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 April 27, 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.
Applicant indicated that the claims were amended to rewrite claims 2 and 3 as new dependent claims 21 and 22 in the Remarks filed April 27, 2026. However, while the canceled claim 2 corresponds to new claim 22, the subject matter of new claim 21 does not correspond to canceled claim 3 or any other previously examined claims.
Priority
Applicant amended claims filed April 27, 2026, the issues identified in the February 27, 2026 Office Action have been fully resolved. The effective filing dates of claims are March 7, 2019.
Drawings
Applicant amended the drawings filed April 27, 2026, the issues identified in the February 27, 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 April 27, 2026 are acceptable.
Specification
The amended title of the invention is not descriptive. The claimed invention does not relate to a method for treating cancerous tissue with a nanotherapeutic. A new title is required that is clearly indicative of the invention to which the claims are directed.
Appropriate correction is required.
The disclosure is objected to because of the following informalities:
Although Applicants amended the specification filed April 27, 2026, the issues identified in the February 27, 2026 Office Action regarding the use of the terms that are a trade name or a mark used in commerce have not been fully resolved. Applicants did not include a proper symbol for BODIPY. BODIPY is a registered trademark . Furthermore, Applicant did not provide appropriate generic terminology for all used trade names or marks. The terms should be accompanied by appropriate generic terminology. Therefore, the specification remains objected to.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claim 13 is objected to because of the following informalities:
In claim 13, the last phrase, “and wherein an amount of the active catalytic material is in a range of 10-20 wt.%, all of which are relative to the total weight of the catalyst” should read “wherein an amount of the active catalytic material is in a range of 10-20 wt.% relative to the total weight of the catalyst.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112 New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 24 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 24 recites that the oxidative dehydrogenation of ethane to ethylene has an ethylene yield of 30-35% at a temperature of 550 to 600 °C when the active catalytic material is present in the catalyst in an amount of 20 wt.%. FIG.11 shows an ethylene yield of 30-35% at a temperature of 550 to 600 °C for 20 wt.% Ni/hierarchical mesosilicalite. Because claim 13 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. However, FIG. 11 discloses the yield when using 20 wt.% of Ni only. Therefore, the single disclosed species is insufficient to support the claimed genus.
Appropriate correction is required.
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 13, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Sang et al. (Journal of Nanoparticle Research, 2014; cited on IDS filed August 2, 2023) in view of Garcia-Martinez (US 2012 0024776; cited on IDS filed August 2, 2023), Majeed and Saleh (Iraqi Journal of Chemical and Petroleum Engineering, 2016; cited on PTO-892), , and Jermy et al. (Journal of Molecular Catalysis A: Chemical, 2015; cited on PTO-892).
Sang discloses a method for catalytic cracking of endothermic hydrocarbon fuels using HZSM-5/MCM-41 composite molecular sieves (abstract). Sang discloses that the HZSM-5 can be uniformly dispersed in the MCM-41 and that the microporous-mesoporous hierarchical composites shows a high catalytic activity, high selectivity to light olefins, and a long lifetime for n-decane catalytic cracking by providing a proper activity, shorter channels, and a higher specific surface area for reaction (abstract).
Sang does not disclose a stereoregular MCM-41 ordered arrangement of uniformly-sized mesopores with diameters in a range of 10-50 nm and mesopore walls having a thickness of 3 to about 5 nm and a stereoregular ZSM-5 ordered arrangement of uniformly-sized micropores with diameters of less than 2 nm.
Garcia-Martinez discloses a silica composite (mesostructured zeolites) comprising an inorganic material such as ZSM-5 (zeolite) (claim 7; ¶ 16) and a mesostructure such as MCM-41 (claim 14) for use as a catalyst for producing a petrochemical product such as olefins (abstract; claim 50). Garcia-Martinez discloses that the mesopores can have an ordered arrangement (stereoregular) (¶ 129) and a narrow pore size distribution (uniformly sized) (claim 10; ¶ 200), with diameters in a range of 2-60 nm (¶ 82) and with a pore wall thickness in a range of 1-5 nm (claim 9).
