DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/290,917 application filed 22 January 2024, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending and have been fully considered.
Examiner’s Comment
Applicant should be made aware that the Office appears to have mis-printed at least the compounds MnCo2O4 and Ru/MnCo2O4 in the printed publication of the application. See, e.g., paragraphs 0173-0177 therein. Said compounds have been printed as MnCO2O4 and/or Ru/MnCO2O4, which is indicative of a dicarbonyl manganese compound, which may not exist. MnCo2O4 and/or Ru/MnCo2O4 indicate a metal oxide spinel.
Claim Objections
Claims 8 and 10 are objected to because of the following informalities: claim 8 appears to be missing a verb. Appropriate correction is required. Perhaps the claim should recite “…wherein the heterogeneous catalyst comprises one or more selected from Ru/MnCo2O4, Au/CeO2, Ru/C and Pt/C at a molar ratio of 0.4 to 1.0 based on 1 mole of the aromatic heterocyclic compound having the structure represented by Chemical Formula 1.” Claim 10 should end with a period(.).
Specification
The disclosure is objected to because of the following informalities: Co(CH4COO)3 on page 41, line 5 should be Co(CH3COO)3 and NaNH4 on page 42, line 5 should be NaBH4; NaNH4 does not appear to exist. 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 1-8 and 16-19 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 recites “[a] heterogeneous catalyst, comprising a catalyst for preparing dicarboxyl acid aromatic heterocyclic compound, wherein a structure in which cations of a metal catalyst component are bonded to a porous central metal-organic framework material.” It is unclear if the metal catalyst component is the same or different from the catalyst for preparing dicarboxyl acid aromatic heterocyclic compound. If the same, perhaps the claim should recite “[a] heterogeneous catalyst, comprising a metal catalyst component for preparing dicarboxyl acid aromatic heterocyclic compound, wherein a structure in which cations of [[a]] the metal catalyst component are bonded to a porous central metal-organic framework material.”
Claim 4 recites the limitation "the organic framework" in line 2. There is insufficient antecedent basis for this limitation in the claim. Perhaps the claim should recite "the metal-organic framework."
With respect to claim 6, said claim is directed to a heterogeneous catalyst. However, the body of the claim is directed to what the heterogeneous catalyst is capable of producing in an oxidizing or oxidation reaction. It is not clear that the limitations of the body of the claim imply additional structure limitations of the catalyst. Therefore, the metes and bounds of the claimed invention cannot be determined.
With respect to claim 7, it does not appear that the catalyst of claim 1 may be prepared by the method recited in 7 because the central metal and catalyst would be missing.
With respect to claim 8, it does not appear that any of MnCo2O4, CeO2, or C is a metal-organic framework material. The first two may be a metal oxide spinel. Therefore, the metes and bounds of the claimed invention cannot be determined because it is not clear if a metal-organic framework is a component of the claimed heterogeneous catalyst or not.
Claim 16 recites the limitation "the above-described aromatic heterocyclic compound" in line 3. There is insufficient antecedent basis for this limitation in the claim. The aromatic heterocyclic compound appears to be described beginning with line 8 of the claim.
Claim 17 recites the limitation "the aromatic heterocyclic compound having the structure…" in line 2. There is insufficient antecedent basis for this limitation in the claim. Perhaps the claim should recite "the aromatic heterocyclic compound raw material having the structure…"
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. See discussion concerning claim 6 above. It does not appear that the body of the claim further limits the heterogeneous catalyst. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piao et al (CN 112946038).
Note: in the discussion that follows, reference will be made to the English-language machine translation provided by Clarivate Analytics, which is attached with this Office action.
With respect to claims 1-2 and 4-5, Piao et al discloses “taking 50mg of prepared MIL-53 (Fe) and 10mL AuNPs colloid solution are mixed together, magnetic stirring for 24h, using distilled water to wash, filtering for three times, drying for 24h at 60 degrees centigrade to obtain AuNPs/MIL-53 (Fe) composite material,” wherein “[t]he AuNP colloid solution in each embodiment is prepared by [a] citric acid reduction method.” The MIL-53 (Fe) corresponds to the porous central metal-organic framework of the instant application, wherein the organic ligand associated therewith is terephthalic acid, which acid is well-known as an anionic cross-linking agent. Alternatively, the aforementioned citric acid may also correspond to the the anionic cross-linking agent. Additionally, it is well known that MIL-53 is porous. Last, the AuNPs correspond to the catalyst for preparing dicarboxyl acid aromatic heterocyclic compound. Note, the instant application discloses “the metal catalyst component may be one or more selected from Fe, Ni, Ru, Rh, Pd, Os, Ir, Au, and Pt” [paragraph 0014].
