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 with traverse of group I invention (claim 1-15) in the reply filed on 11/04/2025 is acknowledged. The traversal is on the ground(s) that the office have not adequately demonstrated invention distinctness as required by MPEP § 806.05(j), this is not found persuasive because previous office action clearly established why group I invention being distinct as compared to group II invention because these two inventions have different material of design. In response to applicant’s arguments about there is no serious search burden because group II invention depending on claim 1, the previous office action also clearly explained that different groups invention requires different search queries, prior art applicable to one invention not necessarily applicable to another invention etc.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-20 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/04/2025.
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 1-15 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. In this case, claim 1 recites a “second catalyst”, but instant claim does not describe what is “second catalyst”, nor describes the relationship between such claimed “second catalyst” as compared to the claimed “first catalyst”, such as “second catalyst” being same or different as compared to “first catalyst”. The instant specification has not provided a clear explanation what’s the difference between first catalyst as compared to second catalyst either. Therefore, such limitation renders claim indefiniteness. All claim 1’s depending claims are rejected for similar reasons.
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.
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 1-15 are rejected under 35 U.S.C. 103 as obvious over Hossain et al. (US11819825) in view of Loganathan (US2021/0205789) and Bai (Modulation of surface chemistry by boron modification to achieve a superior VOX/Al2O3 catalyst in propane dehydrogenation, Catalysis Today 402 (2022), page 248–258).
Hossain et al. teaches a method of making an active catalyst composition containing a first vanadium catalyst and a second vanadium catalyst, comprising: mixing at least one support with a vanadium oxide precursor and grinding thereby at least partially embedding the vanadium oxide precursor particles in different layers and surfaces of the at least one support to form a first precursor; wherein a weight ratio of the at least one support to the vanadium oxide precursor is in a range of 100:1 to 10:1; mixing the first precursor and a first solvent to form a first mixture; grinding the first mixture and drying at a temperature of 60 to 105°C; and calcining the first mixture after the drying thereby allowing the vanadium oxide precursor particles embedded in different layers and surfaces of the at least one support to decompose in situ to generate vanadium oxide (VOx) particles embedded in the at least one support and form the first vanadium catalyst; wherein the vanadium oxide particles have an average particle size of 50 to 200 nanometers (nm), and are uniformly distributed throughout the first vanadium catalyst; wherein 0<x<3; wherein the at least one support comprises a smectite clay and a metal oxide; and mixing the first vanadium catalyst with the second vanadium catalyst to form the active catalyst composition (claim 1, col. 2 lines 24-51, Fig. 2A) . Hossain et al. also teaches the calcining can be a two-step process: first calcining under temperature range of 200-400°C, preferably to about 300°C, then calcining the first mixture under a temperature range of 500°C-800°C, preferably 550-750° C (col. 8 lines 56-66). Hossain et al. further discloses the metal oxide comprises at least one selected from the group consisting of magnesium oxide (MgO), aluminum oxide (Al2O3), and titanium oxide (TiO2) (claim 8, col. 3 lines 19-21).
Regarding claim 1, Hossain et al. does not expressly teach the aluminum oxide support size being 5 to 100 micrometers (µm), or the first catalyst particles comprising boron oxide.
Loganathan teaches microsphere support, specifically alumina support with particle size range of 20-150 µm can be used supporting vanadium catalyst for alkane dehydrogenation (para. [0030], [0031], [0037], [0055], claim 1).
It would have been obvious for one of ordinary skill in the art to adopt such well-known particle size as shown by Loganathan to modify the alumina containing support of Hossain et al. because adopting a well-known technique of a support size being 20-150 µm to modify a well-known process of forming vanadium containing oxidative dehydrogenation catalyst for improvement would have predictable results (see MPEP §2143 KSR).
Bai teaches using boric acid as precursor to modify a vanadium oxide wherein the obtained catalyst comprising boron oxide particles presented together with vanadium oxide wherein such boron oxides can improve alumina supported vanadium oxidative dehydrogenation catalyst stability and propylene selectivity (section 2.1, 2.2, 3.1, Fig. 1 and 6, page 252 left col. first para., and page 252 last para., page 253 right col. first para., page 254 left col. last para.-right col. first para., page 256 right col. first para.).
