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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 10/10/2025 is acknowledged.
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 3-4 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.
The term “substantially constant” in claims 3-4 is a relative term which renders the claim indefinite. The term “substantially constant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Since there is no discussion of the term in the specification, it is unclear how much a parameter can vary and be considered to meet the limitation requiring the value is “substantially constant”.
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 3-4 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. Claim 3 requires “wherein the catalyst system increases or remains substantially constant in temperature throughout the de-coking treatment”. Claim 4 requires, “wherein the catalyst system increases or remains substantially constant in temperature throughout the de-coking treatment”. The requirements that both parameters remain constant contradicts the limitations of claim 1, on which both claims depend, which requires both the temperature and the oxygen concentration increase during the treatment. 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
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ostraat et al., US2019/0255519 in view of Shum, US 8722557 (of record).
Regarding claims 1, 3-4, 6, and 10, Ostraat teaches a composite metathesis catalyst containing tungsten, silica, and ZSM-5. See the examples. Ostraat does not teach the regeneration of the catalyst.
However, a well-established problem with metathesis catalysts is that they are deactivated at least in part due to coke deposits formed on the catalyst during use. See Shum at column 1, lines 53-55; column 2, lines 30-39; column 4, lines 19-21; etc.
It would have been obvious to one of ordinary skill in the art to modify Ostraat with Shum which teaches a method of regenerating a metathesis catalyst comprising a decoking treatment. The decoking treatment comprises heating at preferred temperatures of 450-800°C in an oxygen containing atmosphere. Shum teaches the oxygen concentration should start at a low oxygen concentration and be increased with time. See column 4, lines 22-42. Example 1 in Shum teaches a decoking treatment comprising:
-a first treatment condition which has a first average temperature and first average oxygen concentration, 450°C and 0% oxygen (100% nitrogen atmosphere is disclosed);
- a second treatment condition with a second average temperature of 500°C (due to the 50°C increase disclosed) and a second average oxygen concentration (atmosphere contains 25% air and 75% nitrogen). The second average temperature is greater than the first average temperature and the second average oxygen concentration is higher than the first average oxygen concentration;
-a third treatment condition with a third average temperature and a third average oxygen concentration (50% air). The third average oxygen concentration is higher than the second average oxygen concentration. The temperature during the third condition is not specified. However, the temperature would increase when introducing more oxygen into the system consistent with the discussion in column 4, lines 25-31 since an exotherm is produced when increasing the available oxygen for combustion of coke. The temperature would be above the 500°C disclosed resulting from the previous step for this reason. Further, the claim only requires the second average temperature is less than the third average temperature, thus if the temperature remained relatively constant it would only be infinitesimally different than the claim requirement and would form a prima facie case of obviousness since the two temperature values are infinitesimally different and would not be expected by one skilled in the art as producing a measurable difference. See MPEP 2144.05 I.
One of ordinary skill in the art would have been motivated to combine Ostraat with Shum with the motivation of removing deposited coke from a used deactivated catalyst therefore restoring catalytic activity, reducing costs by avoiding catalyst replacement, and reducing material waste by avoiding disposing a deactivated catalyst.
Where the ranges in Ostraat overlap with claimed ranges, overlapping ranges are prima facie obvious. See MPEP 2144.05.
Regarding claim 2, the decoking process of the combined references removes carbon by reaction with oxygen in the air provided. Carbon dioxide would be a product of the decoking process, though it is not mentioned in either reference.
Regarding claim 5, as discussed above in the rejection of claim 1, the temperature in Shum corresponding to the third temperature is not specified, though it can be concluded that it would be above 500°C following the reasoning discussed above and would be at least close to the claimed range. Further, Shum teaches temperatures of 450-800°C in the decoking process. It would have been obvious to one of ordinary skill in the art to determine a proper temperature condition in the decoking steps in the range claimed in order to remove the coke deposits as desired in Shum.
Regarding claims 7 and 12, as discussed above, the oxygen concentration of the first treatment condition in Shum is 0%. The second atmosphere in Shum is 25% air and 75% nitrogen, Since air is about 21 mol. % oxygen, this atmosphere contains about 5.25 mol. % oxygen. The third atmosphere in Shum is 50% nitrogen and 50% air. Following the same reasoning, the atmosphere is 10.5 mol. % oxygen.
