m2 /g, wherein such specific surface area overlapping with that of instantly claimed surface area thus renders a prima facie case of obviousness (see MPEP§ 2144. 05 I).
Regarding claim 9, Uzio specifically discloses 0.30% or 0.31% by weight of Pt, 0.33% or 0.32% by weight of tin, 0.35% or 0.60% by weight of lithium (example 1-4). Uzio also broadly discloses the noble metal from group 8, 9, 10 elements content in the range 0.01% to 5% by weight with respect to the total catalyst weight, group 14 element content in the range 0.005% to 3% by weight with respect to the total catalyst weight, while the alkali metal content in the range 0.05% to 3% by weight with respect to the total catalyst weight (col. 4 lines 14-37, claim 4).
Regarding claim 10, Uzio also teaches the noble metals preferably platinum; at least one group 14 metal is selected from tin, germanium and lead, preferably tin; at least one alkali or alkaline-earth metal, preferably potassium (col. 4 lines 7-36, claim 1, 6).
Claim 1-6 and 9-10 are rejected under 35 U.S.C. 103 as obvious over Uzio (US6498280) in view of Liu (CN108855024A) and Kowaleski (US20090062588).
Uzio has been described as above.
In arguendo about Uzio not expressly teaching calcining an alumina precursor to a temperature of about 800 ºC to 1000 ºC, Liu teaches alumina carrier being calcined under 850 to 900 ºC to obtain delta-alumina carrier (para. [0018], [0032], [0033], example 1-3), i.e. a final delta alumina carrier having more than 95% of delta alumina and no more than 5% of theta alumina. Furthermore, Liu teaches a same calcining temperature range calcining an alumina precursor as that of instantly claimed, therefore, same alumina product, i.e. a final alumina carrier having more than 95% of delta alumina and no more than 5% of theta alumina as that of instantly claimed is expected.
It would have been obvious for one of ordinary skill in the art to adopt calcining temperature of 850 to 900 º C to obtain delta-alumina carrier as shown by Liu to practice the delta-alumina of Uzio because by doing so can help provide a delta-alumina carrier having fewer surface-active groups and high mechanical strength thus improve the catalytic activity of the unit metal active site as suggested by Liu (para. [0032], [0033]). Since Liu disclosed final alumina carrier being same or substantially the same as that of instantly claimed, therefore, it would have been obvious for one of ordinary skill in the art to expect that such same or substantially the same alumina carrier as that of instantly claimed would have same or substantially the same X-ray diffraction patter, i.e. having a same X-ray diffraction pattern comprising at least three 2ө diffraction angle peaks between 32.0° and 70.0°, wherein a first 2ө diffraction angle peak is at 32.7°±0.4°, a second 2ө diffraction angle peak is at 50.8°±0.4°, and a third 2ө diffraction angle peak is at 66.7°±0.8°, and wherein the second 2ө diffraction angle peak has an intensity of less than about 0.06 times the intensity of the third 2ө diffraction angle peak as that of instantly claimed.
As for the claimed “wherein the alumina support is formed by calcined an alumina precursor to a temperature from 800 ºC to about 1000 ºC”, this is a product process limitation, such “calcining alumina precursor calcined about 800 ºC to about 1000 ºC” is only used to obtain a final delta alumina support having more than 95% of combination of delta alumina and no greater than 5% of theta alumina. Even 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 (See § MPEP 2113). In this case, Liu already teaches a same or substantially the same delta alumina support as that of instant application -- comprising 100% of delta alumina and 0% of theta alumina.
Kowaleski have been described as above.
It would have been obvious for one of ordinary skill in the art to adopt such well-known dehydrogenable hydrocarbon as shown by Kowaleski to modify the hydrocarbon feed of Uzio because combining such well-known dehydrogenable hydrocarbon material as shown by Kowaleski into Uzio disclosed hydrocarbon stream according to known dehydrogenation method would yield predictable results (see MPEP § 2143 KSR).
