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 .
Drawings
The 3/13/24 drawings are provisionally accepted. Due to their complexity and/or numerosity, applicant’s assistance is requested to ensure that all component labels therein are correctly identified in the specification and vice versa. 37 CFR 1.3 (courtesy required).
Election/Restrictions
Applicant’s 12/29/25 election without traverse of Group I (claims 1-12) is acknowledged. Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups, there being no allowable generic or linking claim.
Claim Interpretation
Claim 1’s “a length dimension from the first polygonal surface to the second polygonal surface” is understood to be equivalent to/synonymous with the height of the substantially regular polygonal prismatic body.
Claim 6’s “or amorphous silica-alumina and a…platinum, or palladium” is considered to be a single Markush species, i.e. what will satisfy/infringe the claim is one or more of 1) zeolite, 2) alumina, or 3) amorphous silica-alumina and (i.e. in conjunction with) a hydrogenation component comprising one or more of Mo, Ni, W, Co, Ir, Pt, or Pd. The Markush grouping is not read to be 1) one or more of 1a) zeolite, 1b) alumina, or 1c) amorphous silica-alumina, as well as 2) a hydrogenation component comprising one or more of 2a) Mo, 2b) Ni, 2c)W, 2d) Co, 2e) Ir, 2f) Pt, or 2g) Pd.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b)/2nd par. as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. It is grammatically unclear whether or not claim 6’s “or amorphous silica-alumina and a…platinum, or palladium” is considered to be a single Markush species, i.e. what will satisfy/infringe the claim is either A or B, A being one or more of 1) zeolite, 2) alumina, or 3) amorphous silica-alumina and (i.e. in conjunction with) a hydrogenation component comprising one or more of Mo, Ni, W, Co, Ir, Pt, or Pd, B being 1) one or more of 1a) zeolite, 1b) alumina, or 1c) amorphous silica-alumina, as well as 2) a hydrogenation component comprising one or more of 2a) Mo, 2b) Ni, 2c)W, 2d) Co, 2e) Ir, 2f) Pt, or 2g) Pd. The foregoing ambiguity causes confusion as to the claimed scope and how to avoid infringement thereof, rendering claim 6 rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. While interpretation A has been applied for prior art purposes as grammatically favored/more probable, this rejection nevertheless needs addressing.
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.
Claims 1-3, 5, 7-8, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Freer et al., US 2020/0016580 (published 1/16/20) (“Freer”). Regarding claims 1-3, Freer discloses catalytic “miniliths”, i.e. small monolithic materials having cylindrical void volumes therein; an example of a (prismatic) regular pentagon (i.e. nfaces = 5) with rounded corners having six cylindrical void volumes therein (i.e. napertures = 6) -herein, “pentagonal minilith”- is specifically disclosed. See Freer at, e.g., par. 383-94 (esp. 394); Fig. 2B. Note that while nfaces ≠ napertures (specifically, nfaces +1 = napertures, i.e. nfaces = napertures -1) this is not considered to negate Freer’s applicability to the claims, as the claims are in an overall “comprising” format and thus do not exclude additional, unclaimed features (such as an ‘extra’ aperture/cylindrical void volume). Indeed, it is noted that napertures = 6 comprises napertures = 5, since 6 comprises 5 (i.e. 6 = 5 + 1). MPEP 2111.03. Additionally and/or alternatively, Freer discloses that its miniliths (such as pentagonal miniliths) can have 5 void spaces, i.e. napertures = 5. See Freer at, e.g., par. 399.
Regarding claim 5, Freer’s Fig. 2B minilith is understood to satisfy the claimed spatial relationship.
Regarding claim 7, to the extent that Freer’s pentagonal minilith’s composition is not disclosed, it is considered to meet the 0 wt% portions of the claimed ranges.
Regarding claim 8, Freer discloses surface area to volume ratios of 0.1-10 mm-1 or 0.1-5 mm-1. See id. at, e.g., par. 354-55.
Regarding claim 10, Freer discloses that its (cylindrical) void spaces’ largest cross-sectional dimension (which is regarded to be the length, i.e. height, of the overall minilith) is ~2-10 mm, ~3-8 mm, ~3-5 mm, or ~5 mm. See id. at, e.g., par. 400.
Regarding claim 11, Freer’s “effective diameter” and “largest outside dimension” are understood to be equivalent/synonymous, and are understood to be equal to twice its polygonal surface’s circumradius. See id. at, e.g., par. 384-89 and 394. As such, Freer’s disclosures of effective diameters of 1-20 mm, 5-50 mm, 10-30 mm, and 20-30 mm are considered to be respective disclosures of 0.5-10 mm, 2.5-25 mm, 5-15 mm, and 10-15 mm circumradius ranges. See id.
Regarding claim 12, Freer discloses an aspect ratio (defined as the length divided by outside dimension, the latter being understood to be equivalent to “width” as claimed), i.e. L/o.d. or L/w, of ~0.5-2 or ~0.6-1.2. See id. at, e.g., par. 398. Thus, the w/L ratio is ~2-0.5 or ~1.2-0.6, within the claimed w/L range.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 4, 6, 9, and 11 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Freer. Regarding claim 4, Freer teaches that its miniliths can comprise 6 or 7 (which comprises 6, i.e. 7 = 6 + 1) void spaces, i.e. napertures = 6 or 7. See Freer at, e.g., par. 399. While Freer does not also specifically teach that its miniliths can comprise hexagonal faces (i.e. nfaces = 6), Freer does suggest that its list of possible minilith face shapes is not limited to those shapes specifically disclosed: Freer lists its face shapes as “the miniliths (e.g., rings, pentagons, ellipses)…” (emphasis added) This, in addition to Freer’s specifically-disclosed pentagonal minilith (whose nfaces = 5 and napertures = 6, see id. at, e.g., par. 394 and Fig. 2B), is considered to render it prima facie obvious to employ a minilith whose nfaces = 6 and napertures = 7, the latter comprising napertures = 6 as claimed (again, 7 comprises 6, i.e. 7 = 6 + 1). MPEP 2144.04 IV.A.-B.
Regarding claim 6 (interpreted as detailed above), while Freer does not disclose a specific minilith comprising one or more of the claimed components, Freer teaches that its pellets/monoliths can comprise support materials such as zeolites, rendering it prima facie obvious to do so. See Freer at, e.g., par. 361; MPEP 2143 I.(E) & 2144.07.
Regarding claim 9, Freer’s pentagonal minilith is understood to have a circumradius “R” of 0.5-10 mm, 2.5-25 mm, 5-15 mm, and 10-15 mm as detailed above vis-à-vis claim 11. Given these values, and the relative visual dimensions of Freer’s Fig. 2B pentagonal minilith, the claimed aperture diameter range is reasonably considered to be met/present. MPEP 2144.01 (reasonably-drawn inferences from prior art teachings may properly be relied upon in 35 U.S.C. 103 rejections). Additionally and/or alternatively, given the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ascertain and employ a desired aperture diameter (based upon factors as pellet fluidizability, reagent flowthrough, etc.), such as within the claimed range, via routine experimentation- it has been held that “where 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.” See MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Additionally and/or alternatively regarding claim 11, Freer’s disclosures are as detailed above. Should it be argued that Freer does not disclose its cited values with “sufficient specificity” to support the anticipation rejection, the overlap between Freer’s ranges and that claimed is nevertheless sufficient to render the latter prima facie obvious. MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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) 270-3591. 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.
/DANIEL BERNS/ February 4, 2026
Primary Examiner
Art Unit 1736
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