DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicant’s Amendments and Remarks, filed 31 December 2023, in the matter of Application No. 18/575,857. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-12 are pending.
Claims 4-5, 7-9, and 11-12 have been amended.
No claims have been cancelled.
Thus, claims 1-12 represent all claims currently under consideration.
Priority
Acknowledgment is made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copies have been filed in the present application, filed 31 December 2023, and in parent Application No. PCT/JP2022/026507, filed on 1 July 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant claims foreign priority to Application No. JP2022-067955, filed on 15 April 22, and Application No. JP2021-111072, filed on 2 July 2021.
Should Applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Domestic Priority data as claimed by Applicant:
This application is a 371 of PCT/JP2022/026507 (07/01/2022)
Foreign Applications:
JAPAN 2022-067955 (04/15/2022)
JAPAN 2021-111072 (07/02/2021)
Information Disclosure Statement (IDS)
The information disclosure statements submitted on 31 December 2023, 19 January 2024, 8 October 2024, and 11 November 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the Examiner.
Claim Objections
Claim 9 is objected to because of the following informalities:
In lines 8-9, “…using the catalyst for synthesizing liquefied petroleum gas to be reduced.” should read “…using the catalyst for synthesizing liquefied petroleum gas.” to add clarity and avoid redundancy with the reduction treatment step of reducing the catalyst recited in line 3.
Appropriate correction is 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 (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.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN103508828A; published 01-15-2014; IDS of 11-11-2025; English language machine translation; hereinafter “Xu”), in view of Fujimoto et al. (US 2007/0282019 A1; IDS of 10-08-2024; hereinafter “Fujimoto”).
Regarding claim 1 and claims 2-4 and 9 depending from claim 1, Xu teaches a method for preparing ethane and propane from synthetic gas using a multi-functional catalyst (Xu; Title; Abstract; English language machine translation). Propane is known as a major component of liquefied petroleum gas, as described in the instant application (Specification; page 1, paragraph [0002]). Further regarding the claim preamble “…for synthesizing liquefied petroleum gas…”, MPEP 2111.02(II) states that “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”
The multifunctional composite catalyst is a mixture of a CO hydrogenation catalyst as the first component that includes one or more of CuO/ZnO/Al2O3, Cu/ZrO2, ZnO/Cr2O3, Pd/ZnO/Cr2O3, and Pd/CeO2, and one or more metal-modified molecular sieves as the second component that includes one or more of Pd, Pt, Ru, Rh, Cu, Fe, Co, and Mn and the molecular sieve used is SAPO-n type or ZSM-5 type (Xu; claims 1 and 4-5; English language machine translation). ZSM-5 is representative of an MFI-type zeolite, as described in the instant application (Specification; page 33; paragraph [0095]). Xu further teaches that the mass ratio of the first component to the second component is 10:1 to 1:10, preferably 5:1 to 1:5, and more preferably 3:1 to 1:3 (Xu; claim 5; paragraph [0011]; English language machine translation).
The skilled artisan could arrive at a ratio (M1/(M1+M2)) of 0.67 by selecting a 2:1 mass ratio of CuO/ZnO/Al2O3 and Pt/ZSM-5 based on the teachings of Xu, and this ratio resides within the ranges recited in instant claims 1-3. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Example 1 of Xu teaches the preparation of a SAPO-34 or ZSM-5 molecular sieve supporting Pd, and after drying and calcination, the catalyst Cu-ZnO-Al (Cu-Zn-Al) and 0.5% Pd/ZSM-5 were pressed into tablets, crushed into 20-40 mesh, and then mixed into particles in a ratio of Cu-Zn-Al:0.5% Pd/ZSM-5 of 1:1 (Xu; paragraph [0043]; Example 1; English language machine translation). This example corresponds to a ratio (M1/(M1+M2)) of 0.5, in a manner consistent with the ranges recited in instant claims 1-3. See MPEP § 2144.05(I).
