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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-4, drawn to a catalyst comprising alumina and a method of preparing such a catalyst, classified in B01J23/30.
II. Claims 5 and 6, drawn to a method of treating PFCs using a catalyst comprising alumina , classified in Y02C20/30.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the catalyst as claimed can be used in a materially different process such as for NOx treatment of exhaust gas.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The above noted inventions designated by Groups I and II have acquired a separate status in the art as evidenced by their different classification, they have acquired a separate status in the art due to their recognized divergent subject matter, and a completed search of both inventions would necessitate different fields of search. For at least these reasons, a concerted search of both groups of inventions would impose an undue burden upon the office.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Erik Jarvholm on 06/20/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-4. Affirmation of this election must be made by applicant in replying to this Office action. Claims 5 and 6 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
Claims 2 and 4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Claim 2 recites the limitation "the mixture" in line 9. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the tungsten is added to the aqueous solution mixture or if it’s added to the previous calcined product followed by an additional drying and calcination. The claims recite a mixing step of mixing an aqueous solution of zinc with alumina. The product of this mixing is considered as the “the mixture” in the last part of the claim. The claim is interpreted as the aqueous solution of tungsten is added to the mixed product and not the dried and fired product. It is also unclear if the claim requires two separate drying and firing steps or if the two recitations of “drying and firing” refer to the same “drying and firing” sequence.
Claim 4 is rejected due to the virtue of its dependence on claim 2.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones et al. US 20060216229.
Regarding claim 1, Jones et al. teaches a catalytic composition with 30% zinc oxide, 67% alumina and 3 % ammonium tungstate (Para [0099]). This converts to Al:Zn:W as 100:44.7:4.47 as represented in the claimed catalyst.
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) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. US 20060216229.
Regarding claims 2 and 4, Jones et al. teaches a catalytic composition with 30% zinc oxide, 67% alumina and 3 % ammonium tungstate (Para [0099]). This converts to Al:Zn:W as 100:44.7:4.47 as represented in the claimed catalyst. The Jones reference teaches a method of making a Zn hydroxy salt by precipitation from salt solutions (Para [0041]). The Jones reference incorporates (See Para [0042]) the Journal article by Newman et al. (attached) where this method is detailed. The Newman article describes that zinc nitrate in an aqueous solution was used to precipitate the Zn hydroxy salt (See Pg. #28, right hand column, 2nd para). Additionally Jones teaches an embodiment where alumina is present during this step of Zn hydroxy salt preparation (Para [0082]). Thus this embodiment would read on the claimed limitation of mixing an aqueous solution of Zinc precursor (nitrate) with alumina and then drying and firing. After the Zn-MHS is made, the ammonium tungstate is added followed by drying and firing (See Para [0096]).
The difference between the invention of Jones et al. and that of claim 2 is that claim 2 requires a method of making the catalyst using distilled water.
Before the effective filing date of the claimed invention it would have been obvious for a person of ordinary level of skill in the art to make the catalyst of Jones using distilled water. One would be motivated to do so because distilled water is commonly used in chemical synthesis in order to avoid impurities from the water source.
Regarding claims 3 and 4, Jones et al. teaches a catalytic composition with 30% zinc oxide, 67% alumina and 3 % ammonium tungstate (Para [0099]). This converts to Al:Zn:W as 100:44.7:4.47 as represented in the claimed catalyst. The Jones reference teaches a method of making a Zn hydroxy salt by precipitation from salt solutions (Para [0041]). The Jones reference incorporates (See Para [0042]) the Journal article by Newman et al. (attached) where this method is detailed. The Newman article describes that Zinc nitrate in an aqueous solution was used to precipitate the Zn hydroxy salt (See Pg. #28, right hand column, 2nd para). Additionally Jones teaches an embodiment where alumina is present during this step of Zn hydroxy salt preparation (Para [0082]). Thus this embodiment would read on the claimed limitation of mixing an aqueous solution of Zinc precursor (nitrate) with alumina and then drying and firing. After the Zn-MHS is made, the ammonium tungstate is added followed by drying and firing (See Para [0096]).
The difference between the invention of Jones and that of claim 3 is that claim 3 requires the addition of the tungsten precursor with the zinc precursor which are both added to the alumina together as aqueous solution.
Before the effective filing date of the claimed invention it would have been obvious for a person of ordinary level of skill in the art to make the catalyst of Jones by combining both precursors together instead of one at a time. One would be motivated to do so in an effort to save an additional processing step and combining multiple rounds of drying and firing steps into one drying and firing step. A further difference is that claim 3 requires using distilled water. However, it would have been obvious for a person of ordinary level of skill in the art to make the catalyst of Jones using distilled water. One would be motivated to do so because distilled water is commonly used in chemical synthesis in order to avoid impurities from the water source.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of co-pending Application No. 19/077257 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both Applications require a catalyst for decomposing PFCs comprising alumina selected from at least one of gamma alumina, aluminum trihydroxide, boehmite and pseudo-boehmite, the alumina being added with zinc and tungsten.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant Art
Kanno US 2004047786 et al. teaches treating a gas stream comprising fluorine compounds with a catalyst to hydrolyze the fluorine compounds (Abstract). The catalyst comprising an alumina and titania mixture promoted with at least one member selected from the group consisting of zirconia, tungsten oxide, silica, tin oxide, ceria, bismuth oxide, nickel oxide and boron oxide (Para [0026]). The Kanno reference teaches using Boehmite fir the alumina (Para [0027]). In one embodiment the reference teaches that significant C2F6 decomposition activity is detected with Zn loading on the alumina in the decomposition catalyst (See Fig. 6 and Para [0146]). As seen in Fig. 6, the Al-Zn (sample 26) embodiment has higher activity than alumina alone (sample 19) or Al-Zr (sample 34). The weight ratio is Al:Zn=86.4:13.6 (See Para [0125] relating to the preparation of sample 26). This is within the claimed ratio of Al:Zn=100-30:100-1. The reference teaches mixing an aqueous solution of the zinc precursor (zinc nitrate) with boehmite and then dried and fired (Para [0174]).
Oh US 20150018572 teaches a method of making a catalyst by dissolving ammonium metatungstate and zinc nitrate in water to make a solution and then combining the mixed solution with gamma alumina (Para [0088] and [0089]). This is followed by drying ang firing to yield an Al-Zn-W catalyst.
KR20200092068 (translation attached) teaches a tungsten-zirconium metal oxide catalyst for capture of PFC compounds (Abstract). The reference teaches that the precursors of the Al, Zr and W are mixed, dried and fired to produce the catalyst (See, example 5, on Pg. 5). More specifically, the reference teaches using gamma alumina and pseudo-boehmite (See Pg. 3, para 13). The reference teaches dissolving precursors of the metals in distilled water followed by mixing this solution with aluminum oxide then drying and firing (See Pg. 2. Para 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED TAHA IQBAL whose telephone number is (571)270-5857. The examiner can normally be reached M-F; 7-5.
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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.
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/SYED T IQBAL/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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