DETAILED ACTIONNotice 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 Objections
Claim 27 is objected to because of the following informalities:
In Claim 27, line 2, remove the comma following “and/or”.
Appropriate correction is required.
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 1-6 and 23-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “fully sulfurized” in claim 1 is a relative term which renders the claim indefinite. The term “fully” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no reference value, or standard for comparison, for “fully”. For purposes of examination, “fully sulfurized” will be interpreted as anything that meets the limitation of Claim 1, lines 6-8, wherein “the adsorbent has a sulfur content, calculated as elemental sulfur, of 3 wt% or less but 0.4 wt% or more, based on the total weight of the adsorbent”.
Claims 2-6 and 23-27 are rejected due to their dependence on claim 1.
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 1-6 and 23-27 are rejected under 35 U.S.C. 103 as being unpatentable over Koyama et al. (EP1060794A1) in view of Awadh et al. (US 2020/0254425 A1).
With regard to Claim 1, Koyama teaches an adsorbent comprising a porous material and a hydrogenation active metal supported on the porous material (Paragraph 0007, a hydrorefining catalyst is provided comprising a hydrogenation active metal component supported on a refractory porous carrier).
Koyama teaches the adsorbent having an average pore diameter of 2-15 nm, and a specific surface area of 200-400 m2/g (Paragraph 0016, The median pore diameter of the hydrorefining catalyst of the present invention with pores having a pore diameter determined by the nitrogen adsorption method of…preferably 8 to 13 nm… The specific surface area of the catalyst of the present invention is 150 m2/g or greater, preferably 170 to 300 m2/g, particularly 180 to 280 m2/g).
As set forth in MPEP 2144.05.I, 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).
Koyama teaches the hydrogenation active metal present in an amount, calculated as metal oxide, of 2.5 wt% or less, based on the total weight of the adsorbent (Paragraph 0026, One or a combination of 2 or more from among elements of…molybdenum, tungsten, nickel and cobalt, is preferable as the hydrogenation active metal component. It is preferred that these elements be contained in the catalyst in the form of a metal, oxide, or sulfide. The content of these elements in the entire catalyst should be within a range of 0.1 wt% to 20 wt%, particularly a range of 1 wt% to 10 wt%, as the total metal weight).
As set forth in MPEP 2144.05.I, 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).
Koyama teaches the adsorbent wherein the porous material is at least one selected from the group consisting of activated carbon, inorganic refractory oxides and molecular sieves (Paragraph 0020, The y-alumina carrier is preferably contained in the catalist in 70 wt% or more, particularly 80 wt% or more catalyst weight. This catalyst can comprise silica-alumina, zeolite, boria, titania, zirconia, magnesia and other compound oxides in addition to the y-alumina).
Koyama teaches the adsorbent wherein the hydrogenation active metal is at least one selected from the group consisting of Fe, Co, Ni, Cu, Zn, Cr, Mo and W (Paragraph 0026, One or a combination of 2 or more from among elements of Group 6, Group 8, Group 9 and Group 10 of the Periodic Table, particularly molybdenum, tungsten, nickel and cobalt, is preferable as the hydrogenation active metal component).
Koyama is silent to the fully sulfurized adsorbent having a sulfur content, calculated as elemental sulfur, of 3 wt% or less but 0.4 wt% or more, based on the total weight of the adsorbent.
The presence of sulfur in the adsorbent is important because it determines the level of catalytic activity. Awadh teaches the catalytic materials being in sulfide form following presulfidation treatment increases catalytic activity (Paragraph 0103, This step may convert active catalyst materials in oxide form to their corresponding sulfide form, which may be catalytically more active than the oxide form). However, too much sulfur content would result in excess contamination of the treated hydrocarbon feedstock.
It would be obvious to one of ordinary skill in the art to determine the extent of sulfurization, and by extension, the amount of sulfur in the adsorbent, as claimed in Claims 25 and 26, in order to increase catalytic activity and avoid excess contamination. See MPEP 2144.05.II.
While Koyama in view of Awadh does not explicitly disclose the composition wherein the adsorbent has a hydrogen sulfide retention time of 30-300 min, the composition of Koyama in view of Awadh appears to be substantially identical to the instantly claimed composition of Claim 1 and thus is considered to be configured to be used as claimed. See MPEP 2111.02.
With regard to Claim 2, Koyama teaches the adsorbent wherein the hydrogenation active metal is present as an oxide/sulfide (Paragraph 0026, One or a combination of 2 or more from among elements of…molybdenum, tungsten, nickel and cobalt, is preferable as the hydrogenation active metal component. It is preferred that these elements be contained in the catalyst in the form of a metal, oxide, or sulfide).
With regard to Claim 3, while Koyama in view of Awadh does not explicitly disclose the composition wherein the hydrogen sulfide retention time is 60-180 min, the composition of Koyama in view of Awadh appears to be substantially identical to the instantly claimed composition of Claim 1 and thus is considered to be configured to be used as claimed. See MPEP 2111.02.