The catalyst is placed in a stainless steel reactor bed and reduced at 250 ºC for 5 h in an H2 atmosphere. Then the temperature was raised to 300 ºC, and synthesis gas (H2 + CO + 4% N2) was introduced. Xu teaches that as the temperature increased from 300 ºC to 375 ºC, the overall selectivity of ethane and propane gradually increased (Xu; paragraphs [0044]-[0045]; Example 1; English language machine translation).
Although the teachings of Xu encompass every limitation of instant claims 1-3 and 9, as detailed above, Xu does not explicitly teach a reaction example utilizing a Cu-Zn based catalytic material and an MFI-type zeolite catalytic material supporting Pt, as recited in instant claim 1, or wherein the MFI-type zeolite catalytic material supports only Pt, as recited in instant claim 4. Instead, Example 1 of Xu teaches the use of a Cu-Zn based catalytic material (i.e., Cu-Zn-Al) and an MFI-type zeolite catalytic material supporting Pd (i.e, Pd/ZSM-5) (Xu; paragraph [0043]; Example 1; English language machine translation).
Further regarding claims 1 and 9, Fujimoto teaches a process for producing liquefied petroleum gas, comprising (i) a step of producing methanol wherein crude methanol containing methanol, hydrogen and at least one selected from the group consisting of carbon monoxide and carbon dioxide is produced from a synthesis gas using a methanol synthesis catalyst; and (ii) a step of producing a liquefied petroleum gas wherein a liquefied petroleum gas containing propane or butane as a main component is produced from the crude methanol, which is fed from the step of producing methanol without purification, using a catalyst for producing a liquefied petroleum gas (Fujimoto; Title; Abstract; claim 1; Fig. 1).
The process of Fujimoto comprises a reactor 12 for producing methanol with a methanol synthesis catalyst 12a and a reactor 13 for producing a liquefied petroleum gas with a catalyst 13a producing a liquefied petroleum gas (Fujimoto; paragraph [0036]; FIG. 1). Examples of a methanol synthesis catalyst include any of methanol synthesis catalysts known in the art, including specifically, Cu-Zn-based catalysts such as copper oxide-zinc oxide, copper oxide-zinc oxide-aluminum oxide (alumina) and copper oxide-zinc oxide-chromium oxide (Fujimoto; paragraph [0109]). The process of Fujimoto further comprises an olefin hydrogenation catalyst component in which Pd and/or Pt is supported on ZSM-5 or USY-type zeolite, and Examples 1-2 of Fujimoto teach the use of a Pd-ZSM-5 catalyst (Fujimoto; claim 8; paragraphs [0144], [0209]-[0210], and [0218]; Examples 1-2). The catalysts are treated in a reduction step by hydrogen is employed for activating the Pd and/or Pt before the reaction (Fujimoto; paragraphs [0153]-[0154]). Furthermore, Fujimoto teaches that in the light of catalytic activity, Pd and/or Pt is preferably supported on a ZSM-5 or USY-type zeolite in a highly dispersed manner, and the use of Pd and/or Pt on ZSM-5 or USY-type zeolite results in higher catalytic activity and a higher yield of propane and butane can be achieved (Fujimoto; paragraphs [0155]-[0156]).
Thus process of Fujimoto is analogous to that of Xu, who teaches that the Cu-Zn-Al catalysts are methanol synthesis that perform CO hydrogenation, and these catalysts can be mixed with one or more metal-modified molecular sieves (i.e., Pd and/or Pt on ZSM-5) for the one-step synthesis of ethane and propane form syngas (Xu; paragraphs [0029] and [0039]; claims 1 and 4-5; English language machine translation). Therefore, the skilled artisan would reasonably predict that the catalysts of Xu could be used for the production of liquefied petroleum gas, as taught by Fujimoto and detailed above.
The prior art as taught by Xu and Fujimoto reside in the closely overlapping technical field of catalytic materials for synthesizing liquefied petroleum gas with catalysts comprising Cu-Zn-based catalytic material and an MFI-type zeolite catalytic material supporting Pt. Thus, the cited prior art is from the same field of endeavor as the claimed invention and is therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would be sufficiently motivated to substitute the Pd metal of the Pd/ZSM-5 catalyst of Xu with Pt to arrive at a Pt/ZSM-5 with a reasonable expectation of success, because Xu teaches Pt on ZSM-5 as an alternative catalyst type for the claimed process (Xu; claim 5; English language machine translation), and Fujimoto teaches that both Pd and/or Pt on ZSM-5 results in higher catalytic activity for the production of liquefied petroleum gas (Fujimoto; paragraphs [0155]-[0156]). Such an endeavor would result in the simple substitution of one known element for another to obtain predictable results, as described in MPEP § 2143(I)(B).
