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 .
DETAILED ACTION
Claims 1-10 and 12-21 of W. Leitner et al., US 18/576,226 (Jul. 1, 2022) are pending and under examination on the merits. Claims 2, 6, 10, 20 and 21 are rejected. Claims 1, 3-5, 7-9, 12-19 are in condition for allowance.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed to establish a clear record of what applicant intends to claim. See, MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01.
Interpretation of the Claim 1 and Claim 10 Catalyst Functional Language
Claims 1 and 10 recite nearly identical language for the claimed catalyst combination, where the slight differences in wording between these claims is indicated below by italic text. That being said, the main issue is that the functionally recited bolded text is not interpreted as claim limitation(s). MPEP § 2111.04(I).
Claims 1 and 10 . . .
(i) a Fischer-Tropsch catalyst as a first catalyst, which converts syngas to a hydrocarbon mixture comprising C2+ olefins and which is essentially inactive for a water-gas-shift reaction, wherein
the Fischer-Tropsch catalyst is a supported metal catalyst comprising a metal selected from Co, Ru or a combination thereof supported on a porous carrier selected from oxide carriers selected from Al2O3, SiO2, TiO2, or any combination thereof, carbide or oxy-carbide materials selected from SiC, SiOxCy, with x being in the range of 0<x<2 and y in the range of 0<y<1, pure carbon or any combination thereof; and
(ii) a hydroformylation catalyst as a second catalyst, which is stable and active for a reductive hydroformylation of olefins and which is highly selective for the production of terminal alcohols,
wherein the hydroformylation catalyst comprises
(i) a metal selected from cobalt, ruthenium, rhodium, iridium, or any combination thereof and
(ii) at least one organic ligand selected from oxygen-containing ligands, phosphorus-containing ligands, nitrogen-containing ligands, arsenic-containing ligands and combinations thereof and which binds to the metal to form a coordination complex in a molar ratio ligand/metal of 1: 1 to 5: 1;
in a ratio between the Fischer-Tropsch catalyst and the hydroformylation catalyst, expressed as a molar ratio of total metal in the Fischer-Tropsch catalyst and total metal in the hydroformylation catalyst in the range of 30:1 - 1:4 . . .
Under a plain meaning reading, the bolded text (which is functional language) is not interpreted as a claim limitation because it does affect the claim structure. MPEP § 2111.04(I). Rather, the respective catalyst component (either Fischer-Tropsch or hydroformylation) is clearly structurally defined after the cited non-limiting bolded text. The bolded text is merely superfluous language indicating how the respective catalyst component (as clearly structurally defined later in the claim) functions. See, MPEP § 2111.04(1) (citing Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), where the court noted that a whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited). As such, there are no apparent § 112(b) or § 112(a) issues respecting the bolded text.
This interpretation is consistent with the specification. For example, see the specification at page 3, lines 6-21 with respect to the claim recitation of “which is essentially inactive for a water-gas-shift reaction”. In another example, with respect to the phrase “which is highly selective for the production of terminal alcohols”, see specification at page 13, lines 9-14.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). A claim is indefinite when it contains words or phrases whose meaning is unclear. MPEP § 2173.05(e) (citing In re Packard, 751 F.3d 1307, 1314, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014)).
Claim 2 – Unclear Functional Recitations
Claim 2 is rejected pursuant to 35 U.S.C. 112(b), as indefinite because the functional results are manipulatable under the general conditions of claim 2 and it cannot be unambiguously determined whether a particular Fischer-Tropsch catalyst falls within the scope of claim 2. MPEP § 2173.05(g).
Claim 2 recites the following functional results are required by the Fischer-Tropsch catalyst component:
2. Process for converting a syngas feed stream into C3+ alcohols according to claim 1,
wherein the Fischer-Tropsch catalyst has an activity for the Fischer-Tropsch synthesis expressed as a metal mass-specific rate of CO conversion, being equal to or higher than 5 mmolCO gmetaI-1 h-1,
wherein the Fischer-Tropsch catalyst delivers a selectivity to CO2 equal to or lower than 5% on a carbon basis, and
a molar abundance of alpha-olefin hydrocarbons in the hydrocarbon products with hydrocarbon chain lengths in the range of C3-C10 which is equal to or greater than 30% on a carbon basis,
when a syngas feed with a H2/CO molar ratio of 2.0 is contacted with the Fischer-Tropsch catalyst at a reaction temperature equal to or lower than 483 K, and a reaction pressure equal to or greater than 15 bar and
a CO conversion achieved in the reactor is greater than 15%.