With regard to Claim 4, Koyama teaches the adsorbent wherein the porous material is present in an amount of 90 wt% or more, based on the total weight of the adsorbent (Paragraph 0020, The y-alumina carrier is preferably contained in the catalist in 70 wt% or more, particularly 80 wt% or more catalyst weight. This catalyst can comprise silica-alumina, zeolite, boria, titania, zirconia, magnesia and other compound oxides in addition to the y-alumina).
As set forth in MPEP 2144.05.I, 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).
With regard to Claim 5, Koyama teaches the adsorbent having a particle size of 0.5-5.0 mm (Paragraph 0025, Molding can be easily performed to pellet-shaped, honeycomb-shaped, etc., using a device such as a plunger-type extruder, screw-type extruder, etc…A molded article in the shape of a cylinder, hollow cylinder, column whose cross section has 3 or 4 lobes, etc., with a diameter of usually 0.5 to 6 mm, particularly 0.5 to 5 mm, is used).
With regard to Claim 6, Koyama is silent to an adsorption method, comprising an adsorption step of bringing the adsorbent according to claim 1 into contact with a liquid feedstock comprising hydrogen sulfide to continuously adsorb and desorb hydrogen sulfide.
Koyama is silent to a sulfurization step of subjecting the adsorbent to a sulfurization treatment before conducting the adsorption step.
Awadh teaches an adsorption method, comprising an adsorption step of bringing the adsorbent according to claim 1 into contact with a liquid feedstock comprising hydrogen sulfide to continuously adsorb and desorb hydrogen sulfide (Claim 13, contacting the hydrocarbon feedstock with a Ni/Mo hydrodesulfurization catalyst in the presence of H2 gas to convert at least a portion of the sulfur-containing compound into a mixture of H2S and a desulfurized product; and removing the H2S from the mixture thereby forming a desulfurized hydrocarbon stream; Paragraph 0091, Exemplary sulfur-containing compounds include, but are not limited to, H2S; Paragraph 0095, the hydrocarbon feedstock is in a liquid state and the hydrocarbon feedstock is mixed with the Ni/Mo hydrodesulfurization catalyst).
Awadh teaches a sulfurization step of subjecting the adsorbent to a sulfurization treatment before conducting the adsorption step (Claim 20, presulfiding the reduced Ni/Mo hydrodesulfurization catalyst with a sulfide-containing solution at a temperature of 250 to 500° C., prior to the contacting). Awadh explains this adsorption method is done to guarantee safety and efficiency of using crude oil as raw material and an energy source (Paragraph 0006, further desulfurization is required in order to guarantee safe and efficient utilization of these fuels).
Since the composition of claim 1 was rendered obvious over Koyama in view of Awadh (see Claim 1 rejection), the composition rendered obvious would be expected to behave in the same way as claimed. Therefore, it would have been obvious to bring the adsorbent according to claim 1 into contact with a liquid feedstock comprising hydrogen sulfide, with the expected result of continuously adsorbing and desorbing hydrogen sulfide.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Koyama to teach a sulfurization step of subjecting the adsorbent to a sulfurization treatment before conducting the adsorption step, as taught in Awadh, to guarantee safety and efficiency of using crude oil as raw material and an energy source.
With regard to Claim 23, Koyama teaches the adsorbent having an average pore diameter of 2-10 nm, and/or the adsorbent having a specific surface area of 250-400 m2/g (Paragraph 0016, The median pore diameter of the hydrorefining catalyst of the present invention with pores having a pore diameter determined by the nitrogen adsorption method of…preferably 8 to 13 nm… The specific surface area of the catalyst of the present invention is 150 m2/g or greater, preferably 170 to 300 m2/g, particularly 180 to 280 m2/g).
As set forth in MPEP 2144.05.I, 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).
Koyama teaches the hydrogenation active metal present in an amount, calculated as metal oxide of 1.5 wt% or less, based on the total weight of the adsorbent (Paragraph 0026, One or a combination of 2 or more from among elements of…molybdenum, tungsten, nickel and cobalt, is preferable as the hydrogenation active metal component. It is preferred that these elements be contained in the catalyst in the form of a metal, oxide, or sulfide. The content of these elements in the entire catalyst should be within a range of 0.1 wt% to 20 wt%, particularly a range of 1 wt% to 10 wt%, as the total metal weight).
As set forth in MPEP 2144.05.I, 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).
