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 .
Election/Restrictions
Claims 5-6, 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/15/2024.
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 11 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 11 recites “[t]he catalyst-sorbent structure of Claim 10…”, however, Claim 10 is cancelled. Claim 11 is therefore incomplete – see MPEP 608.01(n).
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 1-3, 4, 7, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US20200325030A1, hereinafter ‘Cussler’, in view of US3531246, hereinafter ‘Matsen’, and as evidenced by Clariant (AmoMax™ 10), and further evidenced by Gutkoski et al. (How effective is biological activated carbon in removing micropollutants? A comprehensive review, Journal of Environmental Management, 2023).
Regarding Claim 1, Cussler discloses a catalyst-sorbent structure configured for ammonia production ([0004]: “In some embodiments, the apparatus comprises a reactor having (i) an inlet to receive an inlet gas comprising nitrogen and hydrogen, (ii) a catalyst and an absorbent disposed within an internal volume of the reactor, the catalyst configured to convert the nitrogen and the hydrogen to a reaction mixture comprising ammonia, unreacted nitrogen, and unreacted hydrogen, the absorbent configured to selectively absorb a portion of the ammonia in the reactor during formation of the reaction mixture…” – this reactor configuration is considered “a catalyst-sorbent structure” as claimed), the catalyst-sorbent structure comprising:
a catalyst portion in direct contact with a sorbent portion, the catalyst portion comprising one or more active catalysts, and the sorbent portion comprising one or more sorbents ([0024]: “the reactor 104 in apparatus 100 includes both a catalyst 116 and an absorbent 118 configured in an internal volume of the reactor… by intermixing the absorbent 118 in the reactor 104 with the catalyst 116, ammonia is selectively absorbed into the absorbent during the course of the reaction, thereby reducing the prevalence of the reverse reaction and promoting further conversion of the reactants to product”; [0056]: a pre-reduced nonstoichiometric ferrous oxide (wustite) catalyst called AmoMax10 is disclosed as being used in the inventive examples – as evidenced by Clariant, AmoMax10 is a granular catalyst, i.e., it comprises a plurality of catalyst particles, wherein the particles comprise iron oxide as an active catalyst; [0053]-[0054]: sorbents are formed by grinding granular nickel chloride and silica gel in a mortar and pestle – by this is formed a plurality of sorbent particles, wherein each sorbent particle comprises one or more sorbents);
wherein the catalyst portions are configured to convert an unreacted hydrogen feedstock and an unreacted nitrogen feedstock to an ammonia product via a catalyzed reaction ([0004]: “…a catalyst…disposed within an internal volume of the reactor, the catalyst configured to convert the nitrogen and the hydrogen to a reaction mixture comprising ammonia…”);
wherein the sorbent portions are configured for the removal of the ammonia product from the catalyst portion to the sorbent portion as it forms via the catalyzed reaction ([0004]: “…an absorbent disposed within an internal volume of the reactor…the absorbent configured to selectively absorb a portion of the ammonia in the reactor during formation of the reaction mixture);
wherein the catalyst-sorbent particle has a porous configuration that facilitates gas phase mass transfer of the unreacted hydrogen feedstock and the unreacted nitrogen feedstock to the one or more active catalysts and the ammonia product from the one or more active catalysts to the one or more sorbents ([0059]: “Ammonia can be synthesized by putting a catalyst and an ammonia-selective absorbent in a small vessel…the contents of the vessel, charged with N2 and H2, would…react to produce ammonia on the catalyst, followed by desorption from the catalyst surface and diffusion to the absorbent” – diffusion in this case refers to gas phase mass transfer of the ammonia product from the one or more active catalysts to the one or more sorbents – further, as evidenced by Gutkoski, “Adsorption is a separation process that aims to bind dissolved chemical compounds in a liquid or gaseous media (adsorbate) to a porous solid (adsorbent) (Bonilla-Petriciolet et al., 2019). Adsorption occurs in three main steps: i) mass transfer of the adsorbate in the concentrated solution onto the surface of the adsorbent, ii) diffusion of the dispersed adsorbate molecules into the pores, and iii) binding of the chemical compounds onto the active sites of the adsorbent…” (3.2. Adsorption). Therefore, it is apparent, given that Cussler discloses that ammonia is desorbed from the catalyst surface, that the catalyst of Cussler has a porous configuration, since the process of adsorption inherently requires diffusion of dispersed adsorbate molecules into pores of an adsorbate – further, such pores would facilitates gas phase mass transfer of the unreacted hydrogen feedstock and the unreacted nitrogen feedstock to the one or more active catalysts, as evidenced by the instant published specification ([0020]: “The pores in relation to the active catalyst or catalyst-sorbent may be straight or tortuous and facilitate gas phase mass transfer through either molecular diffusion or Knudsen diffusion therein”).
Further regarding Claim 1, while Cussler as shown above discloses the manufacture of an intermixed catalyst-sorbent system for the simultaneous catalysis and adsorption within a process for synthesis of ammonia, Cussler does not disclose that the catalyst-sorbent structure is a unified catalyst-sorbent particle comprising a plurality of catalyst portions in direct contact with a plurality of sorbent portions configured therein.
