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 the Application
Claims 1, 3-15 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1 and 3-6, directed to a hydrogenation catalyst, and the species:
PNG
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640
1457
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Greyscale
in the reply filed on 06/29/2026 is acknowledged. The election was made with traverse.
The traversal is on the ground(s) that the amended claims include limitation of claim 2 d the catalyst is a low cost with high activity and selectivity and not obvious over the cited prior art. This is not found persuasive, please see the rejection as set forth below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Please note that after a final requirement for restriction, the Applicants, in addition to making any response due on the remainder of the action, may petition the Commissioner to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested. (See § 1.181.).
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1 and 3-6 are under current examination.
Claim Objections
Claim 3 is objected because the claim recites “wherein, in a case where the polymerized ionic liquid----precursor”, which reflects “polymerized ionic liquid----precursor” as an option. However, claim 1 already has a limitation “of the polymerized ionic liquid----precursor”, and is not an option. Applicant is suggested to delete “wherein, in a case where the polymerized ionic liquid----precursor”.
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.
Claims 4-6 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 4-6 are indefinite as these claims recites broader and narrower limitations within the same claim. For instance, claim 4, recites “calcination is ---air or an inert gas, optionally nitrogen”; Claim 5, “polymerized ionic liquid----optionally, the polymerized---any one of compounds; Claim 6, “mass percentage of 0.01-40% in the catalyst, optionally 0.01-8%; optionally metal ruthenium---0.01-8%”. Thus, making scope of these claims unclear.
Appropriate correction required.
Claim Rejections - 35 USC § 103
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 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.
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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 3-6 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Nanfeng (CN111151284; published 05/2020; Machine English translation is used for this rejection).
Determining the scope and contents of the prior art
Nanfeng teaches a hydrogenation catalyst with high activity and selectivity comprising a nitrogen-doped carbon (CN carbon nitride) and an active bimetal component G-M of amount, such as 0.85%, wherein G is selected from a group consisting of Pt, Pd, Rh and Ru and M is selected from a group consisting of Fe, Co, Ni, Sn and Mo and prepared by calcining nitrogen compound selected from urea, melamine or dicyandiamide at temperature such as 650C, 400C, 700C for time such as 2h, 3h, 5h (entire article).
Although the instant claims have a product-by-process limitation “nitrogen-doped carbon is prepared by using a polymerized ionic liquid as a precursor”, the case law has established that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, “because validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009).
Ascertaining the differences between the prior art and the claims at issue
Nanfeng teaches a hydrogenation catalyst with high activity and selectivity comprising a nitrogen-doped carbon (CN carbon nitride) and an active bimetal component G-M of amount, such as 0.85%, wherein G is selected from a group consisting of Pt, Pd, Rh and Ru and M is selected from a group consisting of Fe, Co, Ni, Sn and Mo and prepared by calcining nitrogen compound selected from urea, melamine or dicyandiamide at temperature such as 650C, 400C, 700C for time such as 2h, 3h, 5h, but fails to teach example of the catalyst where G=Ru and M is Fe.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference- Nanfeng teaches a hydrogenation catalyst with high activity and selectivity comprising a nitrogen-doped carbon (CN carbon nitride) and an active bimetal component G-M of amount, such as 0.85%, wherein G is selected from a group consisting of Pt, Pd, Rh and Ru and M is selected from a group consisting of Fe, Co, Ni, Sn and Mo. Thus, based on the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that Ru may be selected from small group of G- Pt, Pd, Rh and Ru and combined with Fe, Co and Ni again selected from a small group of M- Fe, Co, Ni, Sn and Mo to arrive at a selective and highly active catalyst of the instant claims.
Further, genus of G and M taught by the cited prior art is so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because "one skilled in [the] art would... envisage each member" of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original). More specifically, the court in Petering stated:
A simple calculation will show that, excluding isomerism within certain of the R groups, the limited class we find in Karrer contains only 20 compounds. However, we wish to point out that it is not the mere number of compounds in this limited class which is significant here but, rather, the total circumstances involved, including such factors as the limited number of variations for R, only two alternatives for Y and Z, no alternatives for the other ring positions, and a large unchanging parent structural nucleus. With these circumstances in mind, it is our opinion that Karrer has described to those with ordinary skill in this art each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ catalyst.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Nanfeng teaches a hydrogenation catalyst with high activity and selectivity comprising a nitrogen-doped carbon (CN carbon nitride) and an active bimetal component G-M of amount, such as 0.85%, wherein G is selected from a group consisting of Pt, Pd, Rh and Ru and M is selected from a group consisting of Fe, Co, Ni, Sn and Mo and prepared by calcining nitrogen compound selected from urea, melamine or dicyandiamide at temperature such as 650C, 400C, 700C for time such as 2h, 3h, 5h.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that Ru-Fe combination may be used as active component and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed catalyst with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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