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 .
Applicants’ Preliminary Amendment, filed on April 19, 2024, has been made of record and entered. In this amendment, the Specification has been amended to include the PCT international application information, claims 3, 5, 7, 9, and 10 have been amended to eliminate multiple claim dependency, claim 4 has been amended to remove range-within-range limitations, and new claims 11-14 have been added.
Claims 1-14 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on April 19, 2024.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0001] of Applicants’ Specification, in the last line therein, “in its entirely” should be amended to recite “in its entirety”.
Appropriate correction is required.
Claim Objections
Claims 1, 2, 6-8, and 10-14 are objected to because of the following informalities:
In claim 1, “90-97wt%”, “2-6wt%”, and “1-4wt%”, should respectively be amended to recite “90-97 wt%”, “2-6 wt%”, and “1-4 wt%”.
In claim 2, “93-95wt%”, “3-4wt%”, and “2-3wt%”, should respectively be amended to recite “93-95 wt%”, “3-4 wt%”, and “2-3 wt%”.
In claim 6,”300m2/g” and “0.45mL/g” should respectively be amended to recite ”300 m2/g” and “0.45 mL/g”.
In claim 7, “75nm is 35vol%” should be amended to recite “75 nm is 35 vol%”.
In claim 8, “75nm is within the range of 35-55vol%” should be amended to recite “75 nm is within the range of 35-55 vol%”.
In claim 10, “1,000-5,000h-1” should be amended to recite “1,000-5,000 h-1”.
Additionally, in line 1 of claim 10, “natural gas” should be amended to recite “raw natural gas” to ensure continuity with “contacting the raw natural gas” in line 2 therein.
In claims 12 and 13, “Al2O3” should be amended to recite “Al2O3”.
Additionally, in claim 12, a period (“.”) should be added after “(3-4):(0.4-0.5)”.
Additionally, in claim 13, “0.5wt%” and “90wt%” should respectively be amended to recite “0.5 wt%” and “90 wt%”.
In claim 14, “CO2/g catalyst” should be amended to recite “CO2/g catalyst”.
Appropriate correction is required.
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.
Claim 9 is 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.
Claim 9 is indefinite for lacking antecedent basis for the limitation “in removing the carbonyl sulfide”. Claim 1, from which claim 9 depends, does not recite “carbonyl sulfide”.
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.
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 1-3, 5-9, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 1272103; English translation provided and relied upon by the Examiner).
Regarding claims 1, 2 and 5, Li et al. teach a catalyst comprising an alumina support, and as oxides, 0.5-8 wt. % (or 1-6 wt. %) of a component selected from, inter alia, nickel, 2-15 wt. % (4-12 wt. %) of molybdenum and/or tungsten, and greater than 2-8 wt. % (or 2.5-6 wt. %) of an alkali metal, with the balance being the alumina support. By taking the lower endpoints of these components, the amount of alumina support present in the catalyst is 95.5 wt. % (100-0.5-2-2). Li et al. further teach potassium as a preferred alkali metal (“alkali metal oxide is…an oxide of potassium”), and teach that the alumina support is a transition phase alumina selected from one or more of, inter alia, χ-alumina and η-alumina. See paragraphs [0017] and [0021]-[0023] of Li et al.
Regarding claims 3 and 11, Li et al., in Table 1 therein, exemplary catalysts comprising nickel oxide and potassium oxide, wherein (a) the amounts of potassium oxide are greater than that of nickel oxide (Examples 1, 2, and 4), and (b) the difference between the amounts of potassium oxide and of nickel oxide are 0.7 wt. % and 2.3 wt. % (Examples 1 and 2).
It is noted that the percentage ranges for nickel oxide and for potassium oxide disclosed in Li et al. respectively encompass the percentage ranges recited in Applicants’ claims. “A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prime facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also MPEP 2144.05(I).
While Li et al. teach the presence of molybdenum and/or tungsten (as oxides) in the catalyst disclosed therein, it is noted that Applicants’ claims in their present form recite the term “comprising”, which does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I).
Regarding claims 6-8 and 14, it is considered that because Li et al. teach a catalyst structurally reading upon that instantly claimed, the skilled artisan would have been motivated to reasonably expect the catalyst disclosed in this reference to exhibit the claimed properties of specific surface area, pore volume, pore structure, sum of pore volumes of pores having a diameter larger than 75 nm, and content of weakly alkaline centers in values respectively comparable to that instantly claimed, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2112.01(I).
