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
Applicant’s election without traverse of Group I, claims 1 and 3-10 in the reply filed on July 8th, 2026 is acknowledged.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 July 8th, 2026.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Nagai (JP 4172435 B2, 2008) (the machine translation of record is referenced below) .
Regarding claim 1, Nagai teaches a sponge cobalt catalyst composition (Nagai, [0013]-[0031]) comprising:
water (Nagai, [0026], aqueous solution containing molybdic acid and/or molybdate);
an oxoacid (Nagai, [0026], aqueous solution containing molybdic acid and/or molybdate); and
a sponge cobalt catalyst (Nagai, [0015], cobalt is a preferable sponge metal), wherein
the oxoacid comprises Mo (Nagai, [0026], molybdic acid and/or molybdate), and
part or all of the oxoacid is adsorbed to the sponge cobalt catalyst (Nagai, [0025], adsorption of molybdate).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected cobalt as the sponge metal catalyst. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, sponge cobalt was known to be suitable, even preferable, as a sponge metal catalyst (Nagai, [0015]), so it would have been obvious to select.
While Nagai does not teach the recited limitation that “a content of the oxoacid comprising W and adsorbed to the sponge cobalt catalyst is in a range from 5 mg to 1,200 mg, in terms of W, with respect to 1 kg of the sponge cobalt catalyst”, this limitation is only operative when considering the claimed alternative of ‘W’ in the recitation “the oxoacid comprises W or Mo” in the claim. In the alternative where Mo without W meets the claimed alternative of “W or Mo”, as in Nagai, a content of the oxoacid comprising W is not required for Nagai to render the claim obvious.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nagai (JP 4172435 B2, 2008) (see the machine translation of record), as applied to claim 1, and further evidenced by Drake (U.S. Patent No. 4,248,799, 1981).
Regarding claim 10, Nagai renders the sponge cobalt catalyst composition according to claim 1 obvious, as discussed above. While Nagai does not explicitly teach that the sponge cobalt catalyst composition is used in a reaction for hydrogenating nitrile, reciting this use of Nagai’s composition does not differentiate the instant claim from Nagai. See MPEP 2112.I, citing, e.g., Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (stating that “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”). See Also MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). In the instant case, recognizing the latent property of potential to be used in a reaction for hydrogenating nitrile not render nonobvious the known sponge cobalt catalyst composition taught by Nagai, even though Nagai is silent to this particular property.
Moreover, Drake teaches that sponge cobalt impregnated with molybdenum is capable of hydrogenating nitriles (Drake, Col. 4, lines 21-38). A person having ordinary skill in the art would therefore expect Nagai’s composition to also be capable of hydrogenating nitriles. As a claim to a composition lacking a process step, Nagai’s composition need not actually have been used to hydrogenate nitriles to anticipate or render obvious the instant claim.
Allowable Subject Matter
Claims 3-9 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for indicating allowable subject matter: Muthusamy (U.S. 2019/0062243 A1), Nagai (JP 4162435 B2, 2008) (the machine translation of record is referenced below), and Drake (U.S. Patent No. 4,248,799, 1981) are considered to be the closest prior art to the instant claims.
Regarding claim 3 and its dependent claims 4-9, Nagai renders the sponge cobalt catalyst composition according to claim 1 obvious, as discussed above, wherein a content of the oxoacid comprising Mo and adsorbed to the sponge cobalt catalyst is approximately 10,500 mg, in terms of Mo, with respect to 1 kg of the sponge cobalt catalyst (Nagai, [0033], 1.05% molybdenum by weight), which differs from the claimed range of from 5 mg to 1,000 mg. Neither Nagai nor the other cited prior art references teach lowering the Mo content by more than an order of magnitude from Nagai’s 10,500 mg/kg to be within the claimed range of 5 mg to 1,000 mg, so this range renders the claim non-obvious over the cited prior art references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Muthusamy (U.S. 2019/0062243 A1) teaches sponge cobalt as a suitable catalyst on which to adsorb tungsten oxo-acid (Muthusamy, [0021] and [0046-0048]), but the claimed range of adsorbed W relative to sponge cobalt catalyst is neither taught nor suggested. Muthusamy’s sodium metatungstate solution is applied in 0.30% wt concentration at a feed rate of 294 grams per hour to a slurry of catalyst containing 500 mL water (Muthusamy, [0046]-[0048]), whereas the instant Examples use a sodium tungstate solution on the order of hundreds of ppm (instant Specification, [0038]-[0039]), which is much more dilute. It would be reasonable to expect a greater amount of W adsorbed to the catalyst in Muthusamy than is instantly claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
Prosecution Insights