DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 5-7, and 15-17 are canceled. Claims 1-4, 8-14, and 18-21 are pending in the instant application.
Priority
This application is a U.S. national phase application filed under 35 U.S.C. § 371 of International Application No. PCT/GB2022/051782, filed July 11, 2022, designating the United States, which claims priority from UK Patent Application No.2109994.0, filed July 12, 2021.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 11/16/2023, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election without traverse of Group II (i.e., claims 12-14 and 18) in the reply filed by Applicant’s representative David B. Hoffman on 06/02/2026 is acknowledged.
Status of the Claims
Claims 1-4, 8-11, and 19-21 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) responding to the restriction requirement. Claims 12-14 and 18 are under examination on the merits.
Claim Rejections - 35 USC § 102
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 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 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US2022/250038 (“the `038 publication”) to Fujita et al., originally published in WO2020/256058 on December 24, 2020, and claiming priority from JP2019-114458 filed on June 20, 2019.
Applicant’s claim 12 is drawn to a catalyst comprising palladium on an alumina trilobe support, wherein: the catalyst has a palladium surface area of at least 150 m2/g-Pd as measured by carbon monoxide chemisorption; the palladium is distributed in the support as an eggshell; and the catalyst is free of Group VIB metals.
Applicant’s specification [0012] discloses the Group VIB metals are Cr, Mo, and W. The specification [0008] discloses that the use of palladium citrate as the palladium source during the impregnation step results in eggshell catalysts having a very high metal surface area. To the inventors' best knowledge, the use of palladium citrates as sources of palladium has not been widely explored.
Example 5 of the `038 publication [0074 and 0078] discloses a catalyst material, and a method for preparing the catalyst material thereof. Specifically, 1.8 g of citric acid was added to an aqueous palladium nitrate solution to prepare a palladium citrate solution having the Pd carried amount of 0.2 g. 9.8 g of alumina powder with a specific surface area of 51 m2/g as a carrier was dispersed in the resulting palladium citrate solution, and the mixture was stirred for 30 minutes and then dried by heating for 12 hours at 120° C. The resulting dried powder was heat treated for 1 hour at 500° C to obtain a catalyst material of Example 5 in powder form. Examples 6, and 9-11 of the `038 publication discloses a catalyst material, and a method for preparing the catalyst material thereof based on the similar method of claim 5 using an aqueous palladium nitrate solution by reacting ammonium palladium with citric acid to prepare a palladium citrate solution to obtain the catalyst material thereof, which is free of Group VIB metals. Therefore, the `038 publication discloses a catalyst comprising palladium on an alumina trilobe support; and the catalyst is free of Group VIB metals.
Even though the `038 publication does not disclose the palladium catalyst having a surface area of at least 150 m2/g-Pd as measured by carbon monoxide chemisorption, and the palladium is distributed in the support as an eggshell, the `038 publication [0041] does disclose the palladium catalyst 34 has a somewhat large specific surface area. More importantly, the `038 publication (Examples 5-6, and 9-11) teaches the use of palladium citrate as the palladium source during a very similar impregnation step, while Applicant’s specification [0008] discloses that the use of palladium citrate as the palladium source during the impregnation step results in eggshell catalysts having a very high metal surface area. Therefore, the limitations “catalyst has a palladium surface area of at least 150 m2/g-Pd as measured by carbon monoxide chemisorption; the palladium is distributed in the support as an eggshell” are considered to be inherited properties of the palladium catalyst disclosed by the `038 publication in light of Applicant’s specification.
It has long been recognized that a product is inseparable from its properties. 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255,195 USPQ at 433. Based on the evidence provided hereby, the Office has established that the `038 publication anticipates claims 12-13.
In terms of claim 14, wherein the palladium content is 0.1 to 2 wt% based on the total weight of catalyst, the `038 publication (Example 5) teaches adding 0.2 g of palladium (Mw=106.42) amount of Pd nitrate (Mw=230.43) to 9.8 g of alumina free of Group VIB metals. The weight of Pd-nitrate adjusted to 0.2 g of Pd is 230.43/106.42x0.2 g=0.43 g. Therefore, the palladium content of the Pd-catalyst based on the total weight of catalyst of Example 5 is 0.2/(9.8+0.43)%=1.96 wt%, which reads on the palladium content is 0.1 to 2 wt% based on the total weight of catalyst.
