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 .
Status of Claims
Claims 1-15 are currently pending. Claims 7-15 are withdrawn. Claims 1, 5, and 6 have been amended. Claims 2-4 are as originally presented.
Information Disclosure Statement
The Information Disclosure Statements (IDS), filed 17 March 2026 and 22 May 2026 with appropriate timing statements, have been reviewed and considered by the examiner.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 has been labeled as currently amended in the communication filed 05/22/2026. However, the claim language has not been edited and applicant’s remarks make no mention of the intent to amend claim 3. The indication of claim 3 as amended appears to be a typographical error.
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.
Claim 1 is 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 phrase “type of” in claim 1 is a relative term which renders the claim indefinite. The phrase “type of” is not defined by the claim in the context of a “reduced catalyst,” 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. Due to the use of the relative term, it is rendered unclear to what degree the claimed catalyst must be related to a reduced catalyst to be considered a type of reduced catalyst, or if the fact that a catalyst is reduced but possesses another quality disqualifies it from the scope of the claim.
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller et al. (U.S. Patent Pub. No. 20170165645A1).
In regard to claim 1, Miller et al. teaches an unsupported composition with the formula MMoxWyOz wherein M is one of Mg, Mn, Fe, Co, Ni, Cu, Zn or mixtures thereof, with a preference for Ni, and the catalyst is optionally sulfided to produce an active hydroprocessing catalyst [0009]. The catalyst is described to be applicable in a hydroprocessing process including hydrogenation or hydrodearomatization are disclosed as uses for the catalyst [0029]. Standard conditions for such reactions include the catalyst coming into contact with a flow of hydrogen gas (cited specific standard conditions include 84-850 N·m3·H2/m3, [0030]) which would lead to a reduced active metal composition as instantly claimed.
In addition to broadly disclosing that sulfidation of the Ni-Mo-W oxide composition is optional, in each disclosed synthesis step Miller et al. states that sulfidation may be employed [0026], [0028], and thus the sulfur-free, reduced catalyst instantly claimed is reasonably anticipated by the disclosure even if the specific embodiments teach a sulfided activated catalyst.
In regard to claim 2, Miller et al. teaches the conditions for a hydroprocessing reaction in which the catalyst is contacted with hydrogen gas [0030], wherein the Ni-Mo-W metallic oxide material would be reduced and therefore be in an activated catalytic state as instantly claimed.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. as applied to claim 1 above, and further in view of Zhan et al. (U.S. Patent No. 9,919,987).
Miller et al. does not teach a composition comprising a molar ratio of 0.30≤Ni/(Ni+Mo+W)≤0.60, 0.05≤Mo/(Ni+Mo+W)≤0.25, 0.25≤W/(Ni+Mo+W)≤0.55.
However, Zhan et al. teaches an unsupported naphthene ring opening catalyst comprising Ni, Mo, and W in the following molar ratio: 0.25≤Ni/(Ni+Mo+W)≤0.80, 0<Mo/(Ni+Mo+W)≤0.25, 0.12≤W/(Ni+Mo+W)≤0.50 (Abstract). The molar ratios of Ni, Mo, and W taught by Zhan et al. significantly overlap the molar ratios instantly claimed. The disclosure of catalysts made by Miller et al. is quite general, as it states that the catalysts taught are applicable to a variety of reactions including hydrotreating, hydrofining, hydrogenation, hydrodearomatization, hydrodemetallation, hydrodesilication, hydrocracking, hydrodenitrogenation, and hydrodesulfurization [0029]. Compositions optimized for each specific reaction type are not disclosed. Therefore, a person of ordinary skill in the art would observe the efficacy of a reduced-type catalyst disclosed by Miller et al. and see the composition disclosed by Zhan et al., which is specific to a ring opening reaction, and seek to apply the taught molar ratios of Ni, Mo, and W to the generic catalyst composition of Miller et al. Furthermore, with respect to the encompassing and overlapping ranges of Zhan et al. and the instant claims, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time of invention to select the portion of the prior art’s range which is within the range of the applicants’ claims because it has been held prima facie case of obviousness to select a value in a known range by optimization for the results. In re Aller, 105 USPQ 233. Additionally, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. as applied to claim 1 above, and further in view of Solmanov et al. (Reaction Kinetics, Mechanisms and Catalysis, 2020, 129, pp. 253-264).
