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 Claims
Claims 1, 3-5, and 7-20 are pending. This is the first Office Action on the merits.
Claim Objections
Claim 19 is objected to because of the following informalities
Claim 19 depends upon claim 2, which has been canceled. Applicant is suggested to amend claim 19 to be dependent of claim 1 instead.
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.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 is indefinite for reciting “a ratio of the amount of water vapor in the feed mixture to an amount of the at least one reactant compound in the feed mixture is at least 0.23” because it is unclear whether the ratio is based on mole or weight. For the purpose of examination, the ratio is interpreted to be based on moles (see Spec., pg. 15, Table 1).
Regarding claims 11, 12, and 14, the phrase "in particular " renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of examination, the limitations following “in particular” are not given patentable weight.
Claim 13 is also rejected by virtue of its dependency upon claim 12.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5, 7, and 15-19 are rejected under 35 U.S.C. 1023, as being anticipated by Zellhuber et al. (CA 3100928, an English equivalent of WO 2019243480 A1 cited in IDS dated 09/07/2023),
Regarding claims 1 and 15, Zellhuber discloses a method for oxidative dehydrogenation and a system configured to operate said method, the method comprising:
forming a feed mixture containing ethane and oxygen (pg. 23, lines 6-25);
distributing the feed mixture to parallel reaction tubes of one or more shell-and-tube reactors (pg. 23, lines 6-25); and
subjecting the feed mixture to an oxidative catalytic reaction in the reaction tubes, wherein ethane is used as reactant compound and the oxidative catalytic process is carried out as oxidative dehydrogenation of the ethane (pg. 23, lines 6-25).
Zellhuber suggests adding steam, as a diluent, and oxygen to the reactor (pg. 17, lines 4-10; pg. 23, lines 1-4; pg. 24, lines 11-13).
Zellhuber further teaches that the reaction is carried out over a catalyst arranged in a plurality of reaction zones, the catalyst containing molybdenum, vanadium, and niobium, for example, MoVTeNbO (i.e., mixed metal oxide) (pg. 18, lines 1-6; pg. 23, lines 6-19). Zellhuber discloses that a reaction zone arranged closer to the reactor outlet is formed with a higher catalyst loading and/or catalyst activity per space unit than preceding reaction zones (pg. 23, lines 19-24).
With respect to the limitation that oxygen is added “in the form of a fluid containing at least 95% by volume of oxygen,” Zellhuber suggests that “pure” oxygen (100 vol% O2) can be used as the oxygen feedstock (pg. 2, line 35-pg. 3, line 2; pg. 17, lines 27-29).
With respect to the limitation that a steam content of the feed mixture is “5 to 95% by volume,” Zellhuber provides examples utilizing feed mixtures containing steam contents of 14.8 mole%, 15.8 mole%, and 14.9 mole% (pg. 27, lines 11-16). Since the feed mixtures are in gas phase (pg. 23, lines 10-13), the steam contents in the examples correspond to 14.8 vol%, 15.8 vol%, and 14.9 vol%. Therefore, the steam contents disclosed by Zellhuber, which fall within the range of 5-95 vol% of claim 1, are considered to anticipate the claimed range.
Regarding claim 3, Zellhuber provides examples utilizing feed mixtures containing steam contents of 14.8 mole%, 15.8 mole%, and 14.9 mole% (pg. 27, lines 11-16). Since the feed mixtures are in gas phase (pg. 23, lines 10-13), the steam contents in the examples correspond to 14.8 vol%, 15.8 vol%, and 14.9 vol%. Therefore, the steam contents disclosed by Zellhuber, which fall within the range of 10-50 vol% of claim 3, are considered to anticipate the claimed range.
Regarding claim 4, Zellhuber provides examples utilizing feed mixtures having oxygen/ethane ratios of 0.35, 0.31, and 0.33 (pg. 27, lines 5-9). The oxygen/ethane ratios disclosed by Zellhuber, which fall within the range of “at least 0.20 and up to 1.0”, are considered to anticipate the claimed range.
Regarding claim 5, Zellhuber provides examples utilizing feed mixtures each having a water/ethane ratio of 0.26 (pg. 27, lines 5-9). The water/ethane ratio disclosed by Zellhuber, which falls within the range of “at least 0.23,” is considered to anticipate the claimed range.
Regarding claim 7, Zellhuber discloses that the reaction conditions include a temperature between 240 and 500°C and a total pressure at a reactor inlet between 1 and 10 bar (abs) (pg. 19, 24-30).
Regarding claims 16 and 17, Zellhuber teaches using a MoVTeNbO catalyst (pg. 18, lines 1-6), which contains tellurium.
Regarding claims 18 and 19, Zellhuber provides examples utilizing feed mixtures containing steam contents of 14.8 mole%, 15.8 mole%, and 14.9 mole% (pg. 27, lines 11-16). Since the feed mixtures are in gas phase (pg. 23, lines 10-13), the steam contents in the examples correspond to 14.8 vol%, 15.8 vol%, and 14.9 vol%. Therefore, the steam contents disclosed by Zellhuber, which fall within the ranges of 14-35 vol% (claim 18) and 10-50 vol% (claim 19), are considered to anticipate the claimed ranges.