With respect to claim 3, the Fe may correspond to the recited active metal.
With respect to claim 6, since the AuNPs/MIL-53 (Fe) composite material corresponds to the heterogeneous catalyst of the instant application, it is expected, absent evidence to the contrary, that said composite can produce the recited compound.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chaudhari et al (US 2019/0308175).
With respect to claim 9, Chaudhari et al discloses “alloy catalysts…used in the oxidation process of the present invention…the first metal of the alloy catalysts is selected from the group consisting of platinum, silver, gold, cobalt, and palladium. The second metal is preferably selected from the group consisting of molybdenum, titanium, vanadium, manganese, magnesium, iron, cobalt, nickel, copper, gold, platinum, palladium, ruthenium, iridium, and rhodium…In another embodiment, the first metal is gold and the second metal is palladium…the alloy catalysts are supported on a solid support. The solid support preferably comprises carbon or a metal oxide. Preferred metal oxides contain a metal that is a lanthanide (rare earth) metal, a group 4, a group 5, or a group 6 metal. Of these metal oxides, titanium dioxide (TiO2) cerium dioxide (CeO2)…A process of the first aspect of the present invention comprises forming an alloy catalyst wherein a metal precursor of a first metal, a metal precursor of a second metal and a solid support are combined in a solvent to form an alloy catalyst. Preferably the metal precursors are co-precipitated to form the alloy. In one such embodiment, the process includes the following steps: forming a metal precursor solution that includes a metal precursor of a first metal and a metal precursor of a second metal; forming a solid support solution comprising a solid support and a solvent; combining the metal precursor solution and the solid support solution to form a combined solution; and adding a reducing agent to the combined solution to form the alloy catalyst…Preferred reducing agents include but are not limited to sodium borohydride (NaBH4)” [paragraphs 0097, 0100, 0102-0104, & 0108]. Note that the instant specification appears to disclose that NaBH4 may be an anionic crosslinking agent in Preparation Example 3 [see, e.g., paragraph 0177 of the published application]. While the method of Chaudhari et al varies slightly from the method of instant claim 9, applicant is reminded that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” In re Burhans, 154 F.2d 690, 69 USPQ 330. Thus, adding the reducing agent to the solid support solution instead of adding to the combined solution would have been an obvious variant. Indeed, Preparation Example 4 in the instant specification appears to follow the order of Chaudhari et al with the anionic crosslinking agent, NaBH4, added to the combined solution of CeO2/Au. Consequently, minor changes to the order of performing process steps does not appear to materially alter the final product and such would have been obvious to one of ordinary skill in the art. Therefore, the invention as a whole would have been prima facie obvious.
Allowable Subject Matter
Claims 10, 13, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 16-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art does not disclose a heating to a second temperature higher than a first followed by a secondary reaction as required in claim 10 or the crosslinking agents required in claim 13. With respect to claim 16, Piao et al is concerned with cysteine detection [see, e.g., abstract], not an oxidation reaction to prepare a dicarboxylic acid aromatic heterocyclic compound.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Luo et al (US 10,359,129), which discloses “…the thermoplastic composition further including a crosslinked impact modifier comprising the reaction product of a terephthalic acid crosslinking agent…” [see, e.g., claim 1]; Loiseau et al in Chemistry-A European Journal (2004, vol 10, iss 6, pp 1373-1382) [see, e.g., title: “A Rationale for the Large Breathing of the Porous Aluminum Terephthalate (MIL-53) Upon Hydration”]; Lee et al (US 2014/0200361), which discloses “…it can be confirmed that X-ray diffraction pattern has the same diffraction pattern at the same positions with that of porous organic-inorganic hybrid MIL-53(Fe)…” [paragraph 0100]; and Estaba Sambrano et al (US 8,252,255), which discloses “catalytically active metals include ruthenium, iron, cobalt and nickel” [column 5, lines 4-6].
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
5 June 2026
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