Regarding claim 2-6 and 9-10, such limitations are met as discussed above.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19-21 of U.S. Patent No. 10737244 in view of Liu (CN108855024A) and Kowaleski (US20090062588). Although the claims at issue are not identical, they are not patentably distinct from each other because US’244 teaches a substantially the same hydrocarbon conversion process of contacting a substantially the same catalyst composite having a first component selected from the group consisting of Group VIII noble metals and mixtures thereof, a second component selected from the group consisting of alkali metals or alkaline-earth metals and mixtures thereof, and a third component selected from the group consisting of tin, germanium, lead, indium, gallium, thallium and mixtures thereof; and a support wherein the support is selected from the group consisting of theta-alumina, gamma-alumina, eta-alumina, delta-alumina, and mixtures thereof (claim 10). It would have been obvious for one of ordinary skill in the art “obvious to try” delta-alumina as support because choosing delta alumina from a finite number of identified, predictable solutions of transition alumina as alumina support for providing a desired dehydrogenation catalyst having a reasonable expectation of success. US’244 does not expressly teach the alumina support having an X-ray diffraction pattern comprising at least three 2ө diffraction angle peaks between 32.0° and 70.0°, wherein a first 2ө diffraction angle peak is at 32.7°±0.4°, a second 2ө diffraction angle peak is at 50.8°±0.4°, and a third 2ө diffraction angle peak is at 66.7°±0.8°, and wherein the second 2ө diffraction angle peak has an intensity of less than about 0.06 times the intensity of the third 2ө diffraction angle peak; or the recited hydrocarbon stream include alkylaromatics, naphtenes and olefins. However, US’244 already teaches a same or substantially the same delta alumina support ( i.e. 100% of delta alumina and 0% of theta alumina) as that of instant application, therefore, same or substantially the same X-ray diffraction pattern, i.e. an same or substantially the same X-ray diffraction pattern having same or substantially the same peaks and corresponding same or substantially the same intensities with such peaks etc. as that of instantly claimed is expected. Furthermore, Liu teaches alumina carrier being calcined under 850 to 900 Cº to obtain delta-alumina (100% of delta alumina and 0% of theta alumina) (para. [0018], [0032], [0033], example 1-3). It would have been obvious for one of ordinary skill in the art to adopt calcining temperature of 850 to 900 Cº to obtain delta-alumina carrier as shown by Liu to practice the delta-alumina of US’244 because by doing so can help provide a delta-alumina carrier having fewer surface-active groups and high mechanical strength thus improve the catalytic activity of the unit metal active site as suggested by Liu (para. [0032], [0033]). Since Liu disclosed alumina carrier being calcined at the same temperature as that of instant application, therefore, it would have been obvious for one of ordinary skill in the art to expect that such same calcining temperature would lead to a same delta alumina as that of instant application, i.e. the delta alumina carrier having a same X-ray diffraction pattern comprising at least three 2ө diffraction angle peaks between 32.0° and 70.0°, wherein a first 2ө diffraction angle peak is at 32.7°±0.4°, a second 2ө diffraction angle peak is at 50.8°±0.4°, and a third 2ө diffraction angle peak is at 66.7°±0.8°, and wherein the second 2ө diffraction angle peak has an intensity of less than about 0.06 times the intensity of the third 2ө diffraction angle peak as that of instantly claimed. Kowaleski has been described as above. It would have been obvious for one of ordinary skill in the art to adopt such well-known dehydrogenable hydrocarbon as shown by Kowaleski to modify the hydrocarbon feed of US’ 244 because combining such well-known dehydrogenable hydrocarbon material as shown by Kowaleski into US’ 244 disclosed hydrocarbon stream according to known dehydrogenation method would yield predictable results (see MPEP § 2143 KSR).
