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 .
Status of Claims
Claims 1 – 12 are pending.
Claims 1 - 12 are rejected.
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.
Claim 5 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
The rejected claim recites the limitation “other refractory oxides” in line 3. It is not clear what other refractory oxides are being referenced in the claim. For this reason the claim is indefinite and lack clarity.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 – 12 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for a continuous process for aerobic oxidation of methane wherein the feed is O2, liquid water and methane in the presence of a platinum or silver based catalyst support on TiO2, does not reasonably provide enablement for a continuous process for aerobic oxidation of methane wherein the feed is O2, liquid water and methane in the presence of any metal-based catalyst. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The test for enablement is whether one skilled in the art could make and use the claimed invention from the disclosures in the specification coupled with information known in the art without undue experimentation (United States v. Telectronice, 8, USPQ2D 1217 (Fed. Cir, 1988). Whether undue experimentation is needed is not based upon a single factor but rather in a conclusion reached by weighing many factors. The factors to be considered in determining whether a disclosure meets the enablement requirements of 35 U.S.C. 112, first paragraph, have been described in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir., 1988). The court in Wands states, “Enablement is not precluded by the necessity for some experimentation, such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue’, not ‘experimentation’” (Wands, 8 USPQ2sd 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations” (Wands, 8 USPQ2d 1404). Among these factors are: (1) the nature of the invention; (2) the breadth of the claims; (3) the state of the prior art; (4) the predictability or unpredictability of the art; (5) the relative skill of those in the art; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary.
While all of these factors are considered, a sufficient amount for a prima facie case is discussed below.
(1) The nature of the invention and (2) the scope of the claims:
The nature of the claims 1 – 11 are drawn to a continuous process for aerobic oxidation of methane, the process including: a) providing a reactor comprising a bed of a metal-based catalyst; b) providing a methane feed stream into the reactor; c) providing an oxygen feed stream into the reactor; and d) providing a water feed stream into the reactor; wherein the methane is oxidised in a single step in the reactor over the metal-based catalyst in the presence of liquid water to produce a reaction product including compounds selected from formaldehyde, oligomers of formaldehyde, methanediol, and products of addition reactions between methanol and formaldehyde, and mixtures thereof.
The nature of the claim 12 is drawn to a continuous process for aerobic oxidation of methane, the process including: a) providing a reactor comprising a bed of a metal-based catalyst; b) providing a methane feed stream into the reactor; c) providing an oxygen feed stream into the reactor; and d) providing a water feed stream into the reactor; wherein the methane is oxidised in a single step in the reactor over the metal-based catalyst in the presence of liquid water to produce a reaction product including compounds selected from formaldehyde, oligomers of formaldehyde, methanediol, and products of addition reactions between methanol and formaldehyde, and mixtures thereof, with selectivity of the compounds or mixtures of over 70%.
The scope of the invention in the claims is that the metal-based catalyst is any form of metal-based catalyst.
(3) The state of the prior art: The state of the prior art is set out in the teaching of Song.
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(4) the predictability or unpredictability of the art: Chemistry is unpredictable. In reMarzocchi, 439 F2d 220, 169 USPQ 367 para. 3. However, the "predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or know results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. MPEP 2164.03.
(5) The relative skill of those in the art: One of ordinary skill is a practicing organic chemist.
(6) The amount of direction or guidance presented and (7) the presence or absence of working examples:
The specification has provided guidance for a process wherein the metal-based catalyst are platinum and silver based with titania support in both claims 1 and 12.
However, the specification does not provide a process to the oxidation of methane wherein the metal-based catalyst is any form of metal-based catalyst.
(8) The quantity of experimentation necessary:
Considering the state of the art as discussed by the references above, particularly with regards to the catalyst required for the oxidation reaction to produce the desired products and the high unpredictability in the art as evidenced therein, and the lack of guidance provided in the specification, one of ordinary skill in the art would be burdened with undue experimentation to practice the invention commensurate in the scope of the claims.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 2, 5, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Roman-Leshkov et al. (US 2017027616) (Roman).
The Examiner combined the rejection for claims 1 and 12 because the prior art of Roman is applicable to all claim sets, and the invention of claim 1 is not patentability unobvious from the invention of claim 12.
The rejected claim 1 cover, inter alia, a continuous process for aerobic oxidation of methane, the process including: a) providing a reactor comprising a bed of a metal-based catalyst; b) providing a methane feed stream into the reactor; c) providing an oxygen feed stream into the reactor; and d) providing a water feed stream into the reactor; wherein the methane is oxidised in a single step in the reactor over the metal-based catalyst in the presence of liquid water to produce a reaction product including compounds selected from formaldehyde, oligomers of formaldehyde, methanediol, and products of addition reactions between methanol and formaldehyde, and mixtures thereof.
Dependent clam 2 further limits the metal of the metal-base catalyst. Dependent claim 5 further limits the metal-based catalyst to including a support. Dependent claim 10 further limits the reaction temperature and pressure.
