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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ryu (U.S. 2009/0299114 A1).
Regarding claim 1, Ryu teaches a catalyst (Ryu, [0042]-[0045]), wherein the catalyst comprises an MgAl2O4 carrier (Ryu, [0042], “magnesium-spine[l] alumina”; [0019]), and Ni, Pd, and Cu active components loaded thereon (Ryu, [0044]).
Ryu does not explicitly state that the catalyst is a reductive amination catalyst. However, absent structural differences between a claim and a prior art material or article, a recitation of the claimed material or article' s intended use cannot alone patentably distinguish the claimed invention from the prior art. See MPEP 2114 I-II, citing, e.g., Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987); MPEP 2111.02 II, citing Rowe v. Dror, 112, F.3d 473, 478 (Fed. Cir. 1997) (stating that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”). See also In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (stating that “a mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable”). Thus, if the prior art structure is capable of performing the intended use, as Ryu’s is, it meets the claim. See MPEP 2111.02 II, citing In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (citing, inter alia, In re Zierden). In the instant case, because Ryu teaches the claimed material, the instant claim’s recitation of that material as an amination catalyst does not distinguish it from Ryu’s material.
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.
The factual inquiries 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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Ryu (U.S. 2009/0299114 A1), as applied to claim 1 above, and further in view of Fujiso (U.S. Patent No. 3,751,508, 1973).
Regarding claim 2, Ryu teaches the reductive amination catalyst according to claim 1, as discussed above, wherein the reductive amination catalyst is prepared from the following components by weight percent: 9.96 wt% of Ni; 0.09 wt% of Pd, which differs from the claimed range of 0.1-2 wt%; 0.57 wt% of Cu; and an unspecified amount of MgAl2O4 (Ryu, [0044]), which differs from the claimed range of 84-95 wt% of MgAl2O4.
While Ryu does not explicitly teach that the catalyst contains 84-95 wt% of MgAl2O4, Ryu teaches generally that the amount of MgAl2O4 in the support can be any amount (Ryu, [0019], “The content of spinel in aluminum oxide support can be any amount, but preferably from 0.1% to 50%, most preferably from 0.2% to 20%.”). Fujiso teaches that a support entirely of MgAl2O4 is suitable to use as a support for an acetylenic hydrocarbon hydrogenation catalyst (Fujiso, Claim 1; Col. 2, lines 47-52, “According to the invention, the magnesium-aluminum spinel prepared by known means as above may be used as the carrier…”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected MgAl2O4 by itself as the support material in Ryu’s catalyst. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, MgAl2O4 was known to be suitable by itself as a support in a catalyst for the same type of transformation undertaken by Ryu (Ryu, [0014], hydrogenation of acetylenic hydrocarbons; Fujiso, Claim 1; Col. 2, lines 47-52), so it would be obvious to use as a catalyst support.
In selecting MgAl2O4 as the sole support in Ryu’s catalyst as rendered obvious by Fujiso, the proportion of MgAl2O-4 by weight would be 1 - 0.01 x (Ni wt%) - 0.01 x (Pd wt%) - 0.01 x (Cu wt%) = 1 - .0996 - .0057- .0009 = 0.8938, or 89.38%.
While the amount of Pd in Ryu’s embodiment contemplated above (Ryu, Example 7, [0042]-[0045], 0.09 wt% of Pd) differs from the claimed range of 0.1-2 wt% of Pd, Ryu teaches generally that a range of 0.005-0.2 wt% of Pd is suitable (Ryu, [0012]), which overlaps with the claimed range of 0.1-2 wt% of Pd.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the amounts of Pd because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 3, modified Ryu renders the reductive amination catalyst according to claim 2 obvious, as discussed above, wherein the reductive amination catalyst is prepared from the following components by weight percent: 9.96 wt% of Ni; 0.09 wt% of Pd, which differs from the claimed range of 0.1-0.5 wt% of Pd; 0.57 wt% of Cu, which differs from the claimed range of 0.1-0.5 wt% of Cu; and 89.38 wt% MgAl2O4 (Ryu, [0044]).
While the amount of Cu in Ryu’s embodiment contemplated above (Ryu, Example 7, [0042]-[0045], 0.57 wt% of Cu) differ from the claimed range of 0.1-0.5 wt% of Cu , Ryu teaches generally that a range of 0.01-0.6 wt% of Cu is preferable (Ryu, [0012]), which overlaps with the claimed range of 0.1-0.5 wt% of Cu.
Additionally, while the amount of Pd in Ryu’s embodiment contemplated above (Ryu, Example 7, [0042]-[0045], 0.09 wt% of Pd) differs from the claimed range of 0.5-1.5 wt% of Pd, Ryu teaches generally that Pd in an amount less than 10% of the Ni present is suitable (Ryu, [0012]-[0013], a promoting amount of Pd). In the instant case, less than 10% of the Ni present corresponds to less than 0.996 wt% of Pd (Ryu, [0044], 10% of 9.96 wt% of Ni), which overlaps with the claimed range of 0.5-1.5wt% of Pd.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portions of the amounts of Cu and of Pd because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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