DETAILED ACTION
Claims 1-2, 4-5, 7, 9-10, 14-19, 21-22, 24, and 26-31 are pending, of which claims 18-19, 21-22, 24, and 26-31 have been withdrawn.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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-2, 4-5, 7, 9-10, and 14-17, drawn to a catalyst.
Group II, claim(s) 18-19, 21, 24, and 29-31, drawn to a method of making a catalyst.
Group III, claim(s) 26, drawn to a reactor system.
Group IV, claim(s) 27-28, drawn to a method of generating ethylene from ethane.
Groups I-IV lack unity of invention because even though the inventions of these groups require the technical feature of a catalyst material comprising molybdenum, vanadium, tellurium, niobium, beryllium, wherein the molar ratio of Mo:V is 1 : 0.12-0.49; the molar ratio of Mo:Te is 1 : 0.01-0.30; the molar ratio of Mo:Nb is 1 : 0.01-0.30; and the molar ratio of Mo:Be is less than 1:1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US20200024215 (“Gao”).
In particular, Gao teaches a catalyst including molybdenum, vanadium, tellurium, niobium, and oxygen (see e.g. paragraph [0037]). The molar ratio of molybdenum to vanadium is from 1:0.05 to 1:0.60, the molar ratio of molybdenum to tellurium is from 1:0.01 to 1:0.30, and the molar ratio of molybdenum to niobium is from 1:0.01 to 1:0.40; all of which are within the claimed ranges (Id.)
During a telephone conversation with Samuel Orke on April 24, 2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-2, 4-5, 7, 9-10, and 14-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-19, 21-22, 24, and 26-31 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4-5, 9-10, and 14-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20200024215 (“Gao”).
Regarding claim 1, a catalyst including molybdenum, vanadium, tellurium, niobium, and oxygen (see e.g. paragraph [0037]). The molar ratio of molybdenum to vanadium is from 1:0.05 to 1:0.60, the molar ratio of molybdenum to tellurium is from 1:0.01 to 1:0.30, and the molar ratio of molybdenum to niobium is from 1:0.01 to 1:0.40; all of which are within the claimed ranges (Id.). Gao further teaches that the composition can include up to 20% of beryllium oxide (see e.g. paragraph [0363]). When 20% beryllium oxide is included with the specific composition listed as reference 04-015-7475 in Table 7b, the molar ratio of Mo:Be is 1 : 1.9, which is within the claimed range (see e.g. Table 7b). Examiner notes that the claim is drawn to a composition rather than a method. As such, the specific recited method for determining the molar ratios is immaterial to patentability. However, Gao explicitly teaches that the molar ratios are determined using ICP-MS (see e.g. paragraph [0197]).
Regarding claim 2, Gao teaches that the composition can include up to 20% of beryllium oxide (see e.g. paragraph [0363]). When 20% beryllium oxide is included with the specific composition listed as reference 04-015-7475 in Table 7b, the molar ratio of Mo : Be is 1 : 1.9, which is within the claimed range (see e.g. Table 7b).
Regarding claim 4, Gao teaches a specific composition listed as reference 04-015-7475 in Table 7b as NbV1.2Mo7.8Te0.937O28.9 (see e.g. Table 7b). This corresponds to a formula of Mo1.0V0.15Te0.12Nb0.13O3.70, which has all metal coefficients within the claimed ranges. As noted in Gao, the oxygen is present in an amount to satisfy the valence of the mixed metal oxide (see e.g. paragraph [0037]).
Regarding claim 5, Gao teaches that the catalyst can have a 35% conversion temperature of 310° C. to about 385° C, which overlaps with the claimed range (see e.g. paragraph [0207]). A specific example of Gao is that the 35% conversion temperature can be 380 °C, which is within the claimed range (Id.).
Regarding claim 9, Gao teaches that the catalyst can have a 35% conversion temperature of 310° C. to about 385° C, which overlaps with the claimed range (see e.g. paragraph [0207]). A specific example of Gao is that the 35% conversion temperature can be 380 °C, which is within the claimed range (Id.).
Regarding claim 10, Gao teaches that the ethylene selectivity of the catalyst can be 95% or higher (see e.g. paragraph [0208]).
Regarding claim 14, Gao teaches that, in certain embodiments, the Mo:V ratio is 1 : 0.30-0.35; the Mo:Te ratio is 1 : 0.12-0.14; and the Mo:Nb ratio is 1 : 0.13-0.17, all of which are within the claimed ranges (see e.g. paragraph [0221]).
Regarding claim 15, Gao teaches that, in certain embodiments, the Mo:V ratio is 1 : 0.30-0.35; the Mo:Te ratio is 1 : 0.12-0.14; and the Mo:Nb ratio is 1 : 0.13-0.17, all of which are within the claimed ranges (see e.g. paragraph [0221]).
Regarding claim 16, Gao teaches that, in certain embodiments, the Mo:V ratio is 1 : 0.30-0.35; the Mo:Te ratio is 1 : 0.12-0.14; and the Mo:Nb ratio is 1 : 0.13-0.17, all of which are within the claimed ranges (see e.g. paragraph [0221]).
Regarding claim 17, Examiner notes that the claim is drawn to a composition rather than a method. As such, the specific recited method for determining the molar ratios is immaterial to patentability. However, Gao explicitly teaches that the molar ratios are determined using mass spectroscopy (see e.g. paragraph [0197]).
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Gao.
Regarding claim 7, Gao teaches that the ratio of Mo:V can be at or above 1 : 0.49; the ratio of Mo:Te can be at or above 0.30; the ratio of Mo:Nb can be at or above 0.30 (see e.g. paragraph [0221]). This would correspond to a composition with a mixed metal oxide of formula MoV0.49Te0.3Nb0.3O6. Gao also teaches that the mixed metal oxide can be 20% of the catalyst composition, with 80% of the catalyst composition containing one or more adjuvants (see e.g. paragraphs [0351]-[0352]), of which up to 20% can be beryllium oxide (see e.g. paragraph [0363]). With this mixed metal oxide formula as 20% of the composition, beryllium oxide as 20% of the composition, and the remainder as a support or other adjuvant, the molar ratio of Mo : Be is 1 : 11.3, which is within the claimed range. Per MPEP 2144.05, 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 Gao does not provide a specific example with a composition within the claimed range, as the ranges of Gao overlaps with claimed range, it would have been obvious to one of ordinary skill in the art to use such a composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC S SHERMAN whose telephone number is (703)756-4784. The examiner can normally be reached Monday-Friday 8:30-5:00 ET.
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736