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 .
Response to Amendment
The amendment filed on 04/22/2026 has been entered. Claims 1-4, 6-12, 14 are pending in the application. Claims 5 and 13 are canceled. Applicant’s amendments to the claims have overcome each 112(b) rejection previously set forth in the office action mailed 01/23/2026. Outstanding and new issues brought about by the amendment are addressed in the Claim Objection and 112(b) sections below.
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive.
The affidavit filed 04/22/2026 has been fully considered but is not persuasive.
Applicant argues the catalysts in Song have strong alkali contents and total alkali contents outside of the claimed ranges in claim 1.
However, the instant specification on pg. 4 states “any specific numerical value, including the endpoints of a numerical range, described in the context of the present application is not restricted to the exact value thereof, but should be interpreted to further encompass all values close to said exact value, for example all values within ±5% of exact value”. In light of this, the claimed values should be interpreted as:
Claim 1 Total alkali content ±5%: 0.0304-0.483
Claim 1 Strong alkali content ±5%: 0.05795-0.0861
For comparison, the values in the affidavit are:
Example 2 Total alkali content: 0.56
Example 7 Total alkali content: 0.49
Example 2 Strong alkali content: 0.099
Example 7 Strong alkali content: 0.093
It is apparent that the instantly claimed total alkali content and strong alkali content and that taught by Song, especially example 7, are so close to each other that the fact pattern in the instant case is similar to that in In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) wherein, despite a “slight” difference in the ranges taught by the prior art and the claims of the application, the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above, and given that there is only a “slight” difference between the total alkali content and strong alkali content disclosed by the examples in Song and the total alkali content and strong alkali content disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the total alkali content and strong alkali content disclosed in Song is so close to that claimed that one of ordinary skill in the art before the effective filing date of the claimed invention would have expected the catalyst of both Song and the instant claim to have the same properties, and thereby would have arrived at the claimed invention, absent showings to the contrary or evidence of criticality associated with the total alkali content and strong alkali content.
Applicant argues when a certain amount of Fe element is added in the form of a ferrite, the resulting catalyst has higher activity, better selectivity, higher stability, and produces less benzene and toluene by-products compare to the case where the Fe element is added in the form of an oxide.
However, Song ‘419 discloses adding zinc ferrite to a catalyst in an overlapping amount as claimed, and discloses adding zinc ferrite to the iron-potassium-cerium-tungsten-magnesium catalytic system effectively improves the reduction resistance of the active phase KFO2 and the potassium storage phase KF11O17 significantly slowing down the loss rate of potassium during the catalytic dehydrogenation of ethylbenzene, and significantly improving the stability of the low-potassium catalyst under low water ratio conditions.
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 catalyst to further comprise 0.5-8 wt% of a ferrite in the composition of Song in order to improve the reduction resistance of the active phase KFeO₂ and the potassium storage phase KFe₁₁O₁₇, significantly slow down the loss rate of potassium during the catalytic dehydrogenation of ethylbenzene, and significantly improve the stability of the low-potassium catalyst under low water ratio conditions as taught by Song '419.
Applicant argues on bottom of pg. 10 – top of pg. 11 that the claimed invention enjoys unexpected stability and other properties over the prior art catalysts.
However, the composition disclosed by Song overlaps with the composition disclosed by the instant specification and the methods of making the catalysts are so similar, the retention rates would necessarily be characteristics of the catalyst disclosed by Song.
Applicant argues on pg. 11 that the characteristics of catalysts are strongly impacted by the method of preparation and other factors.
However, as discussed in the rejection of 01/23/2026, Applicant’s method of making and the method of making disclosed by Song are so similar that the characteristics of the catalyst disclosed by Song would necessarily be the same as those claimed.
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 1-4, 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al (CN 109569639 A, machine translation used for citations, cited in IDS 04/12/2023) in view of Song et al (CN 103028419 A, machine translation used for citations, cited in IDS 04/12/2023, hereinafter “Song ‘419”) and Kodakari et al (US 20180370872 A1).
