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 to claims 1 and 5, and new claims 15, submitted December 24, 2025 is acknowledge and entered.
Response to Arguments
Applicant’s arguments, see page 5, filed December 24, 2025, with respect to the objection of claim 5 have been fully considered and are persuasive in view of the amendment. The objection of claim 5 has been withdrawn.
Applicant’s arguments, see pages 5 - 6, filed December 24, 2025, with respect to the rejection of claims 1 – 14 under 35 USC 103 have been fully considered and are persuasive in view of the amendment and arguments presented. The rejection of claims 1 – 14 under 35 USC 103 has been withdrawn.
Claim Objections
Claim 15 is objected to because of the following informalities: line 11 between oxides and molybdenum the term “or” should be “of”. 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.
Claim 15 rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 15 recites: “(a)… the second catalyst comprises palladium salts, copper salts; oxides of bismuth, oxides of vanadium, oxides or molybdenum or combinations thereof”; and “(b)… the second catalyst comprises ceria, oxides of bismuth, oxides of vanadium, oxides of molybdenum, oxides of tellurium or combinations thereof”. However, in the above recitation for example in (b), it is unclear what is essential and what is meant. Specifically, whether or not three of a palladium salt, a copper salt and “a metal oxide of bismuth, vanadium, molybdenum, and a combination thereof” must be contained as essential components. For this reason, the claim is indefinite and lacks clarity.
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.
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.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Karim et al. (US 2019/0023640) in view of Dow Global Technologies (WO 2020/139599) and further in view of Karim et al. (US 6,143,928) (Karim 2); or Karim kin view of Dow Global Technologies (WO 2020139600) (Dow 2) , Chen et al. (Journal of Chemical Technology and Biotechnology, 2014) and further in view of Sai Eiki (JP 20161959897) Eiki.
The rejected claim covers, inter alia, a process comprising: Introducing a feed stream comprising hydrogen gas and a carbon-containing gas comprising carbon monoxide and carbon dioxide into a reaction zone of a first reactor; converting the feed stream into an intermediate stream comprising C2 to C4 hydrocarbons in the reaction zone in the presence of a first catalyst, wherein the intermediate stream further comprises carbon dioxide and wherein the first catalyst is a composite catalyst comprising a metal oxide catalyst component and a microporous catalyst component; and converting the intermediate stream into a product stream comprising C2 to C4 carboxylic acids in the presence of a second catalyst in a second reactor, wherein (a) the metal oxide catalyst component comprises gallium oxide and phase pure zirconium oxide, and the second catalyst comprises palladium salts, copper salts; oxides of bismuth, oxides of vanadium, oxides or molybdenum or combinations thereof, or (b) the metal oxide catalyst component is selected from gallium oxide, zinc-chromium mixed oxides, or copper-zinc-aluminum mixed oxides, and the second catalyst comprises ceria, oxides of bismuth, oxides of vanadium, oxides of molybdenum, oxides of tellurium or combinations thereof.
However, Karim discloses two stage catalytic processes for converting syngas to acetic acid, acrylic acid and/or propylene. (abstract). Specifically, the method of Karim comprises the method of producing acrylic acid and acetic acid comprising the steps of: a) providing a feed stream comprising syngas; b) contacting the feed stream with a first catalyst to produce a first product stream comprising C.sub.2-C.sub.3 olefins and/or C.sub.2-C.sub.3 paraffins; and c) contacting the first product stream with oxygen gas and a second catalyst, thereby producing a second product stream comprising acrylic acid and acetic acid, wherein there is no step for separating the components of the first product stream before the first product stream is contacted with the second catalyst. (pp. 1, [0009] – [0012] & claim 1). The first catalyst may be a mixed metal oxide represented by formula (I). (pp. 3, [0039]- [0045]). The first catalyst may be supported on a carrier; such as, alumino-silicates, zeolites or molecular sieves. ([0054]). The second catalyst of Karim, the oxidation catalyst of step (c) can be any number of catalyst for the oxidation of the C2-C3 paraffins to the acid. (pp. 6, [0112]). Further, acrylic acid, acetic acid and other components may be separated from the second product stream. ([0141]).
The difference between the invention of claim 15 and Karim is as follows: the feed stream being described as stream comprising hydrogen gas and a carbon-containing gas comprising carbon monoxide and carbon dioxide; (a) the metal oxide catalyst component comprises gallium oxide and phase pure zirconium oxide, and the second catalyst comprises palladium salts, copper salts; oxides of bismuth, oxides of vanadium, oxides or molybdenum or combinations thereof; and (b) the metal oxide catalyst component is selected from gallium oxide, zinc-chromium mixed oxides, or copper-zinc-aluminum mixed oxides, and the second catalyst comprises ceria, oxides of bismuth, oxides of vanadium, oxides of molybdenum, oxides of tellurium or combinations thereof.
