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 .
DETAILED ACTION
Claims 1-18 of B. Pennemann, et al., US 18/546,817 (08/17/2023) are pending. Claims 7-15 and 18 are withdrawn as drawn to nonelected Groups II-III. Claims 1-6 and 16-17 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I (claims 1-6 and 16-17), with traverse, in the reply filed on 03/03/2026. Claims 7-15 and 18 drawn to non-elected Groups II-III are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Applicant’s Traversal
Applicant traverses on the ground that the instant claim 1 has been amended with the limitation of “said support comprising shaped silicon dioxide bodies and/or shaped silicon carbide bodies having an average diameter within a range from 1.0 mm to 15 mm” which cannot be met by Shen. See page 9, paragraph 2-3 in the Remarks filed on 03/03/2026.
This argument is not persuasive, while the amended claim 1 cannot be met by Shen, however, as detail discussed in the 103 rejection below that the combination of Shen-1 and Zhu teaches a method meeting each and every limitation of the instant claim 1, therefore, the restriction requirement is made as Final.
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.
Claims 1-6 and 16-17 are rejected under 35 USC § 103 Rejection over a combination of Z. Shen, et al. CN1768930A (2006)(“Shen-1”) in view of H. Zhu, et al, A Handbook of Catalysts, 2008 (“Zhu”).
Z. Shen, et al. CN1768941A(2006)(“Shen-1”)
Shen-1 is published in Chinese, a copy of machine translation is attached as the second part of the reference, which results the total page of the full reference is 19, the format of citation of the reference is xx/19.
Shen-1 teaches a nitrobenzene gas phase hydrogenation to aniline fluidized bed catalyst. Shen-1 at page 13/19, title.
Shen-1 teaches that the aniline fluidized bed catalyst can be prepared by a process comprising the follows steps:
a) put the metal copper into the reaction pot, first purify and remove a small amount of other metals and their surface oxides, chlorides and other impurities, and the final copper content should be greater than 99.0% by weight. After adding water, ammonia is added to the corresponding acid or ammonium salt, and the metal copper is continuously oxidized to form a copper ammonia solution;
b) mixing a metal salt containing at least one of Cr, Mo, Ba, Zn, Ce, Ni, V, Pb or Pt into a solution and mixing with the carrier silica, drying, and calcining;
c) The silica treated with the above treatment is immersed in a copper ammonia solution for several hours, filtered, washed, dried, and calcined to obtain a finished catalyst product.
Shen-1 at page 15/19, paragraph 1-3, emphasis added.
Shen-1 teaches working examples, such as Example 2 as follows:
[Example 2]
The preparation method of the copper ammonia solution (1) is the same as that of [Example 1].
Weigh 4.6 g of Cr(NO3)3·9H2O, 1.2 g of Ba(NO3)2 and 2.7 g of Zn(NO3)2·6H2O dissolved in 450 g of hot water, and heat 160 g of silica, and stir for 30 minutes. It was dried at 100 °C for 8 hours and then calcined at 500 ° C for 4 hours to obtain a carrier (B).
The three-necked flask is equipped with a thermometer and mechanically stirred, and the copper ammonia solution (1) is weighed and mixed with the carrier (B). The mixture is stirred at 50 to 60 ° C for 2 hours, heated to 70 to 80 ° C for 2 hours, and then raised. After immersion for 8 hours at 85-90 ° C, cooling, filtering, washing twice with 2.5 ml of 2.5% diluted aqueous ammonia, washing with deionized water until no blue, drying at 100 ° C for 12 hours, then baking at 400 ° C for 4 hours . Under the process conditions of the present invention, the results of the investigation are shown in [Example 12].
Shen-1 at page 16/19, Example 2, emphasis added.
Per Example 1, Shen-1 teaches the copper ammonia solution (1) is prepared as follows:
[Example 1]
The recovered electrolytic copper block is boiled in 5-10% sodium hydroxide solution for 3 hours, then dehydrated, and then immersed in 3% dilute nitric acid or dilute sulfuric acid for 8 hours, deacidized, washed with water to neutral, and obtained. Purified copper, content greater than 99.5% by weight, spare.