Song discloses a dehydrogenation catalyst for preparing styrene ([0010]) which comprises the following components in weight percentage: 65-80% Fe2O3 ([0011]), 6-11% K2O ([0012]), 7-10% CeO2 ([0013]), 0.5-5% WO3 ([0014]), 0.5-5% CaO ([0015]), 0.5-5% BeO ([0016]), at least one selected from HfO2, ZrO2 or TiO2 with a content of 0.5 to 5% ([0017] meeting limitation “An iron-potassium-cerium-based composite oxide catalyst, comprising metal elements Fe, K, Ce, and M, wherein M is at least one selected from the group consisting of Group IIA metal elements, Group VIB metal elements other than Cr, and Group IVA metal elements”).
While Song does not explicitly disclose the catalyst total alkali content and strong alkali content measured by a Carbon Dioxide-Temperature Programmed Desorption (CO2-TPD) method, the composition disclosed by Song overlaps with the composition disclosed by the instant specification.
Song’s disclosure
65-80% Fe2O3 ([0011])
6-11% K2O ([0012])
7-10% CeO2 ([0013])
0.5-5% WO3 ([0014])
0.5-5% CaO ([0015]), 0.5-5% BeO ([0016])
at least one selected from HfO2, ZrO2 or TiO2 with a content of 0.5 to 5% ([0017])
Instant application
66-80 wt.% of Fe2O3 (Pg. 6 line 18)
2.3-6 wt.% of K20 (Pg. 6 line 22)
6-12 wt.% of CeO2 (Pg. 6 line 26)
0.5-5 wt.% of WO3 (Pg. 7 line 29)
The Group IIA metal element comprised in the catalyst is not Mg (Pg. 6 line1-2)
0.05-0.5 wt% of HfO2 (Pg. 9 line 26)
Song’s method of making
Components and pore-forming agent mixed uniformly ([0024])
Water is added and kneaded ([0024])
Extrusion, drying and calcination ([0024])
Drying at 30-70 °C for 2-4 hours, then drying at 80-150 °C for 0.5-4 hours ([0027])
Calcination at 300-650 °C for 2-4 hours, then at 900-1000 °C for 2-4 hours ([0029])
Applicant’s method of making
Mixing components with a pore-forming agent (Pg. 12 lines 20-25)
Mixing with a solvent (Pg. 12 line 26) Stirred with a kneader (Pg. 19 Example 1)
Extruded, dried, calcined (Pg. 19 Example 1)
Dried at 55 °C for 2 hours, heated to 135 °C and dried for 3 hours (Pg. 19 Example 1)
Calcined at 455 °C for 3 hours, then heated to 930 °C for 3 hours (Pg. 19 Example 1)
Therefore, since the composition of the catalyst disclosed by Song and the catalyst claimed are very similar, the total alkali content and strong alkali content claimed would necessarily be present in the catalyst disclosed by Song.
Song does not disclose wherein the catalyst comprises 0.5-8 wt% of a ferrite selected from a group consisting of manganese ferrite, zinc ferrite, copper ferrite, and nickel ferrite, wherein the catalyst has a K2O content of 2.3-5.5 wt%, based on the total weight of the catalyst.
Song ‘419 discloses a catalyst for the dehydrogenation of ethylbenzene under low water ratio conditions ([0009]) comprising the following components by weight percentage ([0010]): 69-81% Fe2O3 ([0011]); 4-9% K2O ([0012]); 6-11% CeO2 ([0013]); 1-5% WO3 ([0014]); 0.5-5% MgO ([0015]). Of the iron oxide used, 2 to 10% by weight comes from zinc ferrite ([0018]). By adding zinc ferrite to the iron-potassium-cerium-tungsten-magnesium catalytic system, effectively improves the reduction resistance of the active phase KFeO2 and the potassium storage phase KFe11O17, significantly slowing down the loss rate of potassium during the catalytic dehydrogenation of ethylbenzene, and significantly improving the stability of the low-potassium catalyst under low water ratio conditions ([0029]).
2 to 10% of 69-81% is equivalent to 1.4-8.1% by weight.
