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 .
Applicants’ remarks and amendments, filed on April 23, 2026, have been carefully considered. Claims 8, 9 and 14 have been amended; no new claims have been added.
Claims 1-18 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on October 25, 2023.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8, in the reply filed on April 23, 2026, is acknowledged. The traversal is on the ground(s) that "search and/or examination of all of the alleged inventions would not give the Examiner any substantially more burden than search and/or examination of any one of the pending invention because the Examiner is likely to search in the same classification with substantially the same queries.” This is not found persuasive because as shown in the restriction requirement, Groups I-VI have differing fields of search, resulting in the formation of differing search strategies and/or queries for each group.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-18 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to the nonelected inventions of (a) a method of producing a catalyst comprising at least Mo and Bi (claims 9-14), (b) and (c) methods of producing an α,β-unsaturated aldehyde and/or an α,β-unsaturated carboxylic acid from an alkene, alcohol or an ether (claims 15 and 16), (d) a method of producing an α,β-unsaturated carboxylic acid from an α,β-unsaturated aldehyde (claim 17), and (d) a method of producing an α,β-unsaturated carboxylic acid ester from an α,β-unsaturated carboxylic acid (claim 18), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 23, 2026.
Applicants’ submission that “the method claims should be examined with the elected claims because they have been amended to depend from and incorporate all limitations of elected claim 1” has been considered. Although claim 9 has been amended to depend from claim 1, the method recited in this claim (and in claims 10-14 depending therefrom) was shown, in the previous Restriction Requirement, to be an invention distinct from at least Group I, as the catalyst of Group I has been shown to be produced by another and materially different process; see Item 5 of the previous restriction requirement.
For this reason, rejoinder of Group II, claims 9-14, with elected Group I, claims 1-8, will not be done at this time.
Applicants’ request that the withdrawn claims “be rejoined once the elected claims are in condition for allowance in accordance with MPEP 821.04” is duly noted and will be considered in the event the elected claims are determined to contain allowable subject matter. Applicants are respectfully remined that all rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103, and 112.
Claims 1-8 are presently under consideration by the Examiner.
Claim Objections
Claim 8 is objected to because of the following informalities:
In line 1 of claim 8, “wherein a catalyst composition” should be amended to recite “wherein the catalyst composition”.
Appropriate correction is required.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/371,240 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
The claims in the instant application are drawn to a catalyst comprising at least molybdenum and bismuth, wherein the catalyst exhibits a ratio of B/A ranging from 1.3 to 5, wherein A is a ratio of the amount of bismuth atoms to the amount of molybdenum atoms, calculated from ICP (inductively coupled plasma) atomic emission spectrometry is A, and B is a ratio of a peak area of bismuth atoms to a peak area of molybdenum atoms, measured by X-ray photoelectron spectroscopy.
The claims in the copending ‘240 application are drawn to a catalyst comprising at least molybdenum, said catalyst having a chemical oxygen demand (COD) ranging between 300 and 11000 ppm. The catalysts in the respective sets of claims have similar formulae (claim 8 of the instant application; claims 4 and 9 of the copending ‘240 application), with the exception that in the copending ‘240 application, the formulae recited therein contain an additional (NH4)h1 and (NH4)h2, with h1 and h2 each ranging from 0 to 30. Thus, in the copending ‘240 application, when h1 and h2 are 0, the formulae recited therein read on that recited in claim 8 of the instant application; the respective catalysts would be expected to exhibit the properties of COD and claimed ratio of B/A in comparable values.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kurimoto et al. (U. S. Patent No. 5,700,752).
Regarding claims 1, 7, and 8, Kurimoto et al. teach a catalyst for the production of unsaturated aldehyde and unsaturated carboxylic acid by the vapor-phase catalytic oxidation of at least one compound selected from the group consisting of propylene, isobutylene, t-butanol, and methyl-t-butyl ether (“for use in production of an α,β-unsaturated aldehyde and/or an α,β-unsaturated carboxylic acid from an alkene, an alcohol, or an ether”). The catalyst comprises (a) a catalyst having Mo, Bi, and Fe as essential components and (b) a solid acid. The catalyst having Mo, Bi, and Fe as essential components is represented by a general formula comparable to that recited in Applicants’ claim 8. See col. 3, lines 25-57 of Kurimoto et al., as well as col. 7, line 51 to col. 8, line 14, which describes the aforementioned vapor-phase catalytic oxidation reactions in which the aforementioned catalyst is employed, and also teaches exemplary unsaturated aldehydes and unsaturated carboxylic acids obtained from said reactions.
