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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires “the content of phosphorus in the carrier is 0.4 to 2.0 mass% in terms of P2O5” while Claim 4 requires “phosphorus is contained in an amount of 1.0 to 5.0 mass% in terms of P2O5”. Claim 1 requires the P2O5 as a percentage of the carrier (alumina+phosphorus oxide), while Claim 4 requires the P2O5 as a percentage of the total catalyst (alumina+phosphorus oxide+active metal), however having a larger whole can only reduce the percentage of phosphorus oxide. It is therefore understood that Claim 4 broadens the scope of Claim 1 in regards to the phosphorus oxide content by allowing up to 5+ wt.% of P2O5 in the carrier. MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.).
Allowable Subject Matter
Claims 1-3 and 5-6 are allowed. The closest prior art to Claim 1 is given by US 20180207622 A1 Boualleg et al. Claim 1 requires “A heavy hydrocarbon oil hydrotreating catalyst comprising an alumina-phosphorus oxide carrier”. Boualleg et al. discloses “Said substrate has a calcined alumina content that is greater than or equal to 90 % by weight in relation to the total weight of said matrix , optionally completed by silica and/or phosphorus with a total content of at most 10 % by weight of an equivalent of SiO2, and/or P2O5” [0035]. Boualleg et al. does not disclose hydrotreating heavy hydrocarbon oils, however The phrase “A heavy hydrocarbon oil hydrotreating catalyst” is considered intended use. MPEP 2111.02.II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Here, the limitations of the claimed invention are fully set forth in the body of the claim and the intended use of hydrotreating heavy hydrocarbon oils does not suggest structural limitations.
Claim 1 further requires “a hydrogenation-active metal component supported on the carrier”. Boualleg et al. discloses “a nickel-comprising active phase” [0018]. As nickel is used in the instant invention (See Specification at [0046]) it is understood that nickel is inherently a hydrogenation-active metal component, whether recognized as such by the art or not.
Claim 1 further requires “wherein the content of phosphorus in the carrier is 0.4 to 2.0 mass% in terms of P2O5”. Boualleg et al. discloses “… optionally completed by silica and/or phosphorus with a total content of at most 10 % by weight of an equivalent of SiO2, and/or P2O5, preferably less than 5 % by weight, and in a very preferred manner less than 2 % by weight in relation to the total weight of said matrix.” [0035].
Claim 1 further requires “the carrier has a local maximum value of the differential pore volume distribution in a pore diameter range of 18 to 22 nm measured by mercury intrusion porosimetry”. Boualleg et al. discloses “The median mesopore diameter of the substrate that is used for the preparation of the catalyst according to the invention is between 14 nm and 30 nm, and preferably between 16 and 28 nm, and in a particularly preferred manner between 18 and 25 nm” [0043].
Claim 1 further requires “in the carrier, the ratio (APV/PVT) of a volume (APV) of pores having a pore diameter in a range deviating from a range of a pore diameter at the local maximum value ± 2 nm to the total pore volume (PVT) measured by mercury intrusion porosimetry is 0.50 or less”. Boualleg et al. discloses several examples in Table 1 [0191] of catalysts with a ratio (mesopore volume/PVT) of between 0.77-0.96. It is noted that Boualleg et al. considers all pores 2-50 nm as mesopores and therefore it is possible that when calculating APV/PVT wherein APV is the volume of pores ± 2 nm to the local maximum the result would be less than 0.50, however a rejection cannot be supported by such a speculation. Boualleg et al. does not disclose further information, such as an integral pore distribution diagram or a differential pore distribution diagram, by which such a calculation could be made.
Claim 1 further requires “the crystalline form of a portion of alumina in the alumina-phosphorus oxide carrier is γ-alumina.”. Boualleg et al. discloses “In a more preferred manner, the alumina is a gamma, delta, or theta transition alumina, by itself or in a mixture” [0037].
Claim 4 stands rejected under 35 U.S.C. 112(d), but would be allowable if rewritten to overcome the rejection presented.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736
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