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 taught by Song ‘419 (1.4-8.1% by weight) overlaps with the claimed range (0.5-8 wt%). Therefore, the range in Song ‘419 renders obvious the claimed range.
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 catalyst to further comprise 0.5-8 wt% of a ferrite in the composition of Song in order to improve the reduction resistance of the active phase KFeO2 and the potassium storage phase KFe11O17, significantly slow down the loss rate of potassium during the catalytic dehydrogenation of ethylbenzene, and significantly improve the stability of the low-potassium catalyst under low water ratio conditions as taught by Song ‘419.
Kodakari discloses a catalyst which contains iron, potassium, and cerium, and at least one rare earth element other than cerium (abstract). The catalyst comprises potassium in an amount of 1 to 50% by weight calculated as K2O…relative to 100% by weight of the total amount of the catalyst ([0039]). An object of the present invention is to provide a catalyst which is highly active in the dehydrogenation reaction of an alkylaromatic hydrocarbon in the presence of steam ([0023]).
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 taught by Kodakari (1 to 50%) overlaps with the claimed range (2.3-5.5 wt%). Therefore, the range in Kodakari renders obvious the claimed range.
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 catalyst to have a K2O content of 2.3-5.5 wt%, based on the total weight of the catalyst in the composition of Song in order for the catalyst to be highly active in the dehydrogenation reaction of an alkylaromatic hydrocarbon in the presence of steam as taught by Kodakari.
Regarding claim 2, Song in view of Song ‘419 and Kodakari discloses all the limitations in the claims as set forth above including Song discloses a dehydrogenation catalyst for preparing styrene ([0010]) which comprises the following components in weight percentage: 65-80% Fe2O3 ([0011]), 6-11% K2O ([0012]), 7-10% CeO2 ([0013]), 0.5-5% WO3 ([0014] Group VIB metal other than Cr), 0.5-5% CaO ([0015] Group IIA metal element), 0.5-5% BeO ([0016] Group IIA metal element).
Regarding claim 3, Song in view of Song ‘419 and Kodakari discloses all the limitations in the claims as set forth above including Song discloses a dehydrogenation catalyst for preparing styrene ([0010]) which comprises the following components in weight percentage: 65-80% Fe2O3 ([0011]), 6-11% K2O ([0012]), 7-10% CeO2 ([0013]), 0.5-5% WO3 ([0014] the Group VIB metal element in the catalyst is W only), 0.5-5% CaO ([0015]) 0.5-5% BeO ([0016])
Song further discloses no binder is added during the catalyst preparation process ([0023]).
Regarding claim 4, Song in view of Song ‘419 and Kodakari discloses all the limitations in the claims as set forth above. While Song in view of Song ‘419 and Kodakari does not explicitly disclose “one of the following characteristics: after 1500 hours of reaction under conditions including a pressure of -45 kPa, a mass space velocity of ethylbenzene of 0.75 h-1, a temperature of 600 °C, and a weight ratio of water to ethylbenzene of 0.9, a retention rate of the crushing strength of the catalyst is 80% or higher;
after 1500 hours of reaction under conditions including a pressure of -45 kPa, a mass space velocity of ethylbenzene of 0.75 h-1, a temperature of 600 °C, and a weight ratio of water to ethylbenzene of 0.9, a retention rate of the total alkali content of the catalyst is 82% or higher, and a retention rate of the strong alkali content of the catalyst is 80% or higher;
and the catalyst has a reduction completion temperature of 730 °C or higher according to the H2-TPR test”,
the composition disclosed by Song overlaps with the composition disclosed by the instant specification and the methods of making the catalysts are so similar, the limitations of claim 4 would necessarily be characteristics of the catalyst disclosed by Song.