Kurimoto et al. do not explicitly teach or suggest that the aforementioned catalyst exhibits a ratio B/A of 1.3 to 5, wherein A represents a ratio of the amount of bismuth atoms to the amount of molybdenum atoms, calculated from ICP (inductively coupled plasma) atomic emission spectrometry, and B represents a ratio of peak area of bismuth atoms to a peak area of molybdenum atoms, measured by X-ray photoelectron spectroscopy, as recited in claim 1. Kurimoto et al. also do not teach or suggest the B/A ranges recited in claims 2 and 3, or the values of A and B recited in claims 4-6.
However, as discussed above, the catalyst disclosed in Kurimoto et al. structurally reads upon Applicants' instantly claimed catalyst, said disclosed catalyst comprising at least molybdenum and bismuth, as recited in claim 1, and also formulaically comparable to that recited in Applicants' claim 8. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to reasonably expect the catalyst disclosed in Kurimoto et al. to exhibit the ratio B/A, as well as he values for A and B, in amounts comparable to those respectively recited in Applicants’ claims 1-6, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 94 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Further, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also MPEP 2112.01(I).
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (U. S. Patent No. 4,118,419).
Regarding claims 1 and 8, Ishii et al. teach a catalyst composition represented by the formula PaMobBicSbdXeYfOg, wherein Mo is molybdenum, P is phosphorus, Bi is bismuth, Sb is antimony, O is oxygen, X is at least one element selected from the group consisting of potassium, rubidium, cesium, and thallium; and Y is at least one element selected from the group consisting of cobalt, zinc, niobium, chromium, nickel, iron, silicon, tantalum, cadmium, uranium, manganese, copper, thorium, selenium, aluminum, titanium, tungsten and cerium, and wherein the subscripts a-g represent the atomic ratio of each component such that a is 0.5 to 6, bis 12, c is 0.01 to 6, d is 0.01 to 12, e is 0.2 to 6, f is 0.01 to 6, and g is a value which is determined by the valencies of the elements present in the catalyst; note that this formula is comparable to that recited in Applicants’ claim 8. See col. 1, lines 37-62 of Ishii et al.
Regarding claim 7, while the catalyst disclosed in Ishii et al. is employed in the preparation of acrylic acid or methacrylic acid by contacting a gaseous mixture of acrolein or methacrolein and molecular oxygen (col. 1, lines 41-47 therein), this reference does not explicitly teach that the aforementioned catalyst is employed in the production of an α,β-unsaturated aldehyde and/or an α,β-unsaturated carboxylic acid from an alkene, an alcohol, or an ether.
However, it is considered that because Ishii et al. teach a catalyst structurally reading upon that instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to reasonably expect the catalyst disclosed in Ishii et al. to suitably and effectively produce an α,β-unsaturated aldehyde and/or an α,β-unsaturated carboxylic acid from an alkene, an alcohol, or an ether, absent the showing of convincing evidence to the contrary.
Additionally, the claim limitation “for use in production of an α,β-unsaturated aldehyde and/or an α,β-unsaturated carboxylic acid from an alkene, an alcohol, or an ether” is considered a statement of intended use.
Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Ishii et al. teach a catalyst structurally reading upon that instantly claimed, it is clear that the catalyst disclosed in this reference would be capable of performing the intended use presently claimed, i.e., in the production of an α,β-unsaturated aldehyde and/or an α,β-unsaturated carboxylic acid from an alkene, an alcohol, or an ether, as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Ishii et al. do not explicitly teach or suggest that the aforementioned catalyst exhibits a ratio B/A of 1.3 to 5, wherein A represents a ratio of the amount of bismuth atoms to the amount of molybdenum atoms, calculated from ICP (inductively coupled plasma) atomic emission spectrometry, and B represents a ratio of peak area of bismuth atoms to a peak area of molybdenum atoms, measured by X-ray photoelectron spectroscopy, as recited in claim 1. Ishii et al. also do not teach or suggest the B/A ranges recited in claims 2 and 3, or the values of A and B recited in claims 4-6.
However, as discussed above, the catalyst disclosed in Ishii et al. structurally reads upon Applicants’ instantly claimed catalyst, said disclosed catalyst comprising at least molybdenum and bismuth, as recited in Applicants’ claim 1, and also formulaically comparable to that recited in Applicants’ claim 8.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants' invention to reasonably expect the catalyst disclosed in Ishii et al. to exhibit the ratio B/A, as well as he values for A and B, in amounts comparable to those respectively recited in Applicants’ claims 1-6, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 94 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Further, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); see also MPEP 2112.01(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 May 5, 2026
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