Therefore, it would have been prima facie obvious before the effective filing date of the claimed invention to have modified the catalyst of Xu based on the teachings of Xu and Fujimoto to substitute the Pd metal with Pt on the ZSM-5 support to arrive at the invention of claims 1-4 and 9. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, an alternative catalytic metal known in the art to possess high catalytic activity for the production of liquefied petroleum gas, as described above.
Regarding claim 5 depending from claim 1 and claims 6-7 depending from claim 1, Xu teaches that the ZSM-5 type molecular sieve can include one or more metals such as Pd and Pt (Xu; claim 5, English language machine translation). In addition, Fujimoto teaches an olefin hydrogenation catalyst component in which Pd and/or Pt is supported on ZSM-5 (Fujimoto; claim 8).
Further regarding claim 6-7, Xu teaches that when the metal is one or more of Pd, Pt, Ru, or Rh, its proportion in the modified molecular sieve is 0.01-5 wt% (Xu; claim 5; paragraph [0016]; English language machine translation). Thus, when considering Xu in view of Fujimoto, the skilled artisan could arrive at the claimed Pd/Pt mass ratios with a reasonable expectation of success through means of routine optimization that is non-inventive in nature because the cited prior art teaches that Pd/Pt metal combinations are possible within the instantly claimed ranges. MPEP § 2144.05(II) states that “[W]here 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.”
Regarding claim 8 depending from claim 1, Example 1 of Xu teaches that the catalyst Cu-Zn-Al and Pd/ZSM-5 were pressed into tablets, crushed in 20-40 mesh, and then mixed into particles (Xu; paragraph [0043]; Example 1; English language machine translation). When considering Xu in view of Fujimoto, the skilled artisan would arrive at a composition comprising a mixed granulated powder or molded body of Cu-Zn-based catalytic material and the MFI-type zeolite catalytic material (i.e., Pt/ZSM-5). This embodiment corresponds to Example 1 of the present application, wherein Cu-Zn-based catalytic material and the MFI-type zeolite catalytic material are pellitized and crushed into particles, and then combined as a mixture prior to use for the production of liquefied petroleum gas (Specification; paragraphs [0094]-[0096]; Example 1).
Alternatively, Fujimoto teaches that the catalysts are used in separate reactors (Fujimoto; paragraph [0036]; FIG. 1), and thus exist independently from each other. Fujimoto further teaches that the olefin-hydrogenation catalyst component supported on zeolite may be used, if necessary, after pulverization or molding (Fujimoto; paragraph [0162]). Therefore, as with claim 1, it would have been prima facie obvious to arrive at the invention of claim 8 based on the teachings of Xu in view of Fujimoto.