A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. MPEP § 2173.05(g). The use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. MPEP § 2173.05(g).
Each of the claim 2 functional results are clearly dependent upon the reaction temperature and pressure (i.e., concentration of reactant CO/H2) as well as reaction time. However, claim 2 permits wide temperature and pressure ranges and no reaction time is specified. The reaction time will clearly affect the CO conversion achieved. For example, a reaction performed at 15 bar and room temperature will give different values of 5 mmolCO gmetaI-1 h-1, molar abundance of alpha-olefin, selectivity to CO2, and CO conversion than a reaction performed at higher pressures and temperatures within the claim 2 permitted ranges.
Equally significant is that claim 2 does not specify the hydroformylation catalyst. Clearly each of the claim 2 functional results are dependent upon the identity of the hydroformylation catalyst that is used in combination with the Fischer-Tropsch catalyst as required by base claim 1. This is evidenced by the specification working examples, where different selectivity and time yields are achieved with the same Fisher-Tropsch catalyst but different with hydroformylation catalyst (i.e., the organic ligand varies). See, specification at page 31, Table 1.
In summary, the same Fischer-Tropsch catalyst may fall within the scope of claim 2 under one set of temperature/pressure/time conditions and hydroformylation catalyst but not under another. As, such infringement of claim 2 cannot be unambiguously determined and is indefinite.
Unclear Antecedent Basis – Claim 10
Claims 10, 20 and 21 are rejected under 35 U.S.C. 112(b) as being indefinite because antecedent bases for the bolded term “metal” is not clear. Claim 10 recites the following language respecting calculation of the molar ratio of metals in the respective catalyst component:
Claim 10 . . . in a ratio between the Fischer-Tropsch catalyst and the hydroformylation catalyst, expressed as a molar ratio of metal in the Fischer-Tropsch catalyst and metal in the hydroformylation catalyst in the range of 30:1 - 1:4.
However, claim 10 permits more than one metal to be present either of the Fischer-Tropsch catalyst or the hydroformylation catalyst. As such, where multiple metals are present in ether respective catalyst component, it is not clear which metal is considered in the above claim 10 “molar ration of metal” calculation. For example, claim 10 recites that the Fischer-Tropsch catalyst may comprise not only a mixture of Co and Ru but also, aluminum and/or titanium.
Claim 10 . . . wherein the Fischer-Tropsch catalyst is a supported metal catalyst comprising a metal selected from Co, Ru or a combination thereof supported on a porous carrier selected from oxide carriers selected from Al2O3, SiO2, TiO2, or any combination thereof carbide or oxy-carbide materials selected from SiC, SiOxCy, with x being in the range of 0<x<2 and y in the range of 0<y<1, pure carbon or any combination thereof. . .
It is not clear which or if all of these metals is taken into account in the above claim 10 ratio calculation.
As discussed in the MPEP a lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. MPEP § 2173.05(e). Similarly, if two different levers are recited earlier in the claim, the recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. MPEP § 2173.05(e). A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. MPEP § 2173.05(e).
The same issue is present in dependent claims 20 and 21.
Note due to the claim 1 recitation of “total metal”, this issue is not present in claim 1 and its dependents.
Unclear Antecedent Basis – Claims 2, 20 and 21
Claims 2, 20, and 21 are rejected under the same rationale as claim 10. Claims 2, 20, and 21 recite as follows:
2 . . . wherein the Fischer-Tropsch catalyst has an activity for the Fischer-Tropsch synthesis expressed as a metal mass-specific rate of CO conversion, being equal to or higher than 5 mmolCO gmetaI-1 h-1 . . .
20. Catalyst combination according to claim 10, wherein the molar ratio of metal in the Fischer-Tropsch catalyst and metal in the hydroformylation is in a range of 10:1-1:2.
21. Catalyst combination according to claim 20, wherein the molar ratio of metal in the Fischer-Tropsch catalyst and metal in the hydroformylation is in a range of 4: 1-1:1.