The four-necked flask was equipped with mechanical stirring, thermometer and condenser tube, adding 418 g of water, 113 g of glacial acetic acid, stirring ammonia gas to pH greater than 7.0, adding 63.6 g of the above copper block, passing air and ammonia gas, keeping the temperature at After 70 ° C or less, after about 4 hours, 21.8 g of the above copper block was added, and the reaction of air and ammonia to the copper powder was continued. It took about 7 hours, cooled, and a small amount of residue was filtered to obtain a copper ammonia solution (1). After analysis, the total copper content (molar concentration) was 2.14 mol/liter, the specific gravity was 1.15, and the pH was 10.9.
Shen-1 at page 16/19, Example 1, emphasis added.
The Shen-1 Example 2 method comprises:
dissolving a metal salt comprising a zinc salt that is Zn(NO3)2 in water and obtaining an aqueous metal salt solution;
treating a support that is silica with the aqueous metal salt solution and obtaining a first impregnated catalyst precursor;
drying the first impregnated catalyst precursor;
calcining the dried catalyst precursor and obtaining a first calcined catalyst precursor that is carrier B;
dissolving a copper salt in aqueous ammonia to obtain an ammoniacal copper salt solution;
treating the first calcined catalyst precursor with the ammoniacal copper salt solution to obtain a second impregnated catalyst precursor; and
forming a doped tetraamminecopper salt-based hydrogenation catalyst by drying and calcining the second impregnated catalyst precursor.
Difference Between Shen-1 and the Claims
The Shen-1 Example 2 differs from claim 1 only in that Shen-1 does not teach the average diameter of the silica used as the support within a range from 1.0mm to 15 mm.
H. Zhu, et al, A Handbook of Catalysts, 2008 (“Zhu”)
Zhu is published in Chinese and a copy of English translation is attached as the cited part of the handbook. The total page of the cited part is 5, the format of the citation is x/5.
Zhu teaches that silica (SiO2) having an average diameter of 0.64-1.27 mm can be used as a support for cupper based catalyst, and the catalyst can be used for hydrogenation of nitrobenzene to aniline in fluidized bed gas-phase catalytic hydrogenation process. Zhu at 4/5, Table and line 23-26, catalyst NC101.
Obviousness Rationales of the Claims 1-6 and 16-17
Claim 1 is obvious because one ordinary skill seeking a doped tetraamminecopper salt-based catalyst for hydrogenation of nitrobenzene to aniline is motivated to conduct Shen-1 Example 2 method by using silica (SiO2) having an average diameter of 0.64-1.27 mm as the catalyst support to prepare a doped tetraamminecopper salt-based catalyst. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05. I. Herein, the claimed 1.0-15 mm overlaps the prior art 0.64-1.27 mm, therefore, a prima facie case of obviousness exists.
One ordinary skill is motivated to do so with a reasonable expectation of success because Zhu teaches that silica (SiO2) having an average diameter of 0.64-1.27 mm can be used as a support for cupper based catalyst, and the catalyst can be used for hydrogenation of nitrobenzene to aniline in fluidized bed gas-phase catalytic hydrogenation process. The rationales supporting the proposed method is “combining prior art elements according to known methods to yield predictable results”. See MPEP2143. I.
Claim 2 is obvious because one ordinary is motivated to conduct the step (b) in the proposed method by using a volume of the aqueous metal solution not more than the maximum absorptivity of the silica support so that to make all the aqueous solution can be absorbed by the silica support without wasting of the aqueous metal solution. Regarding the equations cited in the claim, the maximum absorptivity of a support is not changed by the method of measurement. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP § 2144.05(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Herein, the claimed ratio between the volume of the aqueous metal solution and the maximum absorptivity of the support is similar as concentration, neither art nor the instant application provide evidence to show the claim ratio is critical, rather the specification discloses:
Both in the case of employment of impregnation and in the case of employment of spraying, it is preferable to use the solution of the dopant metal or copper salt in such a ratio to the support (T) or to the first calcined catalyst precursor (KV1) as not to exceed the maximum absorptivity S of the support (ST) or of the first calcined catalyst precursor (SKV1).
See specification at page 19, line 30 to page 20, line 5..
Claim 3 is obvious because in step (a) of the proposed method, Zn(NO3)2 is comprised in the metal aqueous solution.
Claim 4 is obvious because in step (e) of the proposed method, in addition copper salt, ammonium acetate is also formed in the aqueous solution.
Claim 5 is obvious because in step (b) of the proposed method, silica support is impregnated with the metal aqueous solution.