Majeed discloses a micro-mesoporous composite (abstract). Majeed discloses that the zeolite (ZSM-5) micropores can be less than 2 nm and mesopores can be 2-50 nm (page 71, column 2, ¶ 3). Majeed discloses that the composite can be multiporous (hierarchical) (page 73, column 1, ¶ 2) and can have ordered structure (stereoregular) (page 76, column 2, ¶ 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the ZSM-5 of Majeed having a pore diameter of less than 2 nm located within the MCM-41 mesopore of Garcia-Martinez having a diameter of 2-60 nm and a pore wall thickness of 1-5 nm walls for the composite of Sang. 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 teaches that mesopores such as MCM-41 can have an ordered arrangement (stereoregular) and a narrow pore size distribution (uniformly sized) with diameters in a range of 2-60 nm (¶ 82) and with a pore wall thickness in a range of 1-5 nm. Majeed teaches that the ZMS-5 having less than 2 nm pore size can be used as micropores for catalyst and that the silica composite can be hierarchical and stereoregular. The diameter and pore wall thickness of mesopore of Garcia-Martinez encompass those 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 diameter and pore wall thickness of the mesopore depending on the requirements of applications. The diameter and pore wall thickness of mesopore 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 diameter and pore wall thickness of the mesopore in order to best achieve the desired catalytic activity. “[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. Further, a person of ordinary skill in the art would have been motivated to use uniformly-sized micropores in order to achieve precise selectivity and homogeneous active sites of the catalysts.
Neither Sang nor Majeed discloses a method of oxidatively dehydrogenating an alkane to form an olefin comprising contacting the alkane with a catalyst, an oxidant, and an inert gas in a reactor; wherein the active catalytic material comprising metal (oxide) such as nickel oxide (NiO) and cation dopant such as Bi5+(bismuth); and wherein an amount of the active catalytic material is in a range of 10-20 wt.% relative to the total weight of the catalyst.
In addition to the teachings of Garcia-Martinez discussed above, Garcia-Martinez discloses that the catalytic material can comprise nickel (¶ 310) and can be impregnated on the silica composite (¶ 24). Garcia-Martinez discloses that an amount of catalytic material can be 0-99.5% of the total weight of the composite (¶ 79).
Jermy discloses a method for oxidative dehydrogenation (ODH) of n-butane (alkane) to butadiene (olefin) using the catalyst comprising nickel oxide (abstract). Jermy discloses that the ODH can be conducted using a fixed bed continuous glow-type reactor system comprising contacting the reactant with a catalyst, an oxidant (O2), and an inert gas (N2) in the reactor (page 123, column 1, ¶ 2). Jermy discloses that the amount of the active catalytic material can affect the activity and selectivity (abstract, page 123, Fig. 2). Jermy discloses that highly loaded NiO/ γ -Al2O3 catalyst showed better 1,3-butadiene selectivity and Ni loading of 5–30 wt % increases the reducibility due to NiO crystalline stacking (page 131, column 1, ¶ 4). Jermy discloses that addition of Bi can further shift the reduction temperature, and the catalyst of Bi modified NiO can have high activity and selectivity for ODH due to either an improved Ni dispersion and redox property or a couple of weak acidity and moderate basicity (page 131, column 1, ¶ 4-page 131, column 2, ¶ 1).
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 wt. % of the catalytic material comprising NiO and Bi into the composite of Sang, Garcia-Martinez, and Majeed in order to prepare a catalyst consisting of the hierarchical silica composite and the active catalytic material for ODH method. 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. Jermy teaches that various amount of the active catalytic material comprising NiO and Bi can be used as an effective catalyst for ODH method. 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 as taught by Jermy. “[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.
Claims 15-17, 19, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sang, Garcia-Martinez, Majeed, and Jermy as applied to claims 13, 21, and 23 above, and further in view of Wang (王) et al. (CN100473635, 2009; cited on PTO-892; all citations from the machine translation).
In addition to the teachings of Sang discussed above, Sang discloses that the catalytic reaction can be carried out with a nitrogen flow of 30 mL min-1 and a feeding rate of n-decane of 0.1 mL min-1 at atmospheric pressure and 500 ͦC (abstract; page 4, column 1, ¶2). This indicates an atmospheric pressure of 101.325 kPa (page 3, column 2; Nesbitt, 2007; cited on PTO-892). Sang discloses that catalyst pretreatment method using nitrogen at a flow rate of 30 mL min-1 and 500 ͦC for 1 hour (page 2755, column 1, ¶ 2).
In addition to the teachings of Jermy discussed above, Jermy discloses that the reaction can be performed at different temperatures such as 500 ͦC (page 123, column 1, ¶ 2).Garcia-Martinez and Majeedare discussed above.
None of Sang, Garcia-Martinez, Majeed, and Jermy discloses that inert gas flow rate of 50-150 mL min-1, alkane flow rate of 0.5-1.0 mmol min-1, and pretreatment of the catalysis with an inert gas at an inert gas flow rate of 50-150 mL min-1. None of Sang, Garcia-Martinez, Majeed, and Jermy discloses that the alkane comprises ethane and the olefin comprises ethylene.
