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 § 102
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.
Claim(s) 1, 28, 29, 30, 31, 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bankmann (US Pat.: 5387726).
As to Claims 1 and 33, Bankmann describes a process for hydrogenation of carbonyl groups in aromatic aldehydes of the compound:
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(abstract). X can be a carboxyl, methyl or halogen (abstract). The structure can be considered a p-methylbenzaldehyde. The hydrogenation catalyst can be made up of Pd/TiO2 (col. 10, lines 41-42) to make p-xylene (col. 10, lines 41-42). The amount of Pd can be from 0.01 to 3 wt% (Claim 5). The TiO2 can be considered a metal oxide support. The TiO2 can be a mixture of anatase and rutile (col. 3, lines 26-28). The two different phases of TiO2 that are combined can be considered a mixed oxide.
As to Claims 28, 29, 30 and 31, Bankmann teaches that the amount of Pd can be from 0.01 to 3 wt% (Claim 5). MPEP states that prior art which teaches a range overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with “sufficient specificity.” See 2131.03.
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) 19, 24, 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bankmann (US Pat.: 5387726).
Bankmann teaches that the product made is para-xylene (see table at column 3) and that it can be processed to result in substantially pure para-xylene (col. 5, lines 5-6). 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 amount of the m-form of xylene would be low or close to zero.
As to Claims 24 and 25, Bankmann teaches that the product made is para-xylene (see table at column 3) and that it can be processed to result in substantially pure para-xylene (col. 5, lines 5-6). 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 amount of the dimethylcyclohexane, toluene, benzene would be low or close to zero.
Claim(s) 32, 35, 36, 37, 38, 39, 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bankmann as applied to claim 18 above, and further in view of Griffiths (US Pat.: 4659686).
Bankmann describes a hydrogenation catalyst that includes Pd, but does not describe that the support is a carbon support and that the catalyst includes Re metal.
Griffiths describes a noble metal hydrogenation catalyst (abstract) that includes a carbon support (abstract). The catalyst includes a palladium and rhenium catalyst (col. 1, lines 67), which contains 0.5-10% palladium and 1-10% rhenium (col. 1, lines 67-68 to col. 2, lines 1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a palladium and rhenium catalyst supported on a carbon support, where the Pd is in the catalyst from 0.5-10wt% and the rhenium is in the catalyst from 1-10wt%, as taught by Griffiths for use with the catalyst of Bankmann because these metals added in these amounts are known to be effective for use in catalytic hydrogenation.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bankman as applied to claim 18 above, and further in view of Weiner (US Pub.: 2010/0121114).
Bankmann does not teach adding rhenium from greater than 0-6wt%.
Weiner describes a hydrogenation catalyst that includes from 0.5-2.5wt% palladium and
Rhenium from 2-7wt% (para. 42).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a hydrogenation catalyst with Pd from 0.5-2.5wt% and rhenium from 2-7%, as taught by Weiner for use with the hydrogenation catalyst of Bankmann because these metals added in these amounts is known to be effective for use in hydrogenation catalysis.
Allowable Subject Matter
Claims 21, 22, 26, 27 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.
The following is an examiner’s statement of reasons for allowance: Bankmann describes converting a para-methylbenzaldehyde but does not teach inclusion of the ortho-form of this compound to make a combination of p and o-xylene.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 September 19, 2026
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