It would have been obvious for one of ordinary skill in the art to adopt boron oxide particles to modify the process of forming the vanadium oxide catalyst of Hossain et al. because by doing so can help provide an oxidative dehydrogenation catalyst with improved stability and increased selectivity to propylene as suggested by Bai (Fig. 1, 6, page 254 left col. last para.-right col. first para., page 256 right col. first para.).
Regarding claim 3, Hossain et al. further teaches the first precursor particles comprises a vanadium compound selected from the group consisting of vanadium acetylacetonate, ammonium vanadate, vanadyl oxalate, vanadium pentoxide, vanadium monoethanolamine, vanadium chloride, vanadium trichloride oxide, vanadyl sulfate, vanadium antimonate, antimony vanadate, vanadium oxyacetylacetonate, vanadium oxyacetate, vanadium oxyhalide, and vanadium oxytriisopropoxide (claim 2).
Regarding claim 4, Bai already teaches such limitation has discussed above.
Regarding claim 5, Hossain et al. further teaches the vanadium oxide (VOx) particles comprise vanadium monoxide (VO), vanadium trioxide (V2O3), vanadium dioxide (VO2), and vanadium pentoxide (V2O5) (claim 3).
Regarding claim 6, Hossain et al. further discloses the method further comprising: forming the second vanadium catalyst by: mixing the first vanadium catalyst with a second support and grinding to form a second precursor; wherein a weight ratio of the first vanadium catalyst to the second support; wherein the first vanadium catalyst is complexed with the second support; mixing the second precursor and a second solvent to form a second mixture; grinding the second mixture and drying at a temperature of 60 to 105° C; and calcining the second mixture after the drying at a temperature of at least 300°C to form the second vanadium catalyst; wherein the second support comprises a smectite clay and a metal oxide (claim 9, col. 9 lines 53- col. 10 line 7, Fig. 2A). Hossain et al. also teaches calcining the second mixture being two-step process: first calcining a temperature range of 200-400°C, preferably 250-350°C, or even more preferably to about 300°C, then other calcining ranges (col. 10 lines 28-40). Since Hossain et al. already teaches second calcining temperature being from temperature range of 500°C-800°C, preferably 550-750° C (col. 8 lines 56-66). It would have been obvious for one of ordinary skill in the art to adopt such well-known second calcining temperature to practice the second calcining of second mixture for help obtaining a desired vanadium catalyst as suggested by Hossain et al (see MPEP §2143 KSR).
As for claim 6 recited “grinding thereby at least partially embedding the second catalyst precursor particles onto the surfaces of the alumina support to form a second composite precursor”, Hossain et al. already teaches a same or substantially the same grinding the mixed first catalyst (comprising alumina support) and a second support (i.e. a second catalyst precursor particles), therefore, same or substantially the embedding the second catalyst precursor particles onto the surfaces of the alumina support to form a second composite precursor as that of instantly claimed are expected. Hossain et al. already teaches forming a vanadium catalyst can include grinding precursor including vanadium and Bai teaches boron compound can be included into such precursor. Therefore, it would have been obvious for one of ordinary skill in the art to combine such well-known vanadium and boron precursor material together with first catalyst and second catalyst support for help obtaining a desired vanadium oxide and boron oxide containing catalyst because combining such prior art disclosed elements according to a known method of mixing, grinding, and calcining for help obtaining desired vanadium oxide and boron oxide catalyst would yield predictable results (see MPEP §2143 KSR). Hossain et al. also expressly teaches the ratio of first catalyst to second catalyst support can be 2:1 or 1:2 or other ranges (col. 10 lines 1-6, Fig. 2A). It would have been obvious for one of ordinary skill in the art to adopt a same first catalyst to second catalyst precursor (including second catalyst, vanadium precursor and boron precursor) as that of instantly claimed via routine experimentation (see MPEP §2144. 05 II) for help obtaining a desired second vanadium oxide and boron oxide containing catalyst with improved oxidative dehydrogenation performance. Since Hossain et al. in view of Loganathan and Bai teaches a same or substantially the same mixing same or substantially the same first catalyst with same or substantially the same second catalyst precursor, therefore, same or substantially the same second catalyst particle embedded onto the surfaces of the alumina support and form a second catalyst as that of instantly claimed is expected, wherein the second catalyst particles comprising vanadium oxide particles and boron oxide particles.