Wang discloses methods of catalytic oxidation of ethane to olefin such as ethylene (abstract). Wang discloses that the catalytic reaction can be carried out in an atmospheric (normal) pressure, temperature 600 ͦC, and total flow rate 150 ml min-1 when N2:O2:C2H6 = 17:3:10 (volume ratio) (page 5, Example 8). Wang discloses that catalyst pretreatment can be performed with mixed gas of oxygen and nitrogen at a flow rate of 10-1000 ml min -1 and a temperature of 400-700 ℃ for 1-60 minutes (claim 5).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the reaction conditions of Wang to the method of Sang, Garcia-Martinez, Majeed, and Jermy in order to produce ethylene from alkane. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Wang teaches the detailed experimental conditions for improved catalytic activity depending on the requirement of applications,. The pretreatment conditions of Wang encompasses or overlaps with those 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 optimize the reaction conditions such as flow rates of inert gas and alkane depending on the requirements of applications. The reaction conditions are clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of reaction conditions 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 conditions in order to best achieve the desired catalytic activity as the conditions such as temperature and flow rate determine catalytic activity and selectivity as taught by Wang. “[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. Regarding claim 24, the yield of ethylene from the claimed method is a result of the catalyst material and reaction conditions used. One of ordinary skill in the art would seek to optimize the yield of the dehydrogenation reaction. The applied prior art renders obvious the claimed catalysts and reaction temperatures of 550 – 600°C are known in the art and there is no evidence of unexpected results of record, claim 24 is not patentably distinguished over the applied prior art.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sang, Garcia-Martinez, Majeed, and Jermy as applied to claims 13, 21, and 23 above, and further in view of Arnold et al. (US 8,519,210, 2013; cited on PTO-892).
Sang, Garcia-Martinez, Majeed, and Jermy are discussed above.
None of Sang, Garcia-Martinez, Majeed, and Jermy discloses that the inert gas is He (helium).
Arnold discloses a process for producing ethylene via ODH of ethane (title). Arnold discloses that oxygen containing gas can be mixed with an inert gas such as nitrogen and He (column 8, lines 50-51).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify to the method of Sang, Garcia-Martinez, Majeed, and Jermy by replacing nitrogen with He as an inert gas. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Arnold teaches that nitrogen and He are art recognized equivalents and it is obvious to substitute one art recognized equivalent for another absent evidence of unexpected results. Further, a person of ordinary skill in the art would have been motivated to utilize He instead of nitrogen in order to achieve higher inertness. Accordingly, applying the teachings of Arnold to the method of Sang, Garcia-Martinez, Majeed, and Jermy to utilize He represents a predictable use of prior art elements according to their established functions and therefore renders claim 18 obvious.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Sang, Garcia-Martinez, Majeed, and Jermy as applied to claims 13, 21, and 23 above, and further in view of Vermeiren et al. (US 2008 0050308; cited on IDS filed August 2, 2023).
Sang, Garcia-Martinez, Majeed, and Jermy are discussed above.
None of Sang, Garcia-Martinez, Majeed, and Jermy discloses that the silica composite has a silicon to aluminum molar ratio in a range of 1,000:1 to 3,000:1.
Vermeiren discloses zeolite materials such as aluminosilicate (¶ 45) having silicon/metal ratio from 22.5 to 15,000 (22.5:1 to 15,000:1) (¶ 43). Vermeiren teaches that the zeolite can be ZSM-5 (¶ 80). Vermeiren discloses that dealumination of zeolites improves process performance such as selectivity, product quality, catalyst stability, and reduced surface activity (¶ 4).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the silica composite of Sang, Garcia-Martinez, Majeed, and Jermy to have a low aluminum content such as 1,000:1 as taught by Vermeiren. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Vermeiren teaches that silica composites can be made with low aluminum content for improving performance and reducing surface activity. Further, a person of ordinary skill in the art would have been motivated to make this modification in order to improve catalyst stability and to prevent unwanted side reactions. The silicon to aluminum ratio of the prior art overlap with 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. The silicon to aluminum ratio 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 silicon to aluminum ratio in order to best achieve the desired catalytic activity as the ratio determine catalytic activity by controlling acidity, selectivity, and stability of the catalysts . “[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. Accordingly, applying the teachings of Vermeiren to the method of Sang, Garcia-Martinez, Majeed, and Jermy to achieve low aluminum content represents a predictable use of prior art elements according to their established functions and therefore renders claim 22 obvious.
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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/JONG HWAN BAEK/Examiner, Art Unit 1618
/Nissa M Westerberg/Primary Examiner, Art Unit 1618
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