However, with regard to the feed stream being described as stream comprising hydrogen gas and a carbon-containing gas comprising carbon monoxide and carbon dioxide, the Examiner turns to Karim. The prior art of Karim states the syngas comprises hydrogen and carbon monoxide. ([0003]). Further, Karim states that carbon dioxide may be present and an inert gas. {0034]). Lastly, it would be common knowledge to one skill in the art that syngas comprises some carbon dioxide. As such, these limitations are deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103. From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Regarding (a) the metal oxide catalyst component comprises gallium oxide and phase pure zirconium oxide, and the second catalyst comprises palladium salts, copper salts; oxides of bismuth, oxides of vanadium, oxides or molybdenum or combinations thereof; the Examiner turns to the teachings of Dow and Karim 2. Paragraph [0027] of Dow discloses metal catalyst component that is physically mixed with a microporous catalyst component. The metal oxide catalyst of Dow can be gallium and pure phase zirconia oxide. ([0025] – [0026]). The catalyst of Dow is used for the same reaction of converting hydrogen, carbon monoxide and carbon dioxide to C2-C4 olefins and C2 o C4 paraffins. (Examples and Claims 1 – 15). The prior art of Dow acknowledges that olefins, such as those produced by their process have use as starting materials for various downstream chemicals. But Dow is silent with regard to which chemicals. Karim does disclose downstream use in an oxidation reaction producing a carboxylic acid. Karim states that any number of catalyst for the oxidation reaction. For this reason the Examiner turns to the teaching of Karim 2. The prior art of Karim 2 discloses mixed metal oxide catalyst for the oxidation of propylene to acrylic acid. (abstract & col. 1 ln 9 – 11). The catalyst system of Karim 2 can be comprised of molybdenum, vanadium, palladium, lanthanum, niobium, and X, where X can be copper, chromium of mixtures thereof. (col. 1, ln 11 – 13 & claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant clamed invention to convert various carbon-containing streams to carboxylic acid via C2 to C4 hydrocarbons by the process of Karim wherein syngas is converted to intermediate products of C2 – C3 paraffin in the presence of a known metal oxide and microporous catalyst such as those of Dow; and then convert the paraffin to the corresponding carboxylic acid in the presence of a second catalyst that is a known oxidation catalyst containing metals such as those discloses in Karim 1.
Therefore, the claim would have been obvious because the two step reaction process of converting a syngas feed to C2 – C4 paraffins and then converting the paraffins to the corresponding carboxylic acid and the catalyst for each reaction step was known in the art prior to the instantly claimed invention; and was part of the ordinary capabilities of one skilled in the art based upon the teachings of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" method in the prior art and the results would have been predictable to one of ordinary skill in the art before the effective filing date of the instantly claimed invention.
Regarding and (b) the metal oxide catalyst component is selected from gallium oxide, zinc-chromium mixed oxides, or copper-zinc-aluminum mixed oxides, and the second catalyst comprises ceria, oxides of bismuth, oxides of vanadium, oxides of molybdenum, oxides of tellurium or combinations thereof; the Examiner turns to the teaching of Dow 2, Chen and Eiki. Dow 2 at paragraphs [0015] - [0026] discloses metal catalyst component that is physically mixed with a microporous catalyst component. The catalyst of Dow 2 is used for the same reaction of converting hydrogen, carbon monoxide and carbon dioxide to C2-C4 olefins and C2 o C4 paraffins. (Examples and Claims 1 – 15). Chen discloses C2-C4 hydrocarbon synthesis from syngas over CuO-ZnO-Al2O3/SAPO-34 bifunctional catalyst. (abstract, Figure 1). The prior art of Dow2 acknowledges that olefins, such as those produced by their process have use as starting materials for various downstream chemicals. But Dow2 is silent with regard to which chemicals. Karim does disclose downstream use in an oxidation reaction producing a carboxylic acid. Karim states that any number of catalyst for the oxidation reaction. For this reason the Examiner turns to the teaching of Eiki. The prior art of Eiki discloses metal oxides in which molybdenum, bismuth, tellurium or the like are combined as a known catalyst for the oxidation of an olefin such as propylene. (pp. 2, [3], Examples & clm. 1-5) (see English translation).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant clamed invention to convert various carbon-containing streams to carboxylic acid via C2 to C4 hydrocarbons by the process of Karim wherein syngas is converted to intermediate products of C2 – C3 paraffin in the presence of a known metal oxide and microporous catalyst such as those of Dow2 and Chen; and then convert the paraffin to the corresponding carboxylic acid in the presence of a second catalyst that is a known oxidation catalyst containing metals such as those discloses in Eiki.
Therefore, the claim would have been obvious because the two step reaction process of converting a syngas feed to C2 – C4 paraffins and then converting the paraffins to the corresponding carboxylic acid and the catalyst for each reaction step was known in the art prior to the instantly claimed invention; and was part of the ordinary capabilities of one skilled in the art based upon the teachings of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" method in the prior art and the results would have been predictable to one of ordinary skill in the art before the effective filing date of the instantly claimed invention.
Allowable Subject Matter
Claims 1 – 14 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the Examiner has considered the amendment filed by Applicant on December 24, 2025 and the arguments therein. Applicant’s arguments were found persuasive; as such the Examiner has withdrawn the rejections in the previous Office Action.
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).
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on January 9, 2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692