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 .
Applicants’ Preliminary Amendment, filed on September 20, 2023, has been made of record and entered. In this amendment, the Specification has been amended to include a cross-reference to related applications, claims 1-15 have been canceled, and new claims 16-35 have been added.
Claims 16-35 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on September 20, 2023.
Claim Objections
Claims 16, 17, 19, 20, and 30 are objected to because of the following informalities:
In line 15 of claim 16, “metal bodies B” should be amended to recite “metal body B” to ensure claim continuity. Or, alternatively, in line 12 of claim 1, “metal body B” should be amended to recite “metal bodies B”.
In lines 17 and 18 of claim 16, “;” should be replaced with “,”; e.g., “severing, machining with a geometrically defined cutting edge,…”.
In line 1 of claim 17, “wherein metal body A” should be amended to recite “wherein the metal body A”.
In lines 2 and 3 of claim 19, “;” should be replaced with “,”; e.g., “shear cutting, knife cutting, bite cutting,…”.
In line 1 of claim 20, (a) “claim 16 ,” should be amended to recite “claim 16,”, and (b) “metal body used in step (a)” should be amended to recite “metal body A” in step (a)”.
In line 1 of claim 30, “metal body used in step (a)” should be amended to recite “metal body A” in step (a)”.
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.
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 34 and 35 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.
Claims 34 and 35 are indefinite because these claims recite the phrase “obtainable by”, which does not limit these claims to the process limitations recited therein; i.e., the respectively claimed “cut metal body MZ” and “catalytically active metal body K” do not necessarily have to be produced by the processes of claims 16 and 32, from which these claims respectively depend. The word “obtainable” opens these claims to process limitations not necessarily encompassed by these claims.
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.
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.
Claims 16-18, 20-26, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Wieland et al. (U. S. Patent Publication No. 2019/0232257; Applicants’ submitted art) in view of Radivojevic et al. (U. S. Patent Publication No. 2014/0221700; Applicants’ submitted art).
Regarding claims 16-18, 20, 24-26, and 28, Wieland et al. teach the preparation of catalytically active metal foam bodies, wherein metal foam bodies comprising one or more metals selected from, inter alia, nickel or cobalt (“metal body A”; “metal foam body”), are treated with an adhesion promoter and coated with aluminum powder (“applying a metal-containing powder MP to metal body A…metal body AX”), followed by a subsequent heat treatment to remove organic chemical residues of the adhesion promoter and dissolve aluminum in the nickel foam to form intermetallic phases and a nickel/aluminum alloy foam (“treating metal body AX thermally to achieve alloy formation…”). The heat treatment is preferably performed at a temperature ranging between 500°C and 1000°C, particularly preferably between 600°C and 750°C. Following the heat treatment, a comminution and/or separation of the material by laser cutting (“splitting of the metal bodies B to obtain cut metal bodies”; “…splitting process selected from the group consisting of: severing…”) may be effected. See paragraphs [0023] and [0038]-[0041] of Wieland et al.
The thus obtained nickel/aluminum shaped bodies are the subjected to a leaching process to leach at least a portion of the aluminum present therein, and to form the catalytically active metal foam bodies (“treating the cut metal bodies MZ with a leaching agent…”). The leaching process (a) employs an aqueous alkali metal hydroxide solution, e.g., aqueous sodium hydroxide solution, having a concentration ranging between 0.1 and 60 wt%, and (b) is performed at a temperature of 20°C to 100°C for a duration ranging between 2 and 240 minutes (2 hours). See paragraphs [0040]-[0042] of Wieland et al.
Regarding claim 24, it is considered that because Wieland et al. teach a method comparable to that instantly claimed, the skilled artisan would reasonably expect the catalytically active metal foam bodies obtained from the aforementioned preparation to exhibit a ratio R of cut surface area (CA) to volume (V) comparable to that instantly claimed (R > 0.5), absent the showing of convincing evidence to the contrary.
Regarding claim 34, Wieland et al. teach catalytically active metal foam bodies obtained by the aforementioned preparation (“cut metal body MZ”); see paragraphs [0017], [0021], [0023]-[0025], [0035], [0036], and [0043]. Further, it is noted that claim 34, as presently written, is in product-by-process form (“cut metal body MZ obtainable by the process…”). As such, it has been held that:
"Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show that the same is a process of making." In re Brown, 173 U.S.P.Q. 685 and In re Fessmann, 180 U.S.P.Q. 324. See also MPEP 2113.
