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 Objections
Claims 8 and 16 are objected to because of the following informalities: In lines 2 and 3 of claim 8, and line 5 of claim 16, “is consisted of” should be “consists of”. Appropriate correction is required.
Use Claims
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 20 and 22 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 20 and 22 provide for the use of a composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claims 20 and 22 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
In order to overcome this rejection, it is advised that the applicant change “use” language in Claims 20 and 22 to “A process for…” and add process steps.
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 1-18 and 20-22 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.
In claims 1-2, 4-7, 10, 12, 14, 16-18, 22, and their dependent claims, the terms “preferably”, “more preferably”, and “particularly preferably” render the claims indefinite, since it is unclear whether the limitations following these terms are part of the claim. For the purposes of examination, the limitations following the terms have been disregarded.
In claim 15 the term “such as” similarly renders the claims indefinite. The term “and the like” is also indefinite since it is unclear what compounds qualify as being like the specifically recited compounds.
Claims 7, 9-10, 12, 16-17, and their dependent claims use improper Markush language. “or combinations thereof” should be replaced by “and combinations thereof” in order to properly define the members of the group.
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 1-6, 12-15, and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou (U.S. PG Pub. No. 2007/0158236).
In paragraph 25 Zhou discloses bimetallic catalyst precursors including a plurality of molybdenum atoms and a plurality of atoms of a secondary transition metal such as cobalt. Molybdenum is a Group VIB metal, meeting the limitations of M1 and M2 metals of claim 1 and 4, and cobalt is a Group VIII metal, also meeting the limitations of M1 and M2 of claims 1 and 4. In paragraph 33 Zhou discloses that the secondary transition metal can be other metals meeting the limitations of the M1 and M2 metals of claims 1 and 4. In paragraph 30 Zhou discloses that the catalyst precursors are manufactured by reacting the metals with a plurality of organic agent molecules, and in paragraphs 36-37 Zhou discloses that the organic agent molecules can be various carboxylic acids, leading to the formation of organic ligands meeting the limitations of the R(COO)x ligands of claim 1 where x is 1, as well as meeting the limitations of the organic carboxylic acids of claim 5. In paragraph 34 Zhou discloses that the secondary transition metal can be divalent, and in paragraphs 41 and 57-58 teaches that the molybdenum can be reduced to an average oxidation of between 3 and 4, leading to bimetallic catalyst precursors where the value of b is between 2 and 4 depending on the ratio of molybdenum to secondary transition metal, within the range recited in claim 1. Zhou teaches that the reduction of the molybdenum also reduced the number of molybdenum oxides present in the product, indicating that the value of a falls within the range recited in claim 1. The bimetallic catalyst precursor of Zhou therefore meets the compositional limitations of claims 1 and 4-5, and will therefore possess the IR peaks recited in claims 1 and 3. While Zhou refers to the compound as a “catalyst precursor”, it meets the compositional and structural limitations of the claimed catalyst. Claims 1 and 3-5 are therefore anticipated by Zhou.
In examples 3-9 (paragraphs 79-98) Zhou discloses the preparation of catalyst precursors having metal contents within the range recited in claim 6. Zhou discloses in these examples and in paragraphs 43-47 that the catalyst precursors can be prepared by first reacting a molybdenum source with a carboxylic acid, and then adding the secondary transition metal to the reaction mixture along with additional acid, which will result in at least some of a bimetallic catalyst precursor product having the structure recited in claim 2, rather than just a mixture of metal salts.
In paragraphs 61-65 Zhou discloses that the bimetallic catalyst precursor can be mixed with a hydrocarbon diluent. Hydrocarbons must be aliphatic or aromatic, and therefore meet the limitations of ether the aliphatic or aromatic hydrocarbons of the organic solvent of claim 12. Additionally Zhou discloses in examples 3-9 methods of preparing the bimetallic catalyst precursor where a stoichiometric excess of 2-ethylhexanoic acid is reacted with a divalent metal oxide, which will lead to products where some free acid is still present, meeting the limitations of the organic ligand of claim 12 and having peaks in the ranges recited in claim 13 since the bimetallic catalyst precursor of Zhou meets the structural limitations of the claimed catalyst composition. In Example 3 (paragraphs 79-80), 0.91 g of cobalt(II) hydroxide (0.0098 mol) is reacted with 5.4 g of 2-ethylhexanoic acid (0.037 mol); if the formation of cobalt(II) 2-ethylhexanoic acid is assumed to proceed to completion, about 2.6 g of ethylhexanoic acid will be left over, out of a total of 21.31 g of materials charged in the reaction mixture of paragraph 80 (15.0 g molybdenum 2-ethylhexanoate is included in addition to the cobalt(II) hydroxide and 2-ethylhexanoic acid), for an organic ligand percentage of about 12%, within the range recited in claim 14 and leading to a catalyst precursor concentration of about 88%, also within the range recited in claim 14.