Claim 6 is obvious because the silica taught by Zhu is spheres.
Claims 16-17 are obvious because one ordinary skill is motivated to further modify the proposed method by conducting the proposed step (a) to (d) and/or the proposed step (e) to (g) repeatedly so that can make the metal salt and/or copper salt has a maximum absorption on the silica support.
Non-Statutory Double Patenting Rejections
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).
Clams 1-6 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims1,6-7 and 13 of U. S. Patent No. US12577194B2 (2026) in view of Z. Shen, et al. CN1768941A(2006)(“Shen-1”)
Conflicting Claims
Regarding claim 1, the conflicting claim 1 claims:
A process for preparing an aromatic amine by hydrogenating an aromatic nitro compound, comprising:
(I). providing a tetraamminecopper salt-based impregnated catalyst comprising a metal or metal oxide on a support as hydrogenation catalyst, where at least metallic or oxidic copper is present and the molar proportion of copper, based on all metals present on the catalyst, is 0.75 to 1, and where the support comprises discrete particles of silicon dioxide or silicon carbide having an average diameter of 4.0 mm to 15 mm;
. . . .
The conflicting claim 7 further claims:
7. The process as claimed in claim 1, in which step (I) comprises:
(a) dissolving a copper salt in aqueous ammonia to obtain an ammoniacal copper salt solution;
(b) impregnating the support with the ammoniacal copper salt solution obtained in (a), followed by drying of the impregnated support thus obtained to obtain a catalyst precursor, and
(c) calcining the catalyst precursor obtained in (b) to form the tetraamminecopper-based impregnated catalyst.
Difference Between the Conflicting Claim 7 and the instant Claim 1
The conflicting claim 7 differs from the instant claim 1 in that the support used in step (b) of the conflicting claim 7 is not a catalyst precursor as prepared through step (a) to (c) of the instant claim 1.
Shen, et al. CN1768941A(2006)(“Shen-1”)
Shen-1 teaches that silica supported catalyst comprising both copper salt and other metal salt such as Cr, Mo, Ba, Zn, Ce, Ni, V, Pb or Pt is a good catalyst for hydrogenating nitrobenzene to aniline. See Shen-1 at page 14/19, Summary of the invention. As discussed above that Shen-1 teaches working example such as Example 2 for preparation of the catalyst with a catalyst precursor carrier B.
Obviousness of the Claims 1-6 and 16-17
Claims 1, 3 and 5 are obvious because one ordinary skill seeking hydrogenation of nitrobenzene to aniline is motivated to modify the method claimed the conflicting claim 7 through:
(i). preparation of a catalyst precursor by utilizing the catalyst support of the conflicting claim 7 with the method of preparing the carrier B in Shen-1 Example 2, and
(ii). replacing the catalyst support in step (b) with the above prepared catalyst carrier.
in view of the teaching from Shen-1, thus arrive at a process meeting each and every limitation of claims 1,3 and 5. Therefore, claims 1,3 and 5 are obvious.
One ordinary skill has a motivation to do so with a reasonable expectation of success because Shen-1 teaches that silica supported catalyst comprising both copper salt and other metal salt such as Cr, Mo, Ba, Zn, Ce, Ni, V, Pb or Pt is a good catalyst for hydrogenating nitrobenzene to aniline.
Claim 2 is obvious because the conflicting claim 9 further claims:
The process as claimed in claim 7, in which the support in step (b) is impregnated with the ammoniacal copper salt solution obtained in (a) in such a way as not to exceed the maximum absorptivity of the support determined by means of saturation with water.
Claim 4 is obvious because the conflicting claim 6 further claims:
The process as claimed in claim 1, in which the hydrogenation catalyst used comprises a tetraamminecopper carbonate/ammonium carbonate-based impregnated catalyst or a tetraamminecopper carbonate/ammonium acetate-based impregnated catalyst.
Claim 6 is obvious because the conflicting claim 13 further claims:
The process as claimed in claim 1, in which the discrete particles are in the form of cylinders, aggregates of cylinders, or are of a spherical form, where the average diameter in the case of cylinders refers to a cylinder's base and in the case of aggregates of cylinders refers to a theoretical circle's diameter encircling the base of an aggregate of cylinders, where the length of a cylinder is greater than its diameter.
Claim 16-17 are obvious for the same reason as given above for the 103 rejection.
Terminal Disclaimer
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.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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