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 of Group I, claims 1-18, in the reply filed on July 15, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-18 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Bao et al. (US 2024/0226869)
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Bao et a. (US 2024/0226869) discloses a process for regenerating a platinum based dehydrogenation catalyst and clearly anticipates claims 1-18. Refer to Abstract, Examples, and claims 1-16.
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. (US 2015/0202601) in view of Choi et al. (US 2020/0055028).
Regarding claims 1-4, Luo et al. (US 202/0055028) discloses a process for regenerating an alkane dehydrogenation catalyst comprising a group 13 metal, a group 8-10 noble metal, an optional promoter metal, on a porous support ([0011]), wherein the process comprises heating the partially deactivated catalyst to a temperature of at least 660 degrees C, using heat generated by combusting the coke and from a fuel source other than the coke (corresponding to step I) and maintaining the deactivated catalyst at a temperature of at least 660 degrees C while exposing it to a flow of oxygen containing gas to obtain a regenerated catalyst (corresponding to steps II-IV) ([0024]-[0026]). In an example, the initial heating step contains 16 mol% H2O ([0041]), the oxygen containing gas is air ([0042]), which would necessarily meet the limitation in step II, and the contact time is greater than 30 seconds (Table 1).
Luo et al. teaches the use of noble metals, including Pt, but does not teach the amount required by claim 1, i.e. 0.06-6 wt %.
Choi et al. (US 2020/0055028) discloses a catalyst composition suitable for use in dehydrogenation reactions ([0004]) wherein the catalyst comprises platinum in the amount of 0.05-0.5 % by weight ([0046]). Choi et al. further teaches that the amount of platinum used is a result effective variable, impacting the dehydrogenation function of the catalyst ([0046]).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the catalyst taught by Luo et al. to include platinum in the amount taught by Choi et al. Choi et al. establishes that platinum in amounts required by claim1 are suitable for use in dehydrogenation catalysts and further that the amount used impacts the dehydrogenation performance of the catalyst, thereby giving one of ordinary skill motivation to optimize the amount of platinum contained to provide an catalytically effective composition.
Regarding claims 5-7, Luo et al. teaches that the catalyst comprises a porous support such as alumina ([0011]), but fails to teach that the support additionally comprises at least 0.5 % by weight of a group 4 element.
However, Choi et al. discloses that the addition of zirconium, a group 4 metal, can improve the durability of the alumina support in a dehydrogenation catalyst comprising platinum ([0045]).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of invention to have further modified the catalyst taught by Luo et al. to include zirconium as suggested by Choi et al. to form a catalyst support having increased durability.
Regarding claims 8-11, Luo et al. teaches that the dehydrogenation catalyst can contain a rare earth modified alumina ([0011]), a group 13 metal such as gallium or indium ([0019]), and an alkali metal ([0019]).
Regarding claim 12, Luo et al. as modified by Choi et al. teaches the use of the same catalyst required by claim 12/1. Therefore, it is the position of the examiner that the catalyst is capable of effecting the hydrocarbon conversion processes required by claim 12.
With respect to claims 13 and 14, Luo et al. further does not specifically teach that the oxidative gas is pre-heated. However, Luo et al. teaches specifically that the initial temperature in the reactor is ramped to a temperature of 720 degrees C and is then maintained at that temperature ([0040], [0041]), which suggests that the gas stream is heated throughout the process in order to maintain a desired reaction temperature. In addition, the reference further teaches that that temperature employed is a result effective variable (see [0033]), which would provide one of ordinary skill with the motivation to optimize the heating and temperature conditions in order to obtain the best results from the regeneration process. It would have been obvious to one having ordinary skill in the art at the time the invention was made to choose the instantly claimed ranges and conventional heating methods through process optimization, since it has been held that there the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215.
With respect to claim 15, Luo et al. teaches that the regeneration process further includes contacting the oxidized catalyst to a flow if stripping gas that is substantially free of oxygen to form the regenerated catalyst ([0027], [0028]).
Regarding claims 16-18, Luo et al. does not specifically teach a reduction of the catalyst with hydrogen. However, Choi et al. teaches an iterative regeneration process for a dehydrogenation catalyst comprising platinum which includes a hydrogen activation step to effect reduction of the catalytic metal following regeneration ([0048], [0064]).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of invention to have modify the process taught by Luo et al. to further include a reduction step using hydrogen as taught by Choi et al., because Choi et al. teaches that such is a conventional step during regeneration to provide an activated metal capable of dehydrogenation activity.
With respect to the cooling step of claim 18, Luo et al. suggests that the reactor is cooled to reaction temperature to provide a stable catalyst bed, but does not specifically teach a time of 10 minutes or less. However, Luo et al. teaches that the times required for each of the step has an impact on the efficiency of the process, thereby establishing the time required as a result effective variable. It would have been obvious to one having ordinary skill in the art at the time the invention was made to choose the instantly claimed ranges through process optimization, since it has been held that there the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215.
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.
Claims 1-4 and 8-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/562,477 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The ‘477 application claims a process for regenerating a catalyst comprising the instantly required steps I-IV. The claims differ from the instant claims by requiring a group 10 metal which overlaps the amount instantly claimed. Overlapping ranges are prima facie obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA ANN JOHNSON whose telephone number is (571)272-1176. The examiner can normally be reached Monday - Friday, 6am - 2pm.
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, Alexa Neckel can be reached at 571-272-2450. 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.
/CHRISTINA A JOHNSON/Primary Examiner, Art Unit 1742
Prosecution Insights