As discussed above for claim 10, it is not clear which or if all of catalyst metals of claims 2, 20, and 21 are considered in the above calculations.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
§ 112(d) Rejection of Claim 6
Claim 6 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. See MPEP § 608.01(n)(III).
Claim 6 recites:
6. (Currently Amended) Process for converting a syngas feed stream into C3+ alcohols according to claim 1, wherein a hydroformylation catalyst is used as a second catalyst.
However, claim 1 already recites that a hydroformylation catalysts is present as a second catalyst.
Claim 1 . . . (ii) a hydroformylation catalyst as a second catalyst, which is stable and active for a reductive hydroformylation of olefins and which is highly selective for the production of terminal alcohols, wherein the hydroformylation catalyst comprises
(i) a metal selected from cobalt, ruthenium, rhodium, iridium, or any combination thereof and
(ii) at least one organic ligand from oxygen-containing ligands, phosphorus-containing ligands, nitrogen-containing ligands, arsenic-containing ligands and combinations thereof and which binds to the metal to form a coordination complex in a molar ratio ligand/metal of 1: 1 to 5: 1;
The specification provides no guidance as to what the claim 6 phrase “used as a second catalyst” means in the context of claim 6 such that it differs from claim 1. As such, it not seen how the claim 6 phrase “used as a second catalyst” adds any additional limitation to claim 1, since this limitation is already present in claim 1. As such, claim 6 fails to further limit claim 1. Rather, claim 6 appears to be coextensive with claim 1.
Claim Rejections - 35 USC § 112(a) (Written Description)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
35 U.S.C. 112(a) requires that the specification shall contain a written description of the invention demonstrate that the inventor was in possession of the invention that is claimed. 1 MPEP § 2163(I). The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above). MPEP § 2163(II)(A)3(a)(ii) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406). A “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). For genus claims using functional language, the written description "must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus." Ariad, 598 F.3d at 1349.
The § 112(a) Rejection
Claims 2 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because neither the art of record nor the application as filed disclose either a sufficient or representative number of Fischer-Tropsch-hydroformylation catalyst combinations or functional relationship between the various metals, ligands, and promoters that may be present in the Fishier-Tropsch and hydroformylation catalyst such that one of skill would recognize that applicant was in possession of claim 2 catalyst subgenera that meets the claim 2 functional requirements .
Claim 2 recites the following functional results are required by the Fischer-Tropsch catalyst component:
2. Process for converting a syngas feed stream into C3+ alcohols according to claim 1,
wherein the Fischer-Tropsch catalyst has an activity for the Fischer-Tropsch synthesis expressed as a metal mass-specific rate of CO conversion, being equal to or higher than 5 mmolCO gmetaI-1 h-1,
wherein the Fischer-Tropsch catalyst delivers a selectivity to CO2 equal to or lower than 5% on a carbon basis, and
a molar abundance of alpha-olefin hydrocarbons in the hydrocarbon products with hydrocarbon chain lengths in the range of C3-C10 which is equal to or greater than 30% on a carbon basis,
when a syngas feed with a H2/CO molar ratio of 2.0 is contacted with the Fischer-Tropsch catalyst at a reaction temperature equal to or lower than 483 K, and a reaction pressure equal to or greater than 15 bar and
a CO conversion achieved in the reactor is greater than 15%.
Guidance in the Specification
Claim 1 is directed to process for converting a syngas feed stream into C3+ alcohols by contacting syngas (H2/CO) with a catalyst composition comprising a Fischer-Tropsch catalyst component and a hydroformylation catalyst component. The Fischer-Tropsch catalyst component functions to give an intermediate alkene and the hydroformylation catalyst component converts the intermediate alkene to the final alcohol. Claim 10 is directed to the catalyst itself.
The process of claim 1 is summarized by the Examiner below.
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The Fischer-Tropsch process generally involves catalytic reaction of carbon monoxide/hydrogen (syngas) to give alkanes and water (CO + H2 [Symbol font/0xAE] CnH2n + H2O). A. Khodakov et al., 107 Chemical Reviews, 1692-1744 (2007). The claimed invention, of course, requires formation of an intermediate alkene (rather than an alkane) for subsequent hydroformylation to the alcohol.