Regarding claims 10-12 depending from claim 9, Xu teaches a volume hourly space velocity of 500-5000 h-1, a reaction temperature of 260-450 ºC, and a reaction pressure of 1.0-5.0 MPa (Xu; claim 2; English language machine translation). The skilled artisan would recognize that the volume hourly space velocity corresponds to a gas hourly space velocity (GHSV), in a manner consistent with instant claim 10, because the process of Xu involves volumes of reactants in the gas phase. Furthermore, Fujimoto teaches a space velocity (a feed rate of a starting gas in normal state per 1 kg of a catalyst) is preferably 100 to 50000 L/kg·h, more preferably 500 L/kg·h or higher and 30000 L/kg·h or lower; a reaction temperature that is preferably 150 to 400 °C, more preferably 200 °C or higher and 350 °C or lower; and a reaction pressure that is preferably 1 to 30 MPa, more preferably 2 MPa or higher and 8 MPa or lower (Fujimoto; paragraphs [0138]-[0140]). Thus, the reaction space velocities, temperatures, and pressures of Xu and Fujimoto reside within or overlap with the recited ranges of instant claims 10-12. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed catalyst and method. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
Double Patenting Rejections
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-15 of copending Application No. 18/576,089.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claim 1 of copending Application No. 18/576,089 teaches a catalyst for synthesizing liquefied petroleum gas, the catalyst comprising: a Cu-Zn-based catalytic material; and an MFI-type zeolite catalytic material supporting Pt, wherein a ratio of the molar number of SiO2 to the molar number of A12O3 contained in the MFI-type zeolite catalytic material (molar number of SiO2/ molar number of A12O3) is 20 or more and 60 or less. In addition, claim 5 of copending Application No. 18/576,089 teaches wherein the ratio (M1/(Ml+M2)) of the mass (Ml) of the Cu-Zn-based catalytic material to the total mass of the mass (Ml) of the Cu-Zn-based catalytic material and the mass (M2) of the MFI-type zeolite catalytic material is 0.30 or more and 0.95 or less.
Thus, claims 1 and 5 of copending Application No. 18/576,089 teach every limitation of instant claim 1.
Regarding instant claims 2-3, claims 6-7 of copending Application No. 18/576,089 teach every limitation of the instant claims.
Regarding instant claims 4-7, claims 2-4 and 8 of copending Application No. 18/576,089 teach every limitation of the instant claims.
Regarding instant claims 8-9 and 12, claims 11-12 and 15 of copending Application No. 18/576,089 teach every limitation of the instant claims.
Regarding instant claim 10, claim 13 of copending Application No. 18/576,089 teaches wherein a gas hourly space velocity (GHSV) for supplying the carbon monoxide and the hydrogen is 500/h or more and 20000/h or less in the supply step. This range overlaps significantly with the range recited in instant claim 10. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding instant claim 11, claim 14 of copending Application No. 18/576,089 teaches wherein the carbon monoxide and the hydrogen are reacted at a temperature of 260°C or more and 330°C or less in the synthesis step. This range overlaps significantly with the range recited in instant claim 11. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 5-9 of copending Application No. 18/555,332.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claim 1 of copending Application No. 18/555,332 teaches a catalyst for liquefied petroleum gas synthesis, comprising a Cu-Zn based catalytic material and an MFI type zeolite catalytic material supporting Pt, the Cu-Zn based catalytic material containing copper oxide, zinc oxide, aluminium oxide, and zirconium oxide, a mass (M(ZrO2)) of zirconium oxide in the Cu-Zn based catalytic material being more than 0 mass% and 6.5 mass% or less based on a mass (M1) of the Cu-Zn based catalytic material, and the MFI type zeolite catalytic material containing more than 0 mass% and less than 4.5 mass% of P. In addition, claim 3 of copending Application No. 18/555,332 teaches wherein a ratio (M1/(M1+M2)) of the mass (M1) of the Cu-Zn based catalytic material to a total mass (M1+M2) of the mass (M1) of the Cu-Zn based catalytic material and the mass (M2) of the MFI type zeolite catalytic material is 0.30 or higher and 0.95 or lower.
Thus, claims 1 and 3 of copending Application No. 18/555,332 teach every limitation of instant claim 1.
Regarding instant claims 2-3, the range recited in claim 3 of copending Application No. 18/555,332 overlaps with the instantly claimed ranges. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding instant claims 8-9 and 12, claims 5-6 and 9 of copending Application No. 18/555,332 teach every limitation of the instant claims.
Regarding instant claim 10, claim 7 of copending Application No. 18/555,332 teaches wherein a gas hourly space velocity (GHSV) for supplying the carbon monoxide and the hydrogen is 500/h or more and 20000/h or less in the supply step. This range overlaps significantly with the range recited in instant claim 10. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding instant claim 11, claim 8 of copending Application No. 18/555,332 teaches wherein the carbon monoxide and the hydrogen are reacted at a temperature of 260°C or higher and 330°C or lower in the synthesis step. This range overlaps significantly with the range recited in instant claim 11. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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