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 .
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, 9, 10 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.
Claim 1, lines 1 and 3 describe an R1. However, reference to R1 does not describe how it relates to the catalyst described earlier. It will be interpreted as describing a Raman spectrum of the catalyst when analyzed, for examination purposes.
Claim 2, lines 2 and 4 describe a R2 value, but it does not describe how it relates to the catalyst described earlier. It will be interpreted as describing a Raman spectrum of the catalyst when analyzed, for examination purposes.
Claim 3, lines 2, 3, 5 and 7 describes a R1, R2 and R3, but does not describe how these values relate to the catalyst described earlier. It will be interpreted as describing peaks in a Raman spectrum of the catalyst when analyzed, for examination purposes.
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.
Claim(s) 1, 2, 4, 5, 6, 9, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macht (US Pub.: 2013/0023699) and in view of Smith “A Guide to Reading Raman Spectra”.
Macht describes a mixed metal oxide that contains Mo, Bi and Fe metal in the mixed oxide (abstract). The composition, when analyzed under a Raman spectrum shows the peak shown in Figure 5. In this spectrum, the graph shows that at about 900-800 on the x-axis the intensity ranges from about 700-750, with a max at about 800 (see Fig. 5). Meanwhile, at about 350 on the x-axis, the intensity on the y-axis ranges from about 750-850 (see Fig. 5). Macht does not state that the units on the x-axis are in terms of cm-1.
Smith explains that the results of a Raman spectroscopy analysis are usually represented graphically with the intensity plotted on the y-axis and the frequency of light on the x-axis (page 1, para. 3). The frequency is usually measured by a unit known as the wavenumber, which is represented as an inverse centermeters, cm-1 (page 1, para. 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the x-axis of the spectrum of Macht reflects a cm-1 unit because Smith explains that Raman spectroscopy is typically measured in terms of cm-1.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
As to Claim 2, the specification of this application states that the value of the wavenumber obtained for R2 is obtained by fitting the measured data into equation 4, which is described in the specification as the formula shown. Macht does not disclose features that can enable the wavenumber according to the formula described in the specification.
Alternatively, the specification of this application describes a method for making the product that exhibits the features shown in Figures 1-2 of the current application. In their process, the process involves dispersing metal precursor salts in an aqueous solution (para. 68, 69, 70, 71 of the published specification). The mixture is then dried and calcinated (see para. 68 of the published specification). Example 1 describes use of spray drying as a drying means, followed by calcining (para. 123 of the published specification).
Macht describes a process of making a mixed oxide that employs metals that can be in the form of nitrate or hydrate salts (see para. 53) in an aqueous solution (para. 53, 54). The mixture may be dried using a spray drying means (para. 68), followed by calcination (para. 71).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same process used the same way to make the same composition would result in the same characteristics as shown in a Raman spectroscopy with the same wavenumber features.
Similarly, given that Claim 3 depends on the wavenumber of Claim 2, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the value of R3 would similarly fall within the claimed features of 0.21 or more because the same process used the same way to make the same composition would result in the same characteristics as shown in a Raman spectroscopy with the same wavenumber features.
As to Claims 5 and 6, Macht teaches that the catalyst may be placed on an inert catalyst support, such as alumina or silica (para. 217).
As to Claims 4, 9 and 10, Macht teaches that the product made has the formula:
Mo12BiaCobFecKdSieOx, where a =0.5-1, b=7-8.5, c=1.5-3, d=0-0.15, e=0-2.5 and x is determined by the valence and abundance of the elements other than oxygen in I (para. 229, 230-236).
The formula of Macht overlaps Claim 4. X in the formula of Claim 4 can be Si, Y of Claim 4 can be K. The value of h representing the value of Z of Claim 4 can be zero. The value of b in Macht as the value of Co can also be zero.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
References Made of Record
The following additional references from the examiner’s search are made of record: Sprenger et al. “Chemical Imaging of Mixed Metal Oxide Catalysts. . . “.
Sprenger describes a mixed metal oxide catalyst (title) that includes ZBi, Mo, Co and Fe (Introduction, right col, lines 6-8). One of the products made has the Raman shift spectra shown in Fig. 4, h. Here, there is a peak at about 889 cm-1 and another peak at about 315 cm-1 (see Fig. 4, h).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 May 12, 2026
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