In this regard, the specification states that the disclosed Fischer-Tropsch catalysts function to provide the alkene, which is subsequently hydroformylated to the alcohol.2 Specification at page 13, lines 3-7. Hydroformylation generally involves conversion of alkenes to aldehydes, but with correct catalyst choice, hydroformylation of alkenes can give alcohols directly (i.e., reductive hydroformylation). Specification at page 1, lines 15-27; G. Morales et al., 5 Catalyst Science and Technology, 34-54 (2015).
Specification Working Examples
The primary specification guidance is disclosed in the working examples. The specification teaches preparation of two Fischer-Tropsch catalyst species (i.e., CoRu/Al2O3_m and CoRuNaPr/Al2O3_mM), summarized by the Examiner as follows.
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Specification at pages 24-26.
The specification teaches two general methods for using the above Fischer-Tropsch catalyst species in combination with a hydroformylation catalyst species for conversion of syngas to C3+ alcohols. Specification at pages 26-27. In general method I, the Fischer-Tropsch catalyst and hydroformylation catalyst (metal + ligand) are added to a solvent and then pressurized (120 bar) with H2:CO:Ar with a molar composition 60:30: 10 and heated to 468K. Specification at page 26.
In general method II, hydroformylation catalyst (alone) and solvent are pressurized (120 bar) with H2:CO:Ar with a molar composition 60:30: 10 and heated to 468K; after one hours, the reactor is cooled and the Fischer-Tropsch catalyst added; the reactor is repressurized and heated under the same conditions. Specification at pages 26-27.
Specification working Examples 1-5, 7, 8 were conducted under general method II with either Fisher-Tropsch catalysts CoRu/Al2O3_m or CoRuNaPr/Al2O3_mM and hydroformylation catalysts are Co2(CO)8/P(Cy3); Co2(CO)8/P(Ph3); or Co2(CO)8/P(n-Bu3). Specification at pages 28-30. Example 6 was performed under general method I with CoRuNaPr/Al2O3_mM as the Fischer-Tropsch catalyst and Co2(CO)8/P(Cy3) as the hydroformylation catalyst. Specification at pages 29-30. The selective and time-yield data is summarized in Table 1. Specification at page 31.
In summary, the specification working examples disclose only two species of Fisher-Tropsch catalysts (i.e., CoRu/Al2O3_m or CoRuNaPr/Al2O3_mM) and three species of hydroformylation catalysts (i.e., Co2(CO)8/P(Cy3); Co2(CO)8/P(Ph3); Co2(CO)8/P(n-Bu3)).
Each catalyst species (where a species is the combination of Fisher-Tropsch and hydroformylation catalyst) tested in the working examples meets claim 2 functional recitations, not in strikeout text, of:
Claim 2 . . . wherein the Fischer-Tropsch catalyst has an activity for the Fischer-Tropsch synthesis expressed as a metal mass-specific rate of CO conversion, being equal to or higher than 5 mmolCO gmetaI-1 h-1,
wherein the Fischer-Tropsch catalyst delivers a selectivity to CO2 equal to or lower than 5% on a carbon basis, and
. . .
a CO conversion achieved in the reactor is greater than 15%.
Specification at page 31, Table 1. The specification does not state one way or the other whether the above claim 2 functional recitation in strikeout text is met by the working examples.
Significantly, other than the specific catalysts tested in the working examples, the specification provides no guidance as to how one of skill selects metals, promoters, organic ligands, and their specific ratios to arrive at other catalyst species that meet the claim 2 functional limitations.
GUIDANCE IN THE ART
What is conventional or well known to one of ordinary skill in the art need not be disclosed in detail. MPEP § (II)(A)(3)(a). Thus, the state of and predictability in the art is a relevant consideration in determining compliance with § 112(a), written description. MPEP § (II)(A)(3)(a) (citing Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) ("The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution”).
Searches conducted have not identified art that teaches a catalyst composition comprising: (1) a first catalyst comprising Co, Ru, or a combination thereof supported on a support (the claimed Fisher-Tropsch catalyst); and (2) a second catalyst comprising cobalt, ruthenium, rhodium, iridium, or any combination thereof and at least one organic ligand selected from oxygen-containing ligands, phosphorus-containing ligands, nitrogen-containing ligands, arsenic-containing ligands and combinations thereof. Further, the specification does not cite such references nor are a such references cited by Applicant in the file. The art certainly does not provide guidance on how to select catalyst components so as to meet the functional limitations of claim 2.