Regarding claims 8-9, Shum teaches shorter reaction times that claimed and does not teach times for each step in the ranges claimed. However, in applying such a process to the catalyst disclosed in Ostraat, it would have been obvious to one of ordinary skill to determine the proper reaction time depending on process variables such as equipment, amount of catalyst regenerated, amount of coke deposits on the deactivated catalyst, and time limitations. One of ordinary skill in the art would have been motivated to adjust the reaction times in order to effectively remove coke from the catalyst and restore catalytic activity.
Regarding claim 11, the catalyst system of Ostraat is the same as that claimed and thus would be suitable for producing propylene from butene.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ostraat et al., US2019/0255519 in view of CN103537271 (of record, references are to the translation provided by applicant).
Regarding claims 1, 3-4, and 12, Ostraat teaches a composite catalyst that can be used as an isomerization catalyst which contains tungsten, silica, and ZSM-5. See [0070] and the examples. Ostraat does not teach the regeneration of the catalyst.
However, a well-established problem with catalytic isomerization processes is that the catalysts are deactivated at least in part due to coke deposits formed on the catalyst during use. See [0008] of CN’271.
It would have been obvious to one of ordinary skill in the art to modify Ostraat with CN’271 which teaches a method of regenerating an isomerization catalyst comprising a decoking treatment. The decoking treatment comprises heating at increasing temperatures in the range of 400-600°C in oxygen containing atmospheres with increasing oxygen concentrations. See the abstract of CN’271. The process of CN’271 comprises (see [0011]-[0012] and the examples):
-a first treatment condition which has a first average temperature and first average oxygen concentration, (420-500°C and 0.1-1 mol % oxygen) and times of 2-6 hours (Examples 1-5);
- a second treatment condition with a second average temperature of 520-600°C and a second average oxygen concentration of 1.5-5 mol. % for 2-6 hours. The second average temperature is greater than the first average temperature and the second average oxygen concentration is higher than the first average oxygen concentration;
-a third treatment condition with a third average temperature and a third average oxygen concentration (5.5-15 mol. %) for 2-6 hours. The third average oxygen concentration is higher than the second average oxygen concentration. The temperature during the third condition is greater than that in the second step as the reference indicates the temperature increases to a final value after the second treatment step. See the abstract, [0011]-[0010], and the examples of CN’271.
One of ordinary skill in the art would have been motivated to combine Ostraat with CN’271 with the motivation of removing deposited coke from a used deactivated catalyst therefore restoring catalytic activity, reducing costs by avoiding catalyst replacement, and reducing material waste by avoiding disposing a deactivated catalyst.
Where the ranges in Ostraat overlap with claimed ranges, overlapping ranges are prima facie obvious. See MPEP 2144.05.
Regarding claim 2, the decoking process of the combined references removes carbon by reaction with oxygen. Carbon dioxide would be a product of the decoking process, though it is not mentioned in either reference.
Regarding claim 5, at least Examples 1-4 in CN’271 teach temperatures in the final step above 525°C.
Regarding claim 6, Example 4 in CN’271 teaches 480°C for the first step, 540°C for the second step, and >540°C for the third step. The final temperature is not specifically disclosed, but the example indicates the temperature rises after changing the oxygen concentration for the third step. Further, CN’271 teaches overlapping ranges which are discussed above in the rejection of claim 1. Overlapping ranges are prima facie obviousness. See MPEP 2144.05.
Regarding claim 7, Example 2 of CN’271 teaches 0.6 mol. % oxygen for the first step, 4 mol. % oxygen for the second step, and 8 mol. % oxygen for the third step.
Regarding claims 8-9, CN’271 teaches holding times for each step of 2-6 hours. See [0012]. Example 4 has holding times of 5 hours for the first step, 3 hours for the second step, and 6 hours for the final heating step. The total time in this examples is 14 hours.
Regarding claim 10, Examples 1-5 of CN’271 all teach temperatures in each step that meet the claim limitations.
Regarding claim 11, the catalyst system of Ostraat is the same as that claimed and thus would be suitable for producing propylene from butene.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J ZIMMER whose telephone number is (571)270-3591. The examiner can normally be reached Monday - Friday, 9:30 AM - 6 PM EST.
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ANTHONY J. ZIMMER
Supervisory Patent Examiner
Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736