Claim 12 discloses, inter alia, a continuous process for aerobic oxidation of methane, the process including: a) providing a reactor comprising a bed of a metal-based catalyst; b) providing a methane feed stream into the reactor; c) providing an oxygen feed stream into the reactor; and d) providing a water feed stream into the reactor; wherein the methane is oxidised in a single step in the reactor over the metal-based catalyst in the presence of liquid water to produce a reaction product including compounds selected from formaldehyde, oligomers of formaldehyde, methanediol, and products of addition reactions between methanol and formaldehyde, and mixtures thereof, with a selectivity of the compounds or mixtures thereof of over 70%.
However, Roman discloses apparatuses, systems, and methods for oxidation of an alkane (e.g., methane) into an alcohol (e.g., methanol) in the presence of a catalyst. (abstract). Specifically, a method of catalytically forming methanol from methane is described. The method may comprise exposing a catalyst to methane, oxygen, and water, wherein methanol is formed by conversion of methane, oxygen, and water at a steady state production rate of from about 0.5 to about 160 μmol per hour per gram of catalyst. ([0010] & [0022]). An example reaction is given which is conducted in a continuous tubular flow reactor, wherein a catalyst bed of zeolites is used, including a Cu-exchanged ZSM-5 zeolite (paragraphs [0158], [0196]), over which is flowed oxygen, methane, and water, to form methanol (paragraph [0172]).
The reaction is conducted continuous in a tubular flow reactor. ([0172]). The catalyst is exposed to the alkane species (methane), the oxidizing agent (oxygen) and the protic solvent (water, [0027]) at a temperature between 60°C to 500°C (claim 10). ([0038]). Also, Roman states that liquid phase reactions in the oxidation of alkanes requires methane pressures greater than 30 bar to ensure good mixing of gas and liquid (claim 10). ([0119]).
The difference between claim 1 and 12 is reference to a selectivity of the compounds or mixtures thereof of over 70%.
However, Roman discloses their catalytic reaction is highly selective for the production of methanol. For example, in some embodiments, the selectivity of the reaction for methanol is at least 50%, or at least 60%, or at least 65%, or at least 70%, or at least 75%, or at least 80%, or at least 85%, or at least 90%, or at least 95%. ([0048]).
The difference between Roman and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Roman teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
Claim Rejections - 35 USC § 103
Claim(s) 1, 2, 5, 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Geng et al. (Energy Conversion and Management, 2017).
Rejected claims 1, 2, 5 and 12 are discussed in paragraphs 15, 16 and 17 above.
Dependent claim 9 further limits the reactor to a trickle-bed reactor.
However, Geng discloses the use of a fixed bed reactor comprising a copper or cobalt catalyst in the reaction of methane with oxygen and water (page 339). Example reactions are given showing the use of the catalysts converting methane under a flow of oxygen and water (page 340, figure 2 page 342, figure 3 page 343).
The difference between Geng and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Geng teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
Claim Rejections - 35 USC § 103
Claim(s) 1 – 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (Journal of the American Chemical Society, 2019).
Rejected claims 1 and 12 are discussed in paragraphs 15 and 17 above.
The Examiner combined the rejection for claims 1 and 12 because the prior art of Roman is applicable to all claim sets, and the invention of claim 1 is not patentability unobvious from the invention of claim 12.
Dependent clam 2 further limits the metal of the metal-base catalyst. Dependent claim 3 further limits the metal of the metal-based catalyst to Pt and Ag and alloys thereof. Dependent claim 4 further limits the metal-based catalyst to platinum-based and platinum-alloy-based catalyst. Dependent claim 5 further limits the metal-based catalyst to including a support. Dependent claim 6 further limits the metal based catalyst to the group consisting of Pt/TiO2(P25), Pt/TiO2(rutile), Pt(Mo)/TiO2(rutile), Pt/Al2O3 and Pt/C. Dependent claim 9 further limits the reactor to a trickle-bed reactor. Dependent claim 10 further limits the reaction temperature and pressure. Dependent claim 11 further limits the process.
However, Song discloses (see abstract and table 1) a process for the direct and selective photocatalytic oxidation of methane to oxygenates like formaldehyde with several catalysts on several types of support. Catalysts like Pt/TiO2, Au/TiO2, Ag/TiO2 are used, but also Pd/ZnO alloy catalysts. The reaction proceeds in the presence of liquid water.(pp. 20510, 3. Results and Discussion). The reaction is carried out at room temperature. Methane under a pressure of 20 bar and O2 under pressure of 1 bar. (pp. 20510).
The difference between claim 1 and 12 is reference to a selectivity of the compounds or mixtures thereof of over 70%.
However, Song discloses:
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(pp. 20510, right col. next to last sentence).
The difference between Song and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Song teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
Regarding claim 9 which further limits the reactor to a trickle-bed reactor. The use of a trickle bed reactor is a feature a person of ordinary skill in the art before the effective filing date of the instantly claimed invention would know to use in a reaction with liquid water. Thus, this limitation is deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
With regard to recovering heat from the reactor is also something a person of ordinary skill in the art before the effective filing date of the instantly claimed invention would know to consider as an energy saver that would make the process commercially more profitable. Thus, this limitation is deemed to be obvious absent a showing of unexpected results.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35USC 103.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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