DETAILED ACTION
Claims 14-26 are pending, of which claims 25-26 have been withdrawn.
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 Arguments
Applicant's arguments filed 5/8/26 have been fully considered but they are not persuasive.
On pages 2-5, Applicant argues that providing a catalyst having the recited amount of rhenium unexpectedly improves selectivity. Applicant points to a comparison of catalyst 1-8 with catalyst 1-11. Catalyst 1-8, which has a higher rhenium content and lower tungsten content than catalyst 1-11, provides a selectivity of 87.8%, while catalyst 1-11 has a selectivity of 85.4%. Applicant also points out that the catalyst 1-7, which has a cRe + (2 X cW) lower than that of catalyst 1-8, has a selectivity of 83.3%. Applicant concludes that these results unexpectedly show that the amount of rhenium and tungsten plays a significant role in selectivity.
Examiner agrees that the amount of rhenium and tungsten included in the catalyst has an effect on the selectivity. However, it is unclear why this would be unexpected. Karpov explicitly teaches that rhenium increases selectivity of the catalyst, and that selectivity is an important factor in choosing a catalyst (see e.g. page 1, lines 18-22). Although Applicant has shown some improvement in selectivity by increasing the amount of rhenium used, Applicant has not shown that this increase is in any way greater than would have been expected based on the known property that rhenium increases selectivity for similar catalysts. Additionally, the data provided by Karpov tends to show that increasing the rhenium and tungsten content of the catalyst results in increased selectivity. For example, catalyst 3.3.4 of Karpov, which has the highest rhenium and tungsten contents of those tested, has a higher selectivity than similar catalysts with less rhenium and tungsten (see e.g. Tables 6 and 8). The only difference between catalyst 3.3.2 and catalyst 3.3.4 of Karpov is the amount of rhenium, and increasing the rhenium amount results in increasing selectivity (Id.). Similarly, the only difference between catalyst 3.3.1 and catalyst 3.3.6 is the amount of tungsten, and increasing the amount of tungsten increases the selectivity of the catalyst (Id.). Accordingly, based on the teachings of Karpov, one of ordinary skill in the art would understand that higher rhenium and tungsten contents result in a more selective catalyst. A person of ordinary skill in the art would therefore be motivated to use rhenium and tungsten values towards the higher end of the ranges provided by Karpov, resulting in a catalyst that meets the claimed limitations.
Further, the claimed amount of rhenium is not simply the far upper end of a large range taught by Karpov. Rather, the claimed amount overlaps with a narrow “particularly preferred” range of Karpov (see e.g. page 5, lines 5-10). Given that rhenium was known to affect selectivity, and given that the most narrow disclosed range in Karpov overlaps with the claimed range, it would have been obvious to one of ordinary skill in the art to use a rhenium content at the higher end of Karpov’s “particularly preferred” range. As described in the prior office actions and in the rejections below, when using a rhenium content within this range, the vast majority of the possible catalysts disclosed in Karpov would meet the cRe + (2 X cW) limitation.
On page 7, Applicant argues that the highest value for cRe + (2 X cW) for any specific example of Karpov is 12.06. Examiner agrees that the specific examples in Karpov do not meet each claim limitation simultaneously. However, given that the ranges disclosed in Karpov overlap with the claimed ranges for each and every component of the catalyst, and given that the data provided in Karpov shows that increasing rhenium and tungsten increases the selectivity of the catalyst, it would have been obvious to one of ordinary skill in the art to choose values from the narrow taught ranges of Karpov to optimize selectivity, which would result in the claimed catalyst composition.
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.
Claim(s) 14-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019154832 (“Karpov”).
Regarding claim 14, Karpov teaches an epoxidation catalyst that comprises silver, cesium, rhenium, and tungsten on an alumina support (see e.g. page 4, lines 11-22). Karpov teaches that the silver content is 20-45% by weight, which is entirely within the claimed range (see e.g. page 4, lines 11-14). Karpov teaches that the cesium content is preferably between 4.5-11.3 mmol/kg, which overlaps with the claimed range (see e.g. page 4, line 36 to page 5, line 3 and claim 5). Karpov teaches that the rhenium content is between 3-9 mmol/kg, which overlaps with the claimed range (see e.g. page 5, lines 5-9 and claim 5). The tungsten content of the catalyst is between 1.6-5.5 mmol/kg (see e.g. page 5, lines 11-16 and claim 5). For embodiments with the rhenium content within the claimed range, the value of cRe + (2 X cW) is therefore between 9.9-20, the majority of which is within the claimed range. Given that Karpov teaches that increasing rhenium increases selectivity, it would have been obvious for one of ordinary skill in the art to use a rhenium content at the higher end of the disclosed range.
Per MPEP 2144.05(I), in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. Although the specific catalysts made in Karpov do not simultaneously meet each and every limitation, given the overlap of ranges claimed for every component, the claimed catalyst composition is obvious over that of Karpov.
Regarding claim 15, Karpov teaches that the tungsten content of the catalyst is between 1.6-5.5 mmol/kg, the majority of which overlaps with the claimed range (see e.g. page 5, lines 11-16 and claim 5).
Regarding claim 16, Karpov teaches that the rhenium content is between 3-9 mmol/kg, which overlaps with the claimed range (see e.g. page 5, lines 5-9 and claim 5).
Regarding claim 17, Karpov teaches that the tungsten content of the catalyst is between 1.6-5.5 mmol/kg, which overlaps with and includes the entirety of the claimed range (see e.g. page 5, lines 11-16 and claim 5).
Regarding claim 18, Karpov teaches that the cesium content is preferably between 4.5-11.3 mmol/kg, which overlaps with the claimed range (see e.g. page 4, line 36 to page 5, line 3 and claim 5).
Regarding claim 19, Karpov teaches that the catalyst comprises lithium in a preferable amount of between 55-80 mmol/kg, which is within the claimed range (see e.g. page 6, lines 16-18).
Regarding claim 20, Karpov teaches that the catalyst comprises sulfur in an amount of 0.6-15 mmol/kg, which is within the claimed range (see e.g. page 6, lines 24-26).
Regarding claim 21, Karpov teaches that the catalyst preferably comprises 3.5-6.4 mmol/kg of potassium, which is within the claimed range (see e.g. page 5, lines 35-37).
Regarding claim 22, Karpov teaches that the catalyst is supported on alpha-alumina and does not mention any other phase of alumina (see e.g. page 15, lines 6-11). Accordingly, one of skill in the art would understand that Karpov uses more than 80% alpha-alumina.
Regarding claim 23, Karpov teaches that the surface area of the catalyst is 1.5-2.5 m2/g, nearly the entirety of which is within the claimed range (see e.g. page 8, lines 28-31).
Regarding claim 24, Karpov does not provide the exact pore volume of the catalyst. However, Karpov teaches that the water absorption of the catalyst is 0.35-0.70 ml/g (see e.g. page 8, lines 33-35). Given this water absorption, one of ordinary skill in the art would understand that the total pore volume is likely within the claimed range.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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