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 .
Response to Arguments
Applicant's arguments, filed May 20, 2026, have been fully considered but they are not deemed to be fully persuasive. The following rejections and/or objections constitute the complete set presently being applied to the instant application.
Drawings
Applicants amended the drawings filed May 20, 2026, the issues identified in the February 20, 2026 Office Action regarding the use of color drawings without granted petition and lack of axis labels in FIG. 12 have been fully resolved. Therefore, the drawings received on May 20, 2026 are acceptable.
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 20 is rejected under 35 U.S.C. 103 as being unpatentable over Garcia-Martinez (US 2012 0024776; cited on IDS filed August 2, 2023) in view of Zhang et al. (Catalysts, 2018), Majeed and Saleh (Iraqi Journal of Chemical and Petroleum Engineering, 2016), Miyazawa and Inagaki (Chemical Communications, 2000), Gao et al. (The Journal of Physical Chemistry B, 2009), Heracleous and Lemonidou (Journal of Catalysis, 2010), and Varisli et al. (Industrial and Engineering Chemistry Research, 2008).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed February 20, 2026 and those set forth herein.
Regarding the new limitation of amended claim 20, “wherein the oxidative dehydrogenation catalyst comprises 10-20 weight percent of the active catalytic material, based on the total weight of the oxidative dehydrogenation catalyst”, Garcia-Martinez discloses that an amount of catalytic material can be 0-99.5% of the total weight of the composite (¶ 79). Garcia-Martinez discloses that the catalytic material can comprise nickel (¶ 310) and can be impregnated on the silica composite (¶ 24).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to impregnate 10-20 weight % of the catalytic material into the silica composite of Garcia-Martinez, Zhang, Majeed, Miyazawa, Gao, Heracleous, and Varisli. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Garcia-Martinez discloses that an amount of catalytic material can be 0-99.5% of the total weight of the composite, and the catalytic material can comprise nickel and can be impregnated on the silica composite. The amount of the active catalytic material of Garcia-Martinez encompasses that instantly claimed. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Further, a person of ordinary skill in the art would have been motivated to adjust the amount of the catalytic material depending on the requirements of applications. The weight amount of the catalytic material is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal the amount of the catalytic material in order to best achieve the desired catalytic activity as the amount determine catalytic activity and selectivity. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP § 2144.05.
Applicant argues that the prior art does not disclose the new claimed limitation of 10-20 weight percent of the active catalytic material. Applicant argues that the prior art does not disclose any specific amount of nickel, nickel oxide, and/or nickel and iron mixed metal oxide to be included in a composite with the hierarchical silica composite. Applicant argues that criticality for the claimed range of active catalytic material can be demonstrated by, for example, Figure 4 of the specification.
This argument is unpersuasive. As discussed above, Garcia-Martinez teaches specific amount of catalytic material comprising nickel. A prima facie case of obviousness exists because the 10-20 % range of instant claim lies inside the 0-99.5 % range disclosed by the prior art. Further, it would have been customary for an artisan of ordinary skill to determine the optimal the amount of the catalytic material in order to best achieve the desired catalytic activity as the amount determine catalytic activity and selectivity. As discussed in the Office Action mailed February 20, 2026, Heracleous teaches Nb5+ doped nickel oxide as an effective catalyst. A person of ordinary skill in the art would have been motivated to utilize the active catalytic material of Heracleous in the hierarchical silica composite in order to enhance catalytic performance. Figure 4 of the instant specification shows an increased ethylene selectivity for 20 wt.% Ni/g-alumina. Because instant claim 20 recites that the active catalytic material comprises Ni and at least one cation dopant, 20 % of active catalytic material must include at least one cation dopant. Because Figure 4 only discloses the selectivity when using 20 wt.% of Ni alone, it fails to demonstrate the alleged criticality of the claimed range.
Applicant argues that the prior art references do not teach or suggest the claimed oxidative dehydrogenation catalyst composition having a high degree of morphological and structural specificity, and narrowly defined ranges of claimed limitations. Applicant argues that the prior art does not teach or suggest how to combine the suggested components of the oxidative dehydrogenation catalyst to form the claimed catalysis without undue experimentation. Applicant argues that the prior art merely provides invitations to experiment or obvious to try suggestion.
This argument is unpersuasive. As discussed in the Office Action mailed February 20, 2026, the prior art teaches the components and limitations of instant claims, and it would have been obvious to a person of ordinary skill in the art to apply and combine the teachings of the prior art to arrive at the claimed catalyst. The present claims recite an oxidative dehydrogenation catalyst composed of known structural and chemical components such as the active catalytic materials and hierarchical silica composites. A person of ordinary skill in the art, seeking to improve catalytic efficiency or morphology, would have been motivated to combine these known elements in the manner claimed with a reasonable expectation of success. The selection of specific narrow ranges such as mesopore and micropore dimensions represents routine optimization of predictable parameters rather than undue experimentation. The prior art references provide a reasonable expectation of success for combining these components to achieve the desired catalytic performance. The combination is not a mere obvious to try implementation or an invitation to experiment randomly, but rather a logical selection from a finite number of predictable options taught by the prior art. Where there is a design need or market pressure to solve a problem and there is a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options. Therefore, the combination of prior art references yields nothing more than predicable results, establishing a clear prima facie case of obviousness. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) see MPEP § 2144.06.
Claims 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia-Martinez, Zhang, Majeed, Miyazawa, Gao, Heracleous, and Varisli as applied to instant claim 20 above, and further in view of Agúndez et al. (Studies in Surface Science and Catalysis, 2004; cited on IDS filed August 2, 2023).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed February 20, 2026 and those set forth herein.
New claim 23 is derived from the canceled claim 3. Accordingly, the rejection of canceled claim 3 is applied to new claim 23.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Garcia-Martinez, Zhang, Majeed, Miyazawa, Gao, Heracleous, and Varisli as applied to instant claim 20 above, and further in view of Vermeiren et al. (US 2008 0050308; cited on IDS filed August 2, 2023).
This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed February 20, 2026 and those set forth herein.
New claim 22 is derived from the canceled claim 2. Accordingly, the rejection of canceled claim 2 is applied to new claim 22.
Conclusion
Applicant’s amendment necessitated the new ground(s) 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 JONG HWAN BAEK whose telephone number is (571)272-0670. The examiner can normally be reached Mon - Thu, 9 am - 3 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONG HWAN BAEK/Examiner, Art Unit 1618
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618
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