While Wieland et al. teach a preparation comparable to that instantly claimed, this reference does not teach or suggest the limitations of Applicants’ claim 16 regarding the “total duration of thermal treatment is between 5 and 240 seconds”. However, Wieland et al., as discussed above, teach a heat treatment temperature of particularly preferably between 600°C and 750°C (see paragraph [0040]), which encompasses Applicants’ claimed thermal treatment temperature range of “from 680 to 715°C”.
Regarding claim 16, Radivojevic et al. teach the preparation of a surface modified metallic foam body, wherein the preparation comprises the steps (a) a metallic foam body comprising a first metallic material is provided, and (b) a second metallic material, different from the first metallic material and comprising a compound that is leachable as such and/or that can be transformed by alloying into a second compound that is leachable and different from the first metallic compound, is applied on a surface of the metallic foam body by coating the surface of the metallic foam body with an organic binder and a powder of the second metallic material. The preparation further comprises, after step (b), the steps (c) forming an alloy skin of the metallic foam body by alloying the first metallic material and the second metallic material, and (d) treating the obtained alloyed metallic foam body with an agent capable of leaching out the leachable first and/or second metallic compound from the alloy skin of the metallic foam body. See paragraphs [0016]-[0020] and [0049]-[0053] of Radivojevic et al.
Examples of the first metallic material include nickel and cobalt; examples of the second metallic material include aluminum. See paragraphs [0021]-[0022] and [0066] of Radivojevic et al.
In the aforementioned preparation, step (c) is performed at a temperature range of 650 to 730°C, or from 660 to 710°C, for a holding time of up to 15 minutes. See paragraphs [0068] and [0070] of Radivojevic et al.
Note that these temperatures disclosed by Radivojevic et al. are comparable to the heat treatment temperatures disclosed in paragraph [0040] of Wieland et al.
Additionally, in step (d) of the preparation disclosed in Radivojevic et al., alkaline media, e.g., an aqueous solution of NaOH, is employed; step (d) is generally carried out at a temperature between 20 and 98°C, for a duration of 1 to 15 minutes. See paragraphs [0057] and [0058] of Radivojevic et al.
In view of the common teachings of Wieland et al. and Radivojevic et al., the skilled artisan would have been motivated to modify the preparation disclosed in Wieland et al. by incorporating therein an alloy formation duration of up to 15 minutes, as suggested by Radivojevic et al.
Wieland et al. also do not teach or suggest the limitations of Applicants’ claims 21-23 regarding the properties of the metal foam body, or of claim 27 regarding the step of postdoping the catalytically active metal bodies with a promoter element.
Regarding claims 21-23, Radivojevic et al. teach that the metallic foam body provided in step (a) exhibits (i) a specific surface area ranging from 100 to 20000 m2/m3, or from 1000 to 6000 m2/m3, and (ii) a porosity ranging from 0.50 to 0.95. See paragraph [0031] of Radivojevic et al.
Regarding claim 27, Radivojevic et al. teaches the feasibility in incorporating promoter elements during the aforementioned preparation, wherein exemplary promoter elements include molybdenum and metals of the platinum group. See paragraph [0027] of Radivojevic et al., as well as paragraph [0073], which teaches that the promoter elements may be added during the aforementioned step (b), or in an additional step (e) after the aforementioned step (d).
Additionally, Wieland et al. teach that the catalytically active metal foam bodies obtained by the aforementioned preparation can be employed in catalytic reactions of reactant components, at least one of which is in the liquid phase, and at least one of which is in the gaseous phase. Exemplary catalytic reactions include hydrogenation of alkenes, aromatic compounds, organic nitro compounds, etc., and the dehydrogenation of alcohols. See paragraphs [0052] and [0053] of Wieland et al.
Radivojevic et al., in paragraph [0078] therein, teach that the foam bodies obtained by the preparation therein can be employed in hydrogenation processes, e.g., of olefins (aka alkenes), nitro compounds, and also in the dehydrogenation of alcohols.