Claim Breadth
Claim breath is relevant to the instant § 112(a) written description rejection. The written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. MPEP § 2163(II)(A)(3)(a)(ii) (citing Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021)).
Here, the Fisher-Tropsch catalyst can be comprising a metal selected from Co, Ru or a combination thereof in any ratio. Further, the Fisher-Tropsch catalyst may comprise a first promoter and a second promoter, where the specification teaches the promoter is a substance that enhances the catalyst's performance in terms of any of activity, selectivity to a given product. Specification at page 15, lines 25-29. The specification teaches that promoters include elements such as metal inorganic salts, selected from the non-limiting list of nitrates, halides, carbonates, sulfates, and combinations thereof, and organic salts and metals. Specification at page 15, line 31 to page 16 line 26. For example, as discussed above for Fischer-Tropsch catalyst CoRuNaPr/Al2O3_mM, employed in the working examples, the first promoter is sodium (Na) and the second promoter is praseodymium (Pr). The various combinations of Co, Ru, or combination in any ratio and first and second promoter is vast; particularly where the promoter is not structurally defined within the claim.
Claim 1 defines the hydroformylation catalyst as a metal ligand combination:
Claim 1 . . . (i) a metal selected from cobalt, ruthenium, rhodium, iridium, or any combination thereof and
(ii) at least one organic ligand from oxygen-containing ligands, phosphorus-containing ligands, nitrogen-containing ligands, arsenic-containing ligands and combinations thereof and which binds to the metal to form a coordination complex in a molar ratio ligand/metal of 1: 1 to 5: 1;
The breadth of hydroformylation catalyst is clearly vast (essentially uncountable) because any of four metals, or any combination, can be employed and the organic ligand is structurally undefined.
Claims 2 Lacks an Adequate Supporting Written Description
Original claim 2 fails to comply with the written description requirement because neither the as-filed application nor the art discloses sufficient species of a catalyst combinations comprising, per base claim 1:
Base claim 1 . . .
(i) Fischer-Tropsch catalyst is a supported metal catalyst comprising a metal selected from Co, Ru or a combination thereof supported on a porous carrier selected from oxide carriers selected from Al2O3, SiO2, TiO2, or any combination thereof, carbide or oxy-carbide materials selected from SiC, SiOxCy, with x being in the range of 0<x<2 and y in the range of 0<y<1, pure carbon or any combination thereof; and
(ii) . . . hydroformylation catalyst comprises
(i) a metal selected from cobalt, ruthenium, rhodium, iridium, or any combination thereof and
(ii) at least one organic ligand from oxygen-containing ligands, phosphorus-containing ligands, nitrogen-containing ligands, arsenic-containing ligands and combinations thereof and which binds to the metal to form a coordination complex in a molar ratio ligand/metal of 1: 1 to 5: 1;
such that one of ordinary skill can recognize or predict catalyst combinations (other than the working example species) falling within the above claim 1 catalyst genus, that when (per claim 2) a “syngas feed with a H2/CO molar ratio of 2.0 is contacted with the Fischer-Tropsch catalyst at a reaction temperature equal to or lower than 483 K, and a reaction pressure equal to or greater than 15 bar”, function so as to (per claim 2):
2 . . . Fischer-Tropsch catalyst has an activity for the Fischer-Tropsch synthesis expressed as a metal mass-specific rate of CO conversion, being equal to or higher than 5 mmolCO gmetaI-1 h-1,
wherein the Fischer-Tropsch catalyst delivers a selectivity to CO2 equal to or lower than 5% on a carbon basis, and
a molar abundance of alpha-olefin hydrocarbons in the hydrocarbon products with hydrocarbon chain lengths in the range of C3-C10 which is equal to or greater than 30% on a carbon basis,
. . .
a CO conversion achieved in the reactor is greater than 15%.
A “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). For genus claims using functional language, the written description "must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally defined genus." Ariad, 598 F.3d at 1349.
