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 Objections
Claims 12 and 19 are objected to because of the following informalities: the claims use the phrase “consisted of” which should be amended to “consists of”. Appropriate correction is required.
Use Claims
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 18, 23 and 25 provide for the use of an unsupported catalyst 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.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 18, 23 and 25 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 18, 23 and 25 to "A process for..." and add process steps.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-3, 5, 7-11, 13, 15, 17-21 and 25 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, 10-11, 13, 15 and 19-20, there is improper Markush language. "or combinations thereof" should be replaced by "and combinations thereof" in order to properly define the members of the group.
In claims 2-3, 5, 7-11, 13, 15, 17, 19-21 and 25, the term "preferably" and “more 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 18, 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.
Claim Rejections - 35 USC § 102/103
9. 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.
10. 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.
11. 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.
12. Claims 1-18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhou et al., US Patent Application Publication No. 2007/0158236 (hereinafter referred to as Zhou).
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.
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 where X is 1, as well as meeting the limitations of the organic carboxylic acids.
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.
Zhou teaches that the reduction of the molybdenum also reduced the number of molybdenum oxides present in the product. The bimetallic catalyst precursor of Zhou therefore meets the compositional limitations of claim 1, and will therefore possess the IR peaks recited in claim 1. While Zhou refers to the compound as a "catalyst precursor", it meets the compositional and structural limitations of the claimed catalyst.
In examples 3-9 (paragraphs 79-98) Zhou discloses the preparation of catalyst precursors having metal contents within the range recited in the instant claims. 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, 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. 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.
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%, and leading to a catalyst precursor concentration of about 88%.
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. 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, as well as the hydro-upgrading of heavy oils. Zhou discloses in the examples that the reaction takes place under heating conditions in the presence of hydrogen.
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, 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. Collecting the product, as in examples 3-9 (paragraphs 79-98).
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, and the reaction of the secondary transition metal and organic agent preferably takes place at 50 to 200° C, In paragraph 53, Zhou discloses that the molar ratio of molybdenum to the organic agent, and in the examples Zhou discloses examples where the molar ratio of organic agent to metal falls. 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.
In paragraphs 32-34 and the examples, Zhou discloses that the metal sources can be various classes of metal compounds, 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 recited in the instant claims. 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).
Claim Rejections - 35 USC § 102/103
13. Claims 1-21 and 23-25 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang et al., Chinese Publication No. CN107866278A (hereinafter referred to as Wang).
Regarding claims 1-21 and 23-25, Wang discloses (see description, paragraphs 5-38, and figure 1) a residual oil hydrocracking catalyst and a preparation method therefor, comprising: (1) a hexavalent molybdenum source compound (wherein molybdenum is a VIB group metal) is dissolved with a solvent and dispersed, an inorganic acid catalyst is added and then C1-5 organic acid is added for reaction, the solvent being toluene water ethanol or petroleum ether; (2) C6-C16 organic acid (i.e., an organic ligand) is added to the product of step(l) (disclosing a metal source or a dispersion system therefor, the metal source being selected from a metal oxyacid and a metal inorganic salt), and reaction is carried out at a temperature of 160-320°C for 2-22 hours; and (3) separation is performed on the product of step (2) and distillation is performed to obtain a product organic molybdenum salt. Reference is made to figure 1 for an infrared spectrum. Mo atom is bonded with RCOO'. Figure 1 shows that the infrared spectrum of the catalyst has characteristic peaks at 700-1000 cm-1, 450 cm-1, and 500-1610 cm-1.
The solution a VIB group metal, or a metal oxyacid and inorganic salt thereof, the solutions "the metal source is selected from a metal oxyacid, an inorganic salt", "a VIB group metal" and "the organic ligand is selected from a C4-C20 organic carboxylic acid", and the solution "the dispersion medium is selected from water, ethanol, toluene, petroleum ether", the solution "the hydrocarbon-containing raw material is a mixture containing an unsaturated hydrocarbon compound".
See description and paragraph 12 the organic molybdenum salt has good solubility in hydrocarbon oil, and is sulfurized as a precursor and then used as a catalyst, so as to improve hydrogenation reaction activity, thereby inhibiting coking in reaction. In view of the content above, a person skilled in the art would easily select catalyst-related parameters in actual operations.
Double Patenting
14. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
15. Claims 1-21 and 23-25 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 and 20-22 of co-pending application No. 18/698,150. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '150 application discloses the same limitations as does the instant application and would therefore have been obvious in light of the disclosures discussed above that are incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Conclusion
16. There were unused X references from the ISR report. The examiner is of the position that the prior art cited adequately reads on the claims as instantly recited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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