Therefore, motivated by the common teachings of Wieland et al. and Radivojevic et al. regarding the preparation of metallic foam bodies, wherein the respective preparations employ the same or similar components (e.g., nickel as a metallic foam body, aluminum as a metal coating powder), formation of an alloy via comparable heat treatment conditions, and comparable leaching steps and conditions, and further motivated by these references’ common teachings regarding the foam bodies obtained by the respective preparations being employable in the same or similar processes, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to modify the preparation of Wieland et al. by (a) employing therein a metal foam body exhibiting a specific surface area ranging from 100 to 20000 m2/m3, or from 1000 to 6000 m2/m3, and a porosity ranging from 0.50 to 0.95, and (b) incorporating therein a promoter element, both of which are suggested by Radivojevic et al., and thereby obtain Applicants’ claimed process.
Claims 19, 29-33, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Wieland et al. (U. S. Patent Publication No. 2019/0232257; Applicants’ submitted art) in view of Radivojevic et al. (U. S. Patent Publication No. 2014/0221700; Applicants’ submitted art) as applied to claims 16 and 17 above, and further in view of Choi et al. (U. S. Patent Publication No. 2019/0388867).
Wieland et al. and Radivojevic et al. are relied upon for their combined teachings with respect to claims 16 and 17, as discussed above. While Wieland et al. teaches the step of laser cutting (paragraph [0041] therein), this reference does not teach or suggest the limitations of claims 19 and 29 regarding the splitting techniques recited therein.
Regarding claims 19 and 29, Choi et al. teach the preparation of a pellet for a catalyst, said preparation comprising cutting to shape and/or shaping of at least one layer of a metal foam material into a pellet form. The metal foam preferably comprises at least one of, inter alia, Ni, Fe, Cr, Al, Co, and Cu; a plurality of these elements can together form a component of the metal foam as an alloy or can be present as particles on the metal foam. See paragraphs [0011] and [0018] of Choi et al.
The cutting to shape and/or shaping of the at least one layer of the metal foam material takes place by means of laser cutting, waterjet cutting, machining, in particular sawing, grinding controlled crushing, etc. See paragraphs [0022] and [0071] of Choi et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to modify the preparation of Wieland et al. in view of Radivojevic et al., by substituting laser cutting, as taught by Wieland et al. with the cutting techniques of waterjet cutting, machining, in particular sawing, grinding controlled crushing, etc., as disclosed in Choi et al., which shows these cutting techniques, as well as laser cutting, as art-recognized equivalents.
Regarding claim 30, the limitations of this claim are also recited in Applicants’ claim 20, which is taught by both Wieland et al. and Radivojevic et al., as discussed above (e.g., paragraph [0038] of Wieland et al.; paragraph [0017] of Radivojevic et al.).
Regarding claim 31, the limitations of this claim are the same as that of claim 22, which is taught by Wieland et al. in view of Radivojevic et al., as discussed above (Radivojevic et al. teach that the metallic foam body provided in (a) exhibits a specific surface area ranging from 100 to 20000 m2/m3, or from 1000 to 6000 m2/m3, and a porosity ranging from 0.50 to 0.95. See paragraph [0031] of Radivojevic et al.).
Regarding claim 32, the limitations of this claim are the same as that of claim 25, which are taught by Wieland et al. (paragraphs [0040]-[0042]), and by Radivojevic et al. (paragraphs [0057] and [0058]).
Regarding claim 33, the limitations of this claim are the same as that of claim 27, which are taught by Wieland et al. in view of Radivojevic et al., as discussed above (Radivojevic et al. teaches the feasibility in incorporating promoter elements during the aforementioned preparation, wherein exemplary promoter elements include molybdenum and metals of the platinum group. See paragraph [0027] of Radivojevic et al., as well as paragraph [0073], which teaches that the promoter elements may be added during the aforementioned step (b), or in an additional step (e) after the aforementioned step (d)).
Regarding claim 35, the combined teachings of Wieland et al., Radivojevic et al., and Choi et al. are considered to read upon claim 32, from which claim 35 depends. Further, it is noted that claim 35 is a product-by-process claim (“catalytically active metal body K obtainable by the process…”). As such it has been held that:
"Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show that the same is a process of making." In re Brown, 173 U.S.P.Q. 685 and In re Fessmann, 180 U.S.P.Q. 324. See also MPEP 2113.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 February 26, 2026