Regarding claim 9, it is noted that because Li et al. teach a catalyst reading upon that instantly claimed, the claim limitation “composition comprising the catalyst of claim 1” is considered met by the catalyst disclosed in Li et al., as discussed above. Further, the claim limitation “for use in removing the carbonyl sulfide” is considered a statement of intended use.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Li et al. do not explicitly teach or suggest the limitations of Applicants’ claims that “at least part of the carrier is AlO(OH), χ-Al2O3, and η-Al2O3 phases”, as recited in claim 1. However, Li et al., in paragraph [0024], teach that the alumina, which is a transition phase alumina selected from one or more of, inter alia, χ-alumina and η-alumina, may be prepared from alumina monohydrate (“AlO(OH)”). From this teaching, the skilled artisan would have been motivated to reasonably expect that, as a result of the preparation of the alumina support from alumina monohydrate, traces of alumina monohydrate would be present in the resultant alumina support, absent the showing of convincing evidence to the contrary.
Allowable Subject Matter
Claims 4, 12, and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 10 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 4, 12, and 13 are objected to, as the cited references of record do not teach or suggest the limitations of these claims, regarding the weight ratios or the respectively claimed contents of AlO(OH), χ-Al2O3, and η-Al2O3. Regarding claim 10, the cited references of record do not teach or suggest Applicants’ claimed method recited therein, regarding the removal of carbonyl sulfide in natural gas via contact of said natural gas with a desulfurizing agent, followed by performing a separation step to obtain a product natural gas and H2S.
Exemplary prior art includes:
Bryden et al. (U. S. Patent Publication No. 2011/0059844), which teaches porous body precursors and shaped porous bodies prepared therefrom, comprising a precursor alumina blend comprising precursor aluminas, examples of which include eta-alumina, chi-alumina, and aluminum oxide hydroxides. Bryden et al. further teach the feasibility in the aforementioned shaped porous bodies serving as catalysts supports; further, this reference teaches that, in the precursor alumina blend, when comprising more than two precursor aluminas, exhibits ratios of from about 1:1:1 to about 100:1:1, which is outside the ratios recited in Applicants’ claims 4 and 12 (see paragraphs [0007], [0026], [0032], [0034], and [0054] of Bryden et al.); and
Takatsu et al. (U. S. Patent Publication No. 2006/0108262), which teaches a method for removing sulfur compounds contained in a hydrocarbon-containing gas (e.g., natural gas), wherein the hydrocarbon-containing gas contains carbonyl sulfide, and the method includes contacting the hydrocarbon-containing gas with a desulfurizing agent under desulfurizing conditions including a temperature ranging from -20 to 100°C and a gas hourly space velocity (“hourly volumetric space velocity”) ranging from 100 to 1,000,000 h-1, more preferably 100 to 30,000 h-1, followed by contacting the desulfurization-treated hydrocarbon-containing gas with either a partial oxidation reforming catalyst, an autothermal reforming catalyst, or a steam reforming catalyst, whereby the gas is subjected to partial oxidation reforming, autothermal reforming or steam reforming to produce hydrogen. See paragraphs [0055]-[0058] of Takatsu et al.
Takatsu et al. further teach that the desulfurizing agent comprising at least one selected from a metal element, a metal oxide and a metal component-carried oxide is employed (Abstract; paragraph [0012]), said desulfurizing agent having a higher desulfurizing performance to carbonyl sulfide (paragraph [0013]) and comprising at least one metal selected from, inter alia, nickel, and alkaline metals including potassium and sodium (paragraphs [0017], [0035]). The desulfurizing agent is preferably carried on a carrier, examples of which include alumina (paragraph [0037]). The content of the total metals (reduced to oxide) present in the desulfurizing agent usually ranges from 5 to 90 mass %, and the content of the carrier usually ranges from 95 to 10 mass %; see paragraph [0039] of Takatsu et al.
In paragraphs [0047]-[0048] of Takatsu et al., preparation of a silver-carried desulfurizing agent comprising alumina as a carrier is disclosed, wherein the alumina “includes aluminas of a…χ type and a η type”, wherein “the χ type and a η type are preferably used.” However, Takatsu et al. do not teach or suggest the presence of an AlO(OH) phase in the carrier.
While Takatsu et al. teach a method comparable to that instantly claimed, regarding the removal of carbonyl sulfide from a hydrocarbon-containing gas (e.g., natural gas) via contact of said gas with a desulfurizing agent, this reference does not teach or suggest Applicants’ claimed step of “performing a separation to obtain the product natural gas and H2S”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 September 14, 2026
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