Prosecution Insights
Last updated: April 19, 2026
Application No. 18/282,263

METHOD FOR PRODUCING OXIDE AND METHOD FOR PRODUCING PT/BI COMPOSITE CATALYST

Non-Final OA §102§DP
Filed
Sep 15, 2023
Examiner
BAKSHI, PANCHAM
Art Unit
1623
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Kao Corporation
OA Round
1 (Non-Final)
77%
Grant Probability
Favorable
1-2
OA Rounds
2y 5m
To Grant
99%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allow Rate
873 granted / 1132 resolved
+17.1% vs TC avg
Strong +30% interview lift
Without
With
+30.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
77 currently pending
Career history
1209
Total Applications
across all art units

Statute-Specific Performance

§101
1.2%
-38.8% vs TC avg
§103
32.0%
-8.0% vs TC avg
§102
23.0%
-17.0% vs TC avg
§112
27.0%
-13.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1132 resolved cases

Office Action

§102 §DP
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. Status of the Application Claims 1-1 0 and 19-28 are pending and under current examination. 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 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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 1-1 0 and 19-28 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Nomura (US 20170341070 A1). Nomura disclose s a production method for an oxide organic compound with an example of a carboxylic acid from an aliphatic alcohol or a polyoxyalkylene alkyl ether (same compounds and description as in the instant claims 1-1 0 and 19-28 with examples) (see 0061-0066, examples and claims for starting alcohol or ether and oxide product) comprising the steps of (1) making Pt/Bi composite catalyst comprising Pt supported on an active carbon as a carrier, a water soluble Bi ion source with example of bismuth oxide ( a water soluble Bi ion source is added at the start of the process while making the catalyst or in during the process ) ; (2) subjecting aliphatic alcohol or a polyoxyalkylene alkyl ether to a dehydrogenative oxidation reaction in the presence of the catalyst made in step 1 Pt/Bi composite catalyst , a water soluble Bi ion source with example of bismuth oxide (is added at the start of the process while making the catalyst or in during the process ) and water at pH less than 7, such as 2 or 3 thereby forming carboxylic acid followed by filtration of the composite catalyst from the reaction (i.e., regeneration of the composite catalyst ) (see 0161 and examples for regeneration) (Entire application, especially 0015-0019, 0028, 0029, 0039-0041, 0053-0066, 0073 and 0135-0205) . The cited prior art further discloses that Bi ion source used in experiment 1, is 0.38g and polyoxyethylene alkyl ether (organic compound) used for making oxide is 265g (100 parts) thus Bi is 0.1 4 parts (0.38x100/265) relative to 100 parts by mass of the organic compound (reads on 0.01 parts by mass or more and 0.3 parts by mass or less relative to 100 parts by mass of the organic compound of the instant claims 19 and 20) (see examples for amount of Bi relative to the organic compound ) . The cited prior art further discloses Bi/Pt 0.1 or more or 1.2 or less (reads on the instant claims 21 and 22) (see paragraph 0058) . (Entire application, especially 0015-0019, 0028, 0029, 0039-0041, 0053-0066, 0073 and 0135-0205). Since the cited prior art reads on all the limitations of the instant claims 1-1 0 and 19-28 , these claims are anticipated. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp . Claims 1-1 0 and 19-28 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10058857 B2, since the claims, if allowed, would improperly extend the “right to exclude" already granted in the patent. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons: The claims of instant applic ation and claims 1-16 of U.S. Patent No. 10058857 B2 are drawn to a process of making same compound from same starting material using same catalyst wherein the reaction is accompanied by production of the catalyst with a difference that the patent elaborates on steps of making the catalyst vs broad instant claims of production of catalyst; and oxidation process steps detailed in claims of the instant application vs broad oxidation process steps. The specification of the patent describes oxidation process steps in detail, which are same as in the instant claims. T hus, t he difference, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of claims 1-16 of U.S. Patent No. 10058857 B2 . For the foregoing reasons, the instantly claimed process is made obvious. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See also MPEP § 804. Conclusion No Claim is allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT PANCHAM BAKSHI whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3463 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-Thu 7-4.30 EST . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Milligan Adam can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-2707674 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /PANCHAM BAKSHI/ Primary Examiner, Art Unit 1623
Read full office action

Prosecution Timeline

Sep 15, 2023
Application Filed
Feb 28, 2026
Non-Final Rejection — §102, §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
77%
Grant Probability
99%
With Interview (+30.4%)
2y 5m
Median Time to Grant
Low
PTA Risk
Based on 1132 resolved cases by this examiner. Grant probability derived from career allow rate.

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