Regarding claim 7, Hossain et al. further teaches the second solvent being at least one selected from the group consisting of a ketone solvent, an ester solvent, an alcohol solvent, an amide solvent, and an ether solvent, such as ethanol, isopropyl alcohol (col. 10 lines 10-15).
Regarding claim 8, Hossain et al. already teaches second precursor and second solvent being mixed to form a second mixture (col. 10 lines 7-15), wherein the second precursor is larger than 0% but less than 100% by weight based on the second mixture, wherein such range overlapping with that of instantly claimed range thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Regarding claim 9, Hossain et al. already teaches the active catalyst composition can be vanadium oxide supported onto an alumina containing carrier while Bai teaches boron oxide can be included in such active catalyst composition, therefore, the applied references teach an active composition being alumina supported vanadium oxide, and/or an alumina supported vanadium oxide and boron oxide as that of instantly claimed.
Regarding claim 10-13, Hossain et al. further teaches active catalyst composition has a multi-layered mesoporous structure (claim 11); the active catalyst composition has a specific surface area in a range of 50 to 200 square meters per gram (m2/g) (claim 12); the active catalyst composition has a cumulative specific pore volume in a range of 0.1 to 0.8 cubic centimeters per gram (cm3/g)(claim 13); and the active catalyst composition has an average pore diameter of 50 to 300 angstroms (Å) (claim 14, col. 3 lines 45-54).
Regarding claim 14-15, Hossain et al. in view of Loganathan and Bai already teaches a same or substantially the same active catalyst composition as that of instantly claimed, therefore, same or substantially the same property, i.e. same or substantially the same temperature-programed desorption of ammonia of 0.01 to 0.5 millimoles per gram, and same or substantially the same hydrogen temperature-programed reduction of 0.01 to 0.7 mmol/g as those of instantly claimed would be expected. Hossain et al. expressly teaches some the active catalyst composition having temperature-programed desorption of ammonia of 0.001 to 0.1 mmol/g (col. 12 line 65-col. 13 line 7, Fig. 10 A-B), and hydrogen temperature-programed reduction being preferably 0.1 to 0.8 mmol/g (col. 11 lines 23-51, Fig. 9 A-B).
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-14 of U.S. Patent No. 11819825 in view of Loganathan (US2021/0205789) and Bai (Modulation of surface chemistry by boron modification to achieve a superior VOX/Al2O3 catalyst in propane dehydrogenation, Catalysis Today 402 (2022), page 248–258). US’825 (noted US’825 is Hossain et al used in 103 rejections) teaches a substantially the same process of forming a substantially the same catalyst composition comprising vanadium oxide except not teaching the alumina support size or the active catalyst composition comprising boron oxide, such limitations are taught by Lognathan and Bai respectively as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well-known particle size as shown by Loganathan to modify the alumina containing support of US’825 because adopting a well-known technique of a support size being 20-150 µm to modify a well-known process of forming vanadium containing oxidative dehydrogenation catalyst for improvement would have predictable results (see MPEP §2143 KSR). It would have been obvious for one of ordinary skill in the art to adopt boron oxide particles to modify the process of forming the vanadium oxide catalyst of US’825 because by doing so can help provide an oxidative dehydrogenation catalyst with improved stability and increased selectivity to propylene as suggested by Bai (Fig. 1, 6, page 254 left col. last para.-right col. first para., page 256 right col. first para.).
Conclusion
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/JUN LI/Primary Examiner, Art Unit 1732