With regard to Claim 24, Koyama teaches the adsorbent wherein the hydrogenation active metal is present in an amount, calculated as metal oxide, of 0.05-1 wt%, based on the total weight of the adsorbent (Paragraph 0026, One or a combination of 2 or more from among elements of…molybdenum, tungsten, nickel and cobalt, is preferable as the hydrogenation active metal component. It is preferred that these elements be contained in the catalyst in the form of a metal, oxide, or sulfide. The content of these elements in the entire catalyst should be within a range of 0.1 wt% to 20 wt%, particularly a range of 1 wt% to 10 wt%, as the total metal weight).
As set forth in MPEP 2144.05.I, 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).
With regard to Claims 25 and 26, Koyama is silent to the adsorbent having a sulfur content, calculated as elemental sulfur, of 2 wt% or less but 0.5 wt% or more, and 2 wt% or less but 1.3 wt% or more, based on the total weight of the adsorbent.
The presence of sulfur in the adsorbent is important because it determines the level of catalytic activity. Awadh teaches the catalytic materials being in sulfide form following presulfidation treatment increases catalytic activity (Paragraph 0103, This step may convert active catalyst materials in oxide form to their corresponding sulfide form, which may be catalytically more active than the oxide form). However, too much sulfur content would result in excess contamination of the treated hydrocarbon feedstock.
It would be obvious to one of ordinary skill in the art to determine the extent of sulfurization, and by extension, the amount of sulfur in the adsorbent, as claimed in Claims 25 and 26, in order to increase catalytic activity and avoid excess contamination. See MPEP 2144.05.II.
With regard to Claim 27, Koyama teaches the adsorbent wherein the porous material is present in an amount of 98-99.5 wt%, based on the total weight of the adsorbent, and/or the porous material is at least one selected from the group consisting of alumina, silica, magnesia, zirconia and titania (Paragraph 0020, The y-alumina carrier is preferably contained in the catalist in 70 wt% or more, particularly 80 wt% or more catalyst weight. This catalyst can comprise silica-alumina, zeolite, boria, titania, zirconia, magnesia and other compound oxides in addition to the y-alumina).
As set forth in MPEP 2144.05.I, 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).
Koyama teaches the adsorbent wherein the hydrogenation active metal is at least one selected from Fe and Ni (Paragraph 0026, One or a combination of 2 or more from among elements of…molybdenum, tungsten, nickel and cobalt, is preferable as the hydrogenation active metal component).
Response to Arguments
Applicant’s arguments, see pages 11-14, filed September 15, 2025, with respect to the rejections of claims 1-5, 23-24, and 27 under 35 U.S.C. 103 over Koyama et al. (EP1060794A1) have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, Applicant's arguments with respect to the rejections of claims 6 and 25-26 under 35 U.S.C. 103 over Koyama et al. (EP1060794A1) in view of Awadh et al. (US 2020/0254425 A1) have been fully considered and are not persuasive. Furthermore, upon further consideration, new grounds of rejection of claims 1-5, 23-24, and 27 are made under 35 U.S.C. 103 over Koyama et al. (EP1060794A1) in view of Awadh et al. (US 2020/0254425 A1).
On page 12 of Applicant’s arguments, regarding Koyama, Applicant argues that “there is no evidence that the hydrorefining catalyst are fully sulfurized, much less the amount of sulfur in the claimed invention”. Furthermore, regarding Awadh, Applicant argues that Awadh teaches “chemically synthesizing H2S as a product from the raw material (H2 and sulfur-containing compound) at an active site on the hydrodesulfurization catalyst, rather than physically adsorbing H2S on the hydrodesulfurization catalyst”.
However, the composition of claim 1 was rendered obvious over Koyama in view of Awadh (see Claim 1 rejection). Therefore, the composition rendered obvious would be expected to behave in the same way as claimed in the method of claim 6. Furthermore, the Examiner notes that 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).
On pages 12-13 of Applicant’s arguments, Applicant argues that “the claimed invention demonstrates unexpected technical results. In particular, the claimed adsorbent, when used together with a hydrogenation catalyst/component, is capable of achieving temporary adsorption and temporary aggregation of hydrogen sulfide during liquid-phase hydrogenation, thereby reducing the concentration of hydrogen sulfide on the hydrogenation catalyst/component”.
However, these disclosed features are insufficient in establishing criticality of the claimed range of sulfur content in the amended Claim 1. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP 716.02(d).II. Applicant has not presented any data showing the criticality of any claimed range, let alone the claimed range of sulfur content. Furthermore, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979), see MPEP 2145.II.
Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). When following the suggestions of Awadh regarding sulfurization of the adsorbent (see Claim 6 rejection), the adsorbent of claim 1, since it is rendered obvious over Koyama in view of Awadh, would necessarily undergo a continuous hydrogen sulfide adsorption and desorption when contacted with a liquid hydrocarbon feedstock containing hydrogen sulfide as rendered obvious above.
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 ABDUL-RAHMAN YUSUF WALEED SMARI whose telephone number is (571)270-7302. The examiner can normally be reached M-Th 7:30-5, F 7:30-4.
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/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736