In paragraph 13 Zhou discloses that the bimetallic catalyst precursor can form a catalyst in situ for use in hydrocracking heavy oil, and in paragraph 29 indicates that the heavy oil can include various residual oils and bottoms which are mixtures that comprise unsaturated hydrocarbon compounds, as recited in claim 15. While Zhou refers to the bimetallic compound as a catalyst precursor, Zhou discloses in examples 10-12 (paragraphs 99-101) that the catalyst precursor is brought into contact with the heavy oil, meeting the method limitation of claim 15, as well as the hydro-upgrading of heavy oils recited in claim 20. Zhou discloses in the examples that the reaction takes place under heating conditions in the presence of hydrogen, as recited in claim 21.
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.
Claims 7-11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou.
The discussion of Zhou in paragraph 10 above is incorporated here by reference. Zhou discloses a bimetallic catalyst precursor meeting the limitations of claim 1. In paragraphs 43-47 Zhou discloses that the bimetallic catalyst precursor is prepared by reacting molybdenum with an organic agent at an elevated temperature to produce a molybdenum salt, meeting the limitations of steps (1) and (2) of claim 7, and reacting a secondary transition metal with an organic agent at a second temperature. In paragraph 46 Zhou discloses that the temperature of the reaction mixture comprising the molybdenum salt can be adjusted to a temperature suitable for the reaction with the secondary transition metal before the secondary transition metal is added, in which case the period prior to the addition of the secondary transition metal meets the limitations of step (3) of claim 7 and adding the secondary transition metal meets the limitations of step (4) of claim 7. Collecting the product, as in examples 3-9 (paragraphs 79-98) meets the limitations of step (5) of claim 7. As discussed regarding claim 1 above, the molybdenum and secondary transition metal of Zhou meet the limitations of the first and second metal sources of claim 7, and the carboxylic acids used as the organic agent of Zhou meet the limitations of the organic ligand of claim 7.
In paragraphs 44-45 Zhou discloses that the reaction of the molybdenum compound and organic agent preferably takes place at a temperature of 100 to 350° C, overlapping the range recited for T1 of claim 7, and the reaction of the secondary transition metal and organic agent preferably takes place at 50 to 200° C, more preferably about 100 to 150° C, overlapping or falling within the range recited for T2 of claim 7. In paragraph 53 Zhou discloses that the molar ratio of molybdenum to the organic agent overlaps the range recited in claim 7, and in the examples Zhou discloses examples where the molar ratio of organic agent to metal falls within the range recited in claim 7. For example, in Example 4 (paragraphs 81-83), Zhou discloses a method using 10.0 g molybdic acid (0.062 mol), 3.0 g cobalt hydroxide (0.032 mol), and 45.3 g 2-ethylhexanoic acid (0.314 mol), which leads to a molar ratio of organic agent to metal of about 3.34 (0.314 / 0.094).
The mixture obtained from the first reaction does not require any components other than the molybdenum source and the carboxylic acid, meeting the limitations of claim 8 where the mixture consists of the metal source and the organic ligand compound. In paragraphs 32-34 and the examples, Zhou discloses that the metal sources can be various classes of metal compounds recited in claim 9, such as metal chlorides, oxides, hydroxides, nitrates, and sulfates. In paragraph 48 Zhou discloses that the molar ratio between the molybdenum and the secondary transition metal can be in ranges encompassing or overlapping the range recited in claim 11.
In Examples 10-12 (paragraphs 99-101) Zhou discloses hydrocracking reactions carried out at a temperature of about 440° C (about 825° F), and a pressure of about 15.17 MPa (2200 psig), within the ranges recited in claim 22.
The differences between Zhou and the currently presented claims are:
i) Some of the ranges of Zhou overlap or encompass the claimed ranges rather than falling within them.
ii) Zhou does not specifically disclose the liquid hourly space velocity (LHSV) or the hydrogen-to-oil volume ratio of claim 22.
With respect to i), see MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 7-9 and 11 are therefore rendered obvious by Zhou. Additionally, since claim 10 only limits claim 7 or the case where a dispersion of the metal source is used, claim 10 is also rendered obvious for the case where he metal source is not used as a dispersion.
With respect to ii), "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Additionally, case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In this case, one of ordinary skill in the art would understand the LHSV and hydrogen-to-oil ratio to affect the functioning and outcome of the process of Zhou, and optimizing those parameters would be within the scope of ordinary skill in the art. Claim 22 is therefore also rendered obvious by Zhou.
Allowable Subject Matter
Claims 16-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 16 and its dependent claims recite a composition comprising a hydrogenation catalyst, a dispersion medium, and an activator, where the activator is a sulfur-containing compound. Zhou, however, discloses that the catalyst precursor is activated in situ by the sulfur present in the heavy oil being hydrotreated, and one of ordinary skill in the art therefore would have no motivation to include the catalyst precursor of Zhou in a composition comprising a dispersion medium and an activator. It is noted that the inclusion of the catalyst precursor and diluent in a heavy oil, in accordance with Zhou, would not meet the claim limitations, since Zhou discloses in paragraph 65 that the catalyst precursor is present in the diluent in an amount far less than the lower bound of the claimed range (noting that the catalyst precursors of Zhou have a metal content of about 12 to 18% by weight), and the catalyst precursor concentration will be even lower once added to the heavy oil. The prior art does not disclose or render obvious an unsupported catalyst composition comprising a catalyst (or catalyst precursor) meeting the limitations of the claimed catalyst, a dispersion medium, and a sulfur-containing activator in the concentrations recited in claims 16-18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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