Song’s disclosure
65-80% Fe2O3 ([0011])
6-11% K2O ([0012])
7-10% CeO2 ([0013])
0.5-5% WO3 ([0014])
0.5-5% CaO ([0015]), 0.5-5% BeO ([0016])
at least one selected from HfO2, ZrO2 or TiO2 with a content of 0.5 to 5% ([0017])
Instant application
66-80 wt.% of Fe2O3 (Pg. 6 line 18)
2.3-6 wt.% of K20 (Pg. 6 line 22)
6-12 wt.% of CeO2 (Pg. 6 line 26)
0.5-5 wt.% of WO3 (Pg. 7 line 29)
The Group IIA metal element comprised in the catalyst is not Mg (Pg. 6 line1-2)
0.05-0.5 wt% of HfO2 (Pg. 9 line 26)
Song’s method of making
Components and pore-forming agent mixed uniformly ([0024])
Water is added and kneaded ([0024])
Extrusion, drying and calcination ([0024])
Drying at 30-70 °C for 2-4 hours, then drying at 80-150 °C for 0.5-4 hours ([0027])
Calcination at 300-650 °C for 2-4 hours, then at 900-1000 °C for 2-4 hours ([0029])
Applicant’s method of making
Mixing components with a pore-forming agent (Pg. 12 lines 20-25)
Mixing with a solvent (Pg. 12 line 26) Stirred with a kneader (Pg. 19 Example 1)
Extruded, dried, calcined (Pg. 19 Example 1)
Dried at 55 °C for 2 hours, heated to 135 °C and dried for 3 hours (Pg. 19 Example 1)
Calcined at 455 °C for 3 hours, then heated to 930 °C for 3 hours (Pg. 19 Example 1)
Regarding claim 6, Song in view of Song ‘419 and Kodakari discloses all the limitations in the claims as set forth above including Song discloses a dehydrogenation catalyst for preparing styrene ([0010]) which comprises the following components in weight percentage: 65-80% Fe2O3 ([0011]), 6-11% K2O ([0012]), 7-10% CeO2 ([0013]), 0.5-5% WO3 ([0014]), 0.5-5% CaO ([0015]), 0.5-5% BeO ([0016]), at least one selected from HfO2, ZrO2 or TiO2 with a content of 0.5 to 5% ([0017]).
Kodakari discloses the catalyst comprises potassium in an amount of 1 to 50% by weight calculated as K2O…relative to 100% by weight of the total amount of the catalyst ([0039]).
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 taught by Song (65-80% Fe2O3) overlaps with the claimed range (66-80 wt%). Therefore, the range in Song renders obvious the claimed range.
In the instant case, the range taught by Song (7-10% CeO2) overlaps with the claimed range (6-12 wt%). Therefore, the range in Song renders obvious the claimed range.
In the instant case, the range taught by Song (0.5-5% WO3, 0.5-5% CaO, 0.5-5% BeO) overlaps with the claimed range (a content of the oxide of the metal element M of 2-16 wt%). Therefore, the range in Song renders obvious the claimed range.
In the instant case, the range taught by Kodakari (1-50%% K2O) overlaps with the claimed range (2.3-5.5 wt%). Therefore, the range in Kodakari renders obvious the claimed range.
Regarding claim 7, Song in view of Song ‘419 and Kodakari discloses all the limitations in the claims as set forth above including Song discloses a dehydrogenation catalyst for preparing styrene ([0010]) which comprises the following components in weight percentage: at least one selected from HfO2, ZrO2 or TiO2 with a content of 0.5 to 5% ([0017] meeting limitation “the catalyst further comprises 0.05-0.5 wt% of a Group IVB metal oxide based on the total weight of the catalyst”).
Song ‘419 discloses a catalyst for the dehydrogenation of ethylbenzene under low water ratio conditions ([0009]) comprising the following components by weight percentage ([0010]): 69-81% Fe2O3 ([0011]); 4-9% K2O ([0012]); 6-11% CeO2 ([0013]); 1-5% WO3 ([0014]); 0.5-5% MgO ([0015]). Of the iron oxide used, 2 to 10% by weight comes from zinc ferrite ([0018]).
2 to 10% of 69-81% is equivalent to 1.4-8.1% by weight.
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 taught by Song ‘419 (1.4-8.1% by weight) overlaps with the claimed range (1-7 wt%). Therefore, the range in Song ‘419 renders obvious the claimed range.
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 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
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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