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 .
Election/Restrictions
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/22/26.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 and Claims 10 and 17 of U.S. Patent No.: 6544439. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 4 of ‘439 disclose nickel in the composition and Claim 4 describes the structure has a hydroxyapatite structure.
Similarly, Claims 10 and 17 of ‘439 describe inclusion of nickel and the rest of the composition has a hydroxyapatite structure, as described by Claim 17.
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.
Claim(s) 1, 2, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Belliere-Baca (US Pub.: 2014/0364351), BB.
BB describes a hydroxyapatite with the formula: Ca3(PO4)2 (see para. 29). The catalyst may be doped with a metal (para. 35, 37). As to the intended use feature that describes that this composition is a catalyst used for isobutanol and propanol synthesis, although BB does not specifically state that this catalyst is used for these purposes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition can be used the same way.
As to Claim 2, BB describes the formula: Ca3(PO4)2 (see para. 29), which includes Ca3(PO4). This meets the feature that the hydroxyapatite “comprises one or more of . . CaxPOy. .. wherein x is in a range of 1.5 to 3 and y is in a range of 4 to 5.5.
Claim(s) 1, 3, 4, 5, 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calvarese (WO 2011/031928).
Calvarese describes a catalyst that is a hydroxyapatite with the formula:
(MaM’bMc””Md”””)3(PO4)2 (OH), where M is Mg, M’ is Ca, M”” is Sr and M”” is Ba (page 11). The variables w, x and y can be any number between 0-1 (page11). In a few examples, the formula for the compound can be Sr2.7Ca0.3PO4 (page 52, para. 1). Another compound that can be derived from this includes Sr8Ba2(PO4) (example 17). In this case, Sr can be considered the metal-doped and the Ba2(PO4) meets the formula of Claims 2, 3 and 4.
As to Claim 5, Calvarese explains that this catalyst can be modified with a metal, such as Fe, Ni, Cu, Ru, Rh, Pd (page 6, lines 17-22).
As to Claims 7 and 8, Calvarese teaches that the metal added to the hdryoxyapatite can include: Na, Li, K, Rb and Cs (page 6, lines 17-22).
Claim(s) 6, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calvarese as applied to claim 1 or 5 or 7 above, and further in view of Tsuchida (WO 2006/059729).
The references do not disclose the amount of metal present in the composition.
Tsuchida describes a catalyst used for producing 1-butanol (abstract). The catalyst can include a hydroxyapatite that is promoted with a metal, such as Ni, Zn, Cu, Pd or Pt (para. 17). These metals can change the solid acid basicity that are desirable (para. 17). The metals can be added in an amount of 0.05 to 70 mol % (para. 17). As to their weight %, the ranges overlap. For example, using 0.5 mol% of Nickel would amount to about 29 mass% of nickel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a promoter metal in an amount of 0.05 to 70 mol%, as taught by Tsuchida for use with the process of Calvarese because Tsuchida teaches that these metals can change the solid acid basicity of the catalyst, which are desirable.
As to Claim 10, Tsuchida teaches that the hydroxyapatite can include tricalcium phosphate (see abstract in WO original), which can include Ca3(PO4) (abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 August 20, 2026
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