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 of claims 1-8, 10-13, and 16 in the reply filed on 4/28/2026 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-5, 7, 11-12, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Agblevor US 2015/0065762.
Regarding claim 1, Agblevor teaches a process of using red mud and a fluidized bed catalyst (Paragraph [0049]) that may include additives, such as calcium oxide (Paragraph [0034]).
Agblevor does not expressly state the percent content of the red mud in the composition. However, “the 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.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The compound of Agblevor is substantially similar because the amount of CaO is less than the amount of red mud because the calcium oxide shifted the pH of the oil from acidic to neutral and removed the PCBs from the oils, which would be a CaO content of less than 50%.
Regarding claim 4, 7, 12 and 16, these claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 5, the particle size is 125 to 180 microns (Paragraph [0054]).
Regarding claim 11, the catalyst may include silica and calcium oxide (Paragraph [0053]), which would be considered colloidally dispersed under the broadest reasonable interpretation of the claims.
Claim(s) 1-4, 7, 12, 10, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoang WO 00/00285.
Regarding claim 1-3, Hoang teaches a red mud based catalyst that may include nickel oxide in an amount of 21.2 wt% and the a red mud amount of greater than 50% (Example 1).
Regarding claim 4, 7, 12 and 16, these claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 10, the catalyst may include zirconia (Abstract), which would be considered colloidally dispersed under the broadest reasonable interpretation of the claims.
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.
Claim(s) 6, 8 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agblevor US 2015/0065762.
Regarding claim 6, Agblevor teaches a BET surface area of between about 30 and about 65 m2/g (Paragraph [0036]), which overlaps the range of claim 6. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8 and 13, Agblevor teaches a BET surface area of between about 30 and about 65 m2/g (Paragraph [0036]).
Agblevor does not expressly teach the particle size according to claims 8 and 13. However, it would have been obvious to form the catalyst in the particle size ranges of claims 8 and 13 according to the properties of the fluid that is being treated by the catalyst (Paragraph [0079]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731
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