As discussed above, the specification disclose only two species of Fisher-Tropsch catalysts (i.e., CoRu/Al2O3_m or CoRuNaPr/Al2O3_mM) and three species of hydroformylation catalysts (i.e., Co2(CO)8/P(Cy3); Co2(CO)8/P(Ph3); Co2(CO)8/P(n-Bu3)). These species are clearly not representative of the vast catalyst genus claimed.
Further, neither the as-filed application nor the art discloses a functional relationship between the various metals, ligands, and promoters that may be present in the Fishier-Tropsch and hydroformylation catalyst and the ability to meet the claim 2 functional requirements.
Subject Matter Free of the Art of Record
Claims 1-10 and 12-21 are free of the art of record. The closest art of record is M. Betts et al., US 6,756,411 (2004) (“Betts”). Betts teaches subjecting, in a Fischer-Tropsch reaction stage, a synthesis gas comprising carbon monoxide (CO) and hydrogen (H) to Fischer-Tropsch reaction conditions in the presence of an iron-based, a cobalt-based or an iron/ cobalt-based Fischer-Tropsch catalyst, to obtain an olefinic product; then feeding the olefinic product or the olefinic component as a feedstock to a hydroformylation stage in which the feedstock is reacted with carbon monoxide and hydro gen in the presence of a catalytically effective quantity of a hydroformylation catalyst and under hydroformylation reaction conditions, to produce oxygenated products comprising aldehydes and/or alcohols. Betts at col. 1, lines 37-53.
Betts teaches that the Fischer-Tropsch catalyst may comprise cobalt and/or a cobalt oxide which has been precipitated, cemented or impregnated onto a suitable support, where preferred supports for the cobalt-based catalyst are oxides of Ti, Mn, Si, Al or combinations thereof, while preferred promoters, when present, are metals and/or oxides of Pt, Ru, Zr, Re or combinations thereof. Betts at col. 4, lines 24-34.
Betts Fischer-Tropsch catalyst meets the claim 1 and 10 limitations of:
Claims 1 and 10 . . . (i) a Fischer-Tropsch catalyst as a first catalyst, which converts syngas to a hydrocarbon mixture comprising C2+ olefins and which is essentially inactive for a water-gas-shift reaction, wherein the Fischer-Tropsch catalyst is a supported metal catalyst comprising a metal selected from Co, Ru or a combination thereof supported on a porous carrier selected from oxide carriers selected from Al2O3, SiO2, TiO2, or any combination thereof, carbide or oxy-carbide materials selected from SiC, SiOxCy, with x being in the range of 0<x<2 and y in the range of 0<y<1, pure carbon or any combination thereof . . .
Betts teaches that the hydroformylation catalyst may then be a phosphine and/or phosphite ligand modified rhodium (Rh), cobalt (Co) or ruthenium (Ru) homogeneous catalyst. Betts at col. 4, lines 35-44.
Differences between Betts and Claims 1 and 10
Betts differs from claims 1 and 10 in that Betts does not teach employing the Fischer-Tropsch catalyst and the hydroformylation catalyst as a catalyst combination as required by claims 1 and 10.
Independent Claims 1 and 10 Are not Obvious in view of Betts
Betts teaches isolation of the Fischer-Tropsch olefin stream before subjecting it to hydroformylation. Betts at col. 1, lines 37-53; Betts at working Examples 1-13. Neither Betts nor Betts in combination with secondary art motivates one of ordinary skill to employ Betts’ Fischer-Tropsch catalyst and hydroformylation catalyst as a catalyst combination.
J. Chang et al., 614 Applied Catalysis A, General 1-10 (Feb. 18, 2021) (“Chang”)
It is noted here that the corresponding European Search Opinion cites J. Chang et al., 614 Applied Catalysis A, General 1-10 (Feb. 18, 2021) (“Chang”). Chang teaches that two catalysts, cobalt supported by reduced graphene oxide (RGO) (CG) and Rh promoted cobalt supported by RGO (RCG), have been successfully synthesized.
Chang teaches synthesis of a first catalyst -- 20% Co supported on RGO (reduced graphene oxide) (catalyst referred to by Chang as CG). Chang at page 2, col. 2, (“2.1. Preparation of 20%Co/RGO (CG)”).