In regard to claim 4, Miller et al. does not teach the inclusion of a reaction promoter in their catalyst composition. However, Solmanov et al. teaches that phosphorus is one of the most commonly proposed additives to metallic hydrotreating catalysts due to phosphorus’s high hydrogenation activity in aromatic and nonaromatic feedstocks (pp. 254, 2nd paragraph). Solmanov et al. further teaches the optimization of phosphorus addition (up to 5 wt% of carrier in the form of P2O5; as per pp. 254, 3rd paragraph) to a Ni-Mo-W/Al2O3 sulfide catalyst for dibenzothiophene hydrogenolysis and naphthalene hydrogenation. A person of ordinary skill I the art would have recognized the applicability of the teaching of Solmanov et al. to Miller et al. as both references are drawn to Ni-Mo-W metallic catalysts and while the catalysts of Solmanov et al. are supported sulfied catalysts, the phosphorus additive is described to improve acid centers in some systems (pp. 254, 2nd paragraph) and in the studied system the inclusion of phosphrous created more electron-deficient active metal centers, positively improving the reaction kinetics overall. This electronic effect would be applicable to system which do not include sulfur, such as a non-sulfided catalyst taught by Miller et al., and thus despite the compositional difference between Solmanov et al. and Miller et al., a person of ordinary skill in the art would be motivated to include phosphorus with a reasonable expectation of successfully improving the catalytic activity of the catalysts taught by Miller et al. (pp. 259, 4th paragraph – pp. 261). Therefore, it would have been obvious, to one of ordinary skill in the art at the time, to modify the unsupported Ni-Mo-W catalyst of Miller et al. to include a phosphorus dopant to promote the hydrogenation of step of a hydroprocessing reaction as suggested by Solmanov et al.
In regard to claim 5, Solmanov et al. teaches that phosphorus (P2O5) may be added to the catalyst composition in an amount of up to 5 wt% of the carrier used, and that the catalytic metals and carrier are in a constant ratio of 8.88·10-4 mol metal to 1 g carrier (pp. 254, Experimental section). Therefore, the phosphorus used would have been in an amount less than 5 wt% the total mass of the catalytic metal composition, phosphorus, and carrier. In an unsupported catalytic system, it would have been obvious to apply a similar amount of phosphorus to the system as suggested by Solmanov et al. Furthermore, the <5 wt% loading of Solmanov et al. encompasses the instantly claimed phosphorus loading amount of 0-3 wt%. With respect to the encompassing and overlapping ranges, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time of invention to select the portion of the prior art’s range which is within the range of the applicants’ claims because it has been held prima facie case of obviousness to select a value in a known range by optimization for the results. In re Aller, 105 USPQ 233. Additionally, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
In regard to claim 6, Solmanov et al. teaches that the promoter added is phosphorus. The combination of the teachings of Solmanov et al. and Miller et al. would have been obvious to a person of ordinary skill for the reasons described above with regard to claim 4.
Response to Arguments
With regard to claims 1 and 2, applicant argues that the catalysts disclosed in CN ‘514A and Chen et al. are sulfide-based catalysts while the amended claims explicitly require a reduced-catalyst, which differ structurally due to a pretreatment step of a sulfur compound versus hydrogen, and thus the catalysts of the prior art do not read to the instant claims.
Applicant further argues that dependent claims 3-6 are allowable by virtue of depending from allowable claim 1.
With regard to claim 5, applicant argues that the disclosed range of ZSM-5 zeolite added to the catalyst in CN ‘514A, 5-20%, is outside the amended instantly claimed range of 0-3 wt%, and thus the amount of acidic additive of CN ‘514A does not read to the amount of promoter in the instant claims.
With regard to claim 6, applicant argues that Chen et al. does not teach the unexpected effect of P addition (acidity) on the instantly disclosed catalyst. Applicant further argues that a person of ordinary skill in the art would not have been motivated to combine the teachings of CN ‘514A and Chen et al. because the ZSM-5 additive of CN ‘514A and the phosphorus component of Chen et al. would be redundant as acidic modifiers in the catalyst. Applicant further argues that that combination of ZSM-5 zeolite and phosphorus as taught by CN ‘514A and Chen et al. as acidic additives would exceed the 5-20 wt% limitation of the claim.
Applicant’s arguments with respect to claims 1-6 have been considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORDECAI M LEAVITT whose telephone number is (571)272-6637. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/MORDECAI M LEAVITT/Examiner, Art Unit 1742 /CHRISTINA A JOHNSON/Supervisory Patent Examiner, Art Unit 1742
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