Claims 1-6 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15-18 of U.S. Patent No. 10646855 in view of Liu (CN108855024A) and Kowaleski (US20090062588). Although the claims at issue are not identical, they are not patentably distinct from each other because US’855 teaches a substantially the same catalyst composite comprising a first component selected from the group consisting of Group VIII noble metals and mixtures thereof, a second component selected from the group consisting of alkali metals or alkaline-earth metals and mixtures thereof, and a third component selected from the group consisting of tin, germanium, lead, indium, gallium, thallium and mixtures thereof; and a support wherein the support the support is selected from the group consisting of theta-alumina, gamma-alumina, eta-alumina, delta-alumina, and mixtures thereof (claim 10). It would have been obvious for one of ordinary skill in the art “obvious to try” delta-alumina as support because choosing delta alumina from a finite number of identified, predictable solutions of transition alumina as alumina support for providing a desired dehydrogenation catalyst having a reasonable expectation of success. US’855 does not expressly teach the alumina support having an X-ray diffraction pattern comprising at least three 2ө diffraction angle peaks between 32.0° and 70.0°, wherein a first 2ө diffraction angle peak is at 32.7°±0.4°, a second 2ө diffraction angle peak is at 50.8°±0.4°, and a third 2ө diffraction angle peak is at 66.7°±0.8°, and wherein the second 2ө diffraction angle peak has an intensity of less than about 0.06 times the intensity of the third 2ө diffraction angle peak. However, US’855 already teaches a same or substantially the same delta alumina support as that of instantly claimed, therefore, same or substantially the same X-ray diffraction pattern, i.e. an same or substantially the same X-ray diffraction pattern having same or substantially the same peaks and corresponding same or substantially the same intensities with such peaks etc. as that of instantly claimed is expected. It would have been obvious for one of ordinary skill in the art to adopt calcining temperature of 850 to 900 Cº to obtain delta-alumina carrier (i.e. 100% of delta-alumina and 0% of theta alumina) as shown by Liu to practice the delta-alumina of US’855 because by doing so can help provide a delta-alumina carrier having fewer surface-active groups and high mechanical strength thus improve the catalytic activity of the unit metal active site as suggested by Liu (para. [0032], [0033]). Since Liu disclosed alumina carrier being calcined at the same temperature as that of instant application, therefore, it would have been obvious for one of ordinary skill in the art to expect that such same calcining temperature would lead to a same delta alumina as that of instant application, i.e. the delta alumina carrier having a same X-ray diffraction pattern comprising at least three 2ө diffraction angle peaks between 32.0° and 70.0°, wherein a first 2ө diffraction angle peak is at 32.7°±0.4°, a second 2ө diffraction angle peak is at 50.8°±0.4°, and a third 2ө diffraction angle peak is at 66.7°±0.8°, and wherein the second 2ө diffraction angle peak has an intensity of less than about 0.06 times the intensity of the third 2ө diffraction angle peak as that of instantly claimed. Kowaleski has been described as above. It would have been obvious for one of ordinary skill in the art to adopt such well-known dehydrogenable hydrocarbon as shown by Kowaleski to modify the hydrocarbon feed of US’855 because combining such well-known dehydrogenable hydrocarbon material as shown by Kowaleski into US’855 disclosed hydrocarbon stream according to known dehydrogenation method would yield predictable results (see MPEP § 2143 KSR).
Response to Arguments
Applicant's arguments filed on 01/02/2026 have been fully considered but they are not persuasive.
In response to applicant’s arguments about Uzio not teaching the claimed alumina X-ray diffraction pattern, Uzio already teaches a same or substantially the same delta alumina support as that of instant application -- comprising 100% of delta alumina and 0% of theta alumina, which reads onto the instantly claimed “an alumina support comprises delta alumina in an amount greater than 95 wt% and theta alumina no more than 5 wt%. Since Uzio disclosed such alumina support having same or substantially the same delta alumina content and same or substantially the same theta alumina content as that of instantly claimed, product of identical composition cannot have mutually exclusive properties (See MPEP 2112. 01 II), therefore, Uzio disclosed same or substantially the same theta alumina support would have same or substantially the same XRD pattern with the second 2Ɵ diffraction peak having an intensity of less than 0.06 times of the intensity of the third 2Ɵ diffraction peak as that of instantly claimed.
In response to applicant’s arguments about XRD being a useful material to differentiate materials which appear to have same or similar formulas using XRD diffraction pattern between different rule as compared to anatase TiO2 or eptaxial TiO2 form etc. (remarks page 4 last para.-page 5 2nd para.), it is noted that Uzio does not only teaches the alumina material appears to have same or similar formulas, rather teaches a same or substantially the same alumina support comprising delta alumina in the amount greater than 95 wt.% and theta alumina in amount no greater than 5 % by weight, and such provided arguments does not demonstrate Unizo disclosed alumina support not having the same alumina support comprising delta alumina in the amount greater than 95 wt.% and theta alumina in amount no greater than 5 % by weight. Nor such TiO2 references demonstrate that Uzio disclosed delta alumina support not having the instantly claimed peak features ( e.g. XRD pattern with the second 2Ɵ diffraction peak having an intensity of less than 0.06 times of the intensity of the third 2Ɵ diffraction peak) as applicant alleged either.
Similar reasons for sustaining double patenting rejections.
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 JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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/JUN LI/ Primary Examiner, Art Unit 1732
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