Alternatively, claims 12-14, and 18 are also subject to the following 103(a) rejection:
Claim Rejections - 35 USC § 103(a)
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
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(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 12-14, and 18 are rejected under 35 U.S.C. 103 (a) as unpatentable over the `038 publication.
Example 5 of the `038 publication [0074 and 0078] discloses a catalyst material, and a method for preparing the catalyst material thereof. Specifically, 1.8 g of citric acid was added to an aqueous palladium nitrate solution to prepare a palladium citrate solution having the Pd carried amount of 0.2 g. 9.8 g of alumina powder with a specific surface area of 51 m2/g as a carrier was dispersed in the resulting palladium citrate solution, and the mixture was stirred for 30 minutes and then dried by heating for 12 hours at 120° C. The resulting dried powder was heat treated for 1 hour at 500° C to obtain a catalyst material of Example 5 in powder form. Examples 6, and 9-11 of the `038 publication discloses a catalyst material, and a method for preparing the catalyst material thereof based on the similar method of claim 5 using an aqueous palladium nitrate solution by reacting ammonium palladium with citric acid to prepare a palladium citrate solution to obtain the catalyst material thereof, which is free of Group VIB metals. Therefore, the `038 publication discloses a catalyst comprising palladium on an alumina trilobe support; and the catalyst is free of Group VIB metals.
Even though the `038 publication does not disclose the palladium catalyst having a surface area of at least 150 m2/g-Pd as measured by carbon monoxide chemisorption, and the palladium is distributed in the support as an eggshell, the `038 publication [0041] does disclose the palladium catalyst 34 has a somewhat large specific surface area. More importantly, the `038 publication (Examples 5-6, and 9-11) teaches the use of palladium citrate as the palladium source during a very similar impregnation step, while Applicant’s specification [0008] discloses that the use of palladium citrate as the palladium source during the impregnation step results in eggshell catalysts having a very high metal surface area. Therefore, the limitations “catalyst has a palladium surface area of at least 150 m2/g-Pd as measured by carbon monoxide chemisorption; the palladium is distributed in the support as an eggshell” are considered to be inherited properties of the palladium catalyst disclosed by the `038 publication in light of Applicant’s specification.
It has long been recognized that a product is inseparable from its properties. 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255,195 USPQ at 433. Based on the evidence provided hereby, the Office has established that the `038 publication alternatively would have rendered claims 12-13 obvious.
In terms of claim 14, wherein the palladium content is 0.1 to 2 wt% based on the total weight of catalyst, the `038 publication (Example 5) teaches adding 0.2 g of palladium (Mw=106.42) amount of Pd nitrate (Mw=230.43) to 9.8 g of alumina free of Group VIB metals. The weight of Pd-nitrate adjusted to 0.2 g of Pd is 230.43/106.42x0.2 g=0.43 g. Therefore, the palladium content of the Pd-catalyst based on the total weight of catalyst of Example 5 is 0.2/(9.8+0.43)%=1.96 wt%, which reads on the palladium content is 0.1 to 2 wt% based on the total weight of catalyst.
In terms of claim 18, wherein the catalyst has a palladium surface area of 160 to 220 m2/g-pd as measured by carbon monoxide chemisorption; the catalyst comprises palladium in an amount of 0.5 to 1.5 wt%; the support is an alumina trilobe; and the palladium is distributed in the support in the form of an eggshell, the `038 publication (Example 5) teaches adding 0.2 g of palladium (Mw=106.42) amount of Pd nitrate (Mw=230.43) to 9.8 g of alumina free of Group VIB metals. The weight of Pd-nitrate adjusted to 0.2 g of Pd is 0.43 g. Therefore, the palladium content of the Pd-catalyst based on the total weight of catalyst of Example 5 is 1.96 wt%. The difference of claimed palladium in an amount of 0.5 to 1.5 wt% and in an amount of 1.96 wt% based on the total weight of catalyst is further taught and/or suggested by the same prior art. Specifically, the `038 publication [0043] teaches the carried amount of a catalyst suitable as a catalyst for exhaust gas purification expressed as the ratio of the (carried amount) of the catalyst relative to the total mass of the catalyst material for methane removal may be at least 0.1 mass %, but typically not more than 5 mass %. Therefore, it would have been obvious for one ordinary skilled in the art to optimize the palladium in an amount of 0.5 to 1.5 wt% in light of the disclosure by the `038 publication.
Conclusions
Claims 12-14, and 18 are rejected.
Claims 1-4, 8-11, and 19-21 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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