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 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zellhuber et al. (CA 3100928, an English equivalent of WO 2019243480 A1 cited in IDS dated 09/07/2023), as applied to claim 1, and further in view of Grune et al. (2017/0233313 A1).
Regarding claim 8, Zellhuber teaches the method of claim 1, as discussed above.
Zellhuber does not explicitly teach that the reaction tubes are cooled using one or more cooling medium flowing around the reaction tubes.
However, Grune, directed to an oxidative dehydrogenation process, teaches that it is generally known in the art that the reaction temperature in oxidative dehydrogenation taking place in tubular reactors, e.g., in a shell-and-tube reactor, is controlled by a heat exchange (cooling) medium present around the reaction tubes ([0089]-[0091]).
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to cool the reaction tubes of Zellhuber by using one or more cooling medium flowing around the reaction tubes, because this involves application of a well-known cooling technique used for a particular reactor type to yield predictable results.
Regarding claim 9, Grune discloses that it is generally known to use a heat exchange medium to cool reaction tubes ([0089]), and the reference is interpreted to suggest that the same cooling medium can be used to cool all sections of the reaction tubes in different of the same flow direction.
Regarding claim 10, Zellhuber does not explicitly teach that a maximum temperature difference of 60 K is maintained between one or more temperature hotspots of the reaction zones and a coolant temperature.
However, Grune, directed to an oxidative dehydrogenation process, teaches that it is generally known in the art that the reaction temperature in oxidative dehydrogenation taking place in tubular reactors, e.g., in a shell-and-tube reactor, is controlled by a heat exchange (cooling) medium present around the reaction tubes ([0089]-[0091]).
Furthermore, Zellhuber teaches that the method is carried out in such a way that a predetermined maximum reaction temperature is not exceeded in at least 30%, 60%, 80%, 90%, 95%, or 99% of each of the reaction zones (pg. 11, lines 13-18). Zellhuber is interpreted to suggest that the method is conducted so that undesirable hotspots are minimized.
Therefore, before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to cool the reaction tubes of Zellhuber by using one or more cooling medium and optimize the reaction conditions such that a temperature difference between one or more temperature hotspots of the reaction tubes and a cooling medium temperature is maintained to be ≤60 K, because this involves application of a well-known cooling technique used for a particular reactor type to yield predictable results and one would have been motivated to operate the process while minimizing hotspots. Where 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. MPEP 2144.05 II.
Claims 11-14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Zellhuber et al. (CA 3100928, an English equivalent of WO 2019243480 A1 cited in IDS dated 09/07/2023).
Regarding claims 11 and 12, these claims are directed to product-by-process limitations. 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. MPEP 2113. It is noted that Zellhuber teaches using a MoVTeNbO catalyst (pg. 18, lines 1-6), which is the same catalyst as the one claimed (see “one or more catalysts containing the metals molybdenum, vanadium, and niobium which is or are at least partially made from the oxides”).
Regarding claim 13, Zellhuber does not explicitly teach that the catalyst is formed into a particulate shape by compression. However, it is well within the ordinary skills of an artisan to form a catalyst into a desirable shape, e.g., pellet, as evidenced by Grune ([0055]).
Regarding claim 14, Zellhuber discloses that the catalyst comprises an inert material, wherein catalytic zones are provided in which the catalyst is diluted in different amounts with the inert material (pg. 9, lines 18-23). Although Zellhuber does not explicitly teach that inert materials include inactive metal oxide, one of ordinary skill in the art would readily understand that metal oxide materials, such as quartz, could be used as inert material in catalytic processes.
Regarding claim 20, Zellhuber discloses that the reaction conditions include a temperature between 240 and 500°C and a total pressure at a reactor inlet between 1 and 10 bar (abs) (pg. 19, 24-30). The claimed ranges of “between 300 and 400°C” and “2 to 6 bar (abs.)” fall within the temperature and total pressure ranges taught by Zellhuber and, therefore, are considered prima facie obvious. 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.
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 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/549,583 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the reference claims are directed to a process for the oxidative dehydrogenation of ethane in a shell-and-tube reactor using a catalyst comprising Mo, V, and Nb, wherein catalysts are provided in the reaction zones with different catalyst activity. Specifically, the reference claims may use catalysts of the same type with differing light-off temperatures (different activities) in first and second tube sections of the reaction tubes. Additionally, while the reference claims do not claim the claimed steam content, it would have been optimized without undue experimentation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sanfiz et al. (“Preparation of Phase-Pure M1 MoVTeNb Oxide Catalysts by Hydrothermal Synthesis—Influence of Reaction Parameters on Structure and Morphology.” Top Catal (2008) 50:19–32) teach a method of preparing MoVTeNb Oxide Catalysts by crystallization under hydrothermal conditions in an autoclave using metal oxides and oxo ligands, e.g., oxalate, under conditions including a temperature of 373-448 K and a pressure of 4-9 bars (pg. 20-21).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON Y CHONG whose telephone number is (571)431-0694. The examiner can normally be reached Monday-Friday 9:00am-5:30pm.
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/JASON Y CHONG/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772