Chang teaches synthesis of a second catalyst -- 0.5%Rh-20%Co/RGO (catalyst referred to by Chang as RCG). Chang at page 2, col. 2 (“2.2. Preparation of 0.5%Rh-20%Co/RGO (RCG)”).
Chang evaluates each of the above two catalysts separately in the Fischer-Tropsch reaction according to the following procedure.
The performance of the catalysts was evaluated using a fixed-bed reactor with an internal diameter of 8 mm and a length of 380 mm.
0.5 g of 20%Co/RGO catalyst was loaded into the reactor and reduced with H2 (AFROX (African Oxygen) Ltd., 99.999%) at 350 ℃, 1 bar and 30 mL/min for 20 h.
0.5 g of 0.5%Rh-20%Co/RGO catalyst was loaded into the reactor and reduced with H2 (AFROX (African Oxygen) Ltd., 99.999%) at 330 °C, 1 bar and 30 mL/min for 20 h.
Then the Fischer-Tropsch reactions were done with syngas feed (SFT) and ethene hydroformylation using syngas co-fed with ethane (EH).
Change at page 2, col. 2 (“2.4. Catalytic performance”).
As summarized in Table 2, the Fischer-Tropsch testing for the CG catalyst, alone, resulted in a selectivity to C1-5 alcohols of 27.5% at a CO conversion of 5.2%. Chang at page 6 (“3.5. FTS and ethene hydroformylation performance over the CG catalyst”). The results for the CG catalyst are summarized in Table 2.
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Change at page 5, Table 2.
Chang teaches that the Fischer-Tropsch testing for the RCG catalyst, alone, the data in Figs. 6and 7 indicates that the CO conversion for the RCG catalyst is much lower than for the CG catalyst when initially introducing syngas into the ((1) SFT) reactor at the same reaction conditions. Chang at page 7 (“3.6. FTS and EH performance over the RCG catalyst”).
Differences between Chang and Claims 1 and 10
Neither Chang’s 20%Co/RGO (CG) nor 0.5%Rh-20%Co/RGO (RCG) catalysts meet the claim 1 or 10 limitation of “a hydroformylation catalyst as a second catalyst” because the Chang catalysts do not comprise a claimed “organic ligand”.
Chang’s 20%Co/RGO (CG) and 0.5%Rh-20%Co/RGO (RCG) catalysts differ from claim 1 and claim 10 catalyst in that Chang’s reduced graphene oxide (RGO) support t is not a claimed support.
Most significantly, Chang tests each of 20%Co/RGO (CG) and 0.5%Rh-20%Co/RGO (RCG) in separate Fischer-Tropsch reactions and does not employ them as a combination catalyst as required by claims 1 and 10.
Claims 1 and 10 Art not Obvious in View of Chang
Claims 1 and 10 are not obvious in view of Chang because one of ordinary skill is not motivated to modify either of 20%Co/RGO (CG) or 0.5%Rh-20%Co/RGO (RCG) with an organic ligand so as to arrive at the claim 1 or 10 “hydroformylation catalyst as a second catalyst”. Further even assuming one of ordinary skill could arrive at the claimed “hydroformylation catalyst as a second catalyst” neither Chang nor secondary art motivates one of ordinary skill to employ such catalyst in combination with the claim 1 or 10 supported Fischer-Tropsch catalyst “comprising a metal selected from Co, Ru or a combination thereof supported on a porous carrier selected from oxide carriers selected from Al2O3, SiO2, TiO2, or any combination thereof, carbide or oxy-carbide materials selected from SiC, SiOxCy”
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. MPEP § 2163.03 (V) (citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. MPEP § 2163.03 (V) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) ("[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed”).
2 The specification and the art teach that terminal alkenes are a major initial product of the Fischer-Tropsch reaction; however, these primary alkenes are rather reactive under the reaction conditions to the corresponding alkanes. Specification at page 2, line 31 to page 3, line 5. However, the specification teaches that the disclosed Fischer-Tropsch catalysts show limited activity for secondary reactions of alpha-olefin hydrocarbons, which contribute to lowering the abundance of alpha-olefin compounds within the hydrocarbon products in standard Fischer-Tropsch synthesis processes. Specification at page 13, lines 3-7. Thus, the Fischer-Tropsch products using the claimed catalysts are alkenes that can be hydroformylated to alcohols.
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