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 § 102/103
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.
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.
Claims 1-15 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 Didillon et al., US Patent No. 6,033,556 (hereinafter referred to as Didillon).
Regarding claims 1-15, Didillon discloses a scavenging mass (capture mass) comprising an active phase based on at least one of copper, molybdenum, tungsten, iron, nickel, and cobalt, at least partially in reduced form, and a porous support chosen from alumina (see abstract, col 7, example 1, col 8, example 2 and col 12, example 13).
Didillon discloses the limitation of claim 1. Didillon further discloses wherein the scavenging mass (capture mass) comprises nickel at a concentration of 20 wt.% (see col 7 example 1, and col 8, example 2).
Didillon discloses the limitation of claim 1. Didillon further disclose wherein total pore volume of said scavenging mass is greater than or equal to 0.6 ml/g (see col 4 lines 40-50) and the BET specific surface area of said scavenging mass is at least 120 m²/g.
Didillon does not disclose wherein the total pore volume of said scavenging mass is greater than or equal to 0.3 ml/g to about 0.6 ml/g and wherein the BET specific surface area of said scavenging mass is at least 40 m²/g to about 120 m2/g.
Didillon overlaps the claimed range with sufficient specificity, as the Applicant range is broad like the Didillon range. When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed.
Claim Rejections - 35 USC § 102/103
Claims 1-15 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 Park et al., US Patent Application Publication No. 2017/0001863 (hereinafter referred to as Park).
Regarding claims 1-15, Park discloses a process for preparing a mass comprising an active phase based on at least one group VIII, IB or IIB metal, at least partially in reduced form, and a porous support chosen from alumina (see figure 2), said mass having been obtained by at least the following steps:
a) bringing into contact said porous oxide support with at least one metal salt comprising at least one group VIII, IB or IIB metal for which the melting point of said metal salt is between 20 and 150°C to form a solid mixture, the mass ratio between said metal salt and said porous oxide support being between 0.1 and 2.5 (see paragraph 0074, 0079 and 0090);
b) heating the solid mixture obtained on conclusion of step a) stirring to a temperature between the melting point of said metal salt and 200°C to obtain a scavenging mass precursor (see paragraph 0074, 0079 and 0082);
e) reducing the solid obtained on conclusion of step b) to obtain said mass (see paragraph 0075).
Park further discloses wherein said metal salt is a hydrated nitrate salt (see paragraph 0079), such as nickel nitrate hexahydrate (see paragraph 0079). Park further discloses wherein mass ratio of said metal salt to the porous support is between 0.1 and .8 (see paragraph 0090). Park does not disclose wherein mass ratio of said metal salt to the porous support is between 0.9 and 2.
If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. V. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina V. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
Double Patenting
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.
Claims 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 10-24 of co-pending application No. 17/784,768. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '768 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above 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.
Double Patenting II
Claims 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-12 of co-pending application No. 18/718,860. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '860 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above 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.
Double Patenting III
Claims 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of co-pending application No. 18/720,507. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '570 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above 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.
Double Patenting IV
Claims 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of co-pending application No. 18/720,522. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '522 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above 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
There was an unused X reference 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