Matsen discloses the manufacture of improved selective sorbents for driving equilibrium-controlled reactions to completion (Col 1, lines 12-16), and in particular, for improved working capacity for the formation of ammonia in the reaction of hydrogen and nitrogen (Col 3, lines 8-18). A person of ordinary skill in the art would have recognized Matsen as analogous to Cussler, as both references are drawn to the same field of endeavor as the claimed invention, selective sorbents for the improved reaction of hydrogen and nitrogen to form ammonia - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Matsen discloses impregnating a molecular sieve with a selective sorbent for ammonia such that it may drive the equilibrium reaction towards the production of product (id.). Further, Matsen discloses that in order to produce the maximum conversion to product in the reaction of nitrogen and hydrogen into ammonia, it is desirable to work at as low a temperature as is compatible with an appreciable rate of reaction. Therefore, catalysts are employed in order to expedite the process; however, in these processes the conversion is relatively low, generally ranging below and as low as 8%. Therefore, any improvement in the technique which increases the conversion will result in great material benefits. One possible method for improving the conversion in a reversible gas phase equilibrium process involves the use of a sorbent which is selective to the product, either alone or in combination with or as part of the integral composition of a catalyst. The sorbent acts by removing the product from participation in the equilibrium reaction, i.e., by lowering the product partial pressure. This drives the equilibrium reaction in the direction of forming more product (Col 2, lines 5-27).
Further, it is evident that combining a selective sorbent with the integral composition of a catalyst, thereby forming catalyst-sorbent structure is a catalyst-sorbent particle having the plurality of catalyst portions and the plurality of sorbent portions configured therein, would simplify the process of using such components – by making integral two separate components known for use in the same process, the number of process components is reduced from a two component catalytic system to a one component catalytic system, thereby simplifying the process for producing ammonia.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to combine the sorbent portions and catalyst portions of the invention of Cussler in order to form a catalyst-sorbent structure, in which a plurality of catalyst portions and the plurality of sorbent portions configured therein. Such a combination, as disclosed in Matsen, would make integral two separate components of the process of Cussler into one component, thereby simplifying and reducing the complexity of improving the activity of the hydrogen-nitrogen reaction to form ammonia. As held by the court in In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), the use of an integral component in place of the use of such components separately is a matter of obvious engineering choice, absent evidence that such a combination provides results contrary to the understandings and expectations of the art (Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)) – see also MPEP 2144.04 (V)(B).
Regarding Claim 2, Cussler as modified above discloses the catalyst-sorbent particle is in the form of a pressed pellet, tablet, extrudate, or co-located on a common monolithic structure ([0054]: the adsorbent is formed by mixing nickel chloride and silica gel in a mortar and pestle – such a mixing process is considered to form an adsorbent that has been “pressed” into pellets by the mortar and pestle, as the use of a mortar and pestle would result in compression of the adsorbent into agglomerates that would be considered pellets; [0064]: Cussler describes the catalyst as ‘pellets’).
Regarding Claim 3, Cussler as modified above discloses the catalyst-sorbent particle further comprises a porous support material comprising an oxide chosen from of alumina, silica, magnesia, ceria, titania, or combinations thereof ([0054]: the adsorbent is formulated with silica gel, which is a porous silica support – this is further evidenced by [0035], which discusses providing the adsorbent with a support such as silica),
wherein the sorbent portion and the catalyst portion are loaded and dispersed on the porous support material (the adsorbent is loaded and dispersed on the porous support material by a mortar and pestle as discussed above; in the process of Cussler as modified above, wherein the catalyst and sorbent particles are configured within the same component, both the adsorbent and the catalyst would be loaded upon the support).
Regarding Claim 4, Cussler as modified above discloses the one or more active catalysts comprises iron, cobalt, ruthenium, molybdenum, or combinations thereof (as discussed above, Cussler discloses the use of an iron oxide catalyst, which is an active catalyst comprising iron).
Regarding Claim 7, Cussler as modified above makes obvious the one or more sorbents comprises one or more zeolites, wherein the one more zeolites ([0035]: while the express use of a zeolite is not disclosed, Cussler discloses that the adsorbent may comprise a support such as a zeolite – as such, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize a zeolite support in the formulation of the nickel chloride adsorbent disclosed in the embodiments of Cussler, as the adsorbent of Cussler is disclosed to encompass adsorbents comprising zeolites, and the use of such adsorbents comprising zeolites would behave predictably in achieving the results contemplated by the invention of Cussler).
Regarding Claim 13, as modified above makes obvious a catalyst-sorbent structure further comprising a secondary sorbent portion that includes one or more metal halide adsorbents, one or more zeolites, or a combination thereof (as discussed above, Cussler makes obvious the formulation of an adsorbent within the disclosed invention comprising a zeolite and nickel chloride, a metal halide adsorbent).
Claims 8-9, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over US20200325030A1, hereinafter ‘Cussler’, in view of US3531246, hereinafter ‘Matsen’, and further in view of Cao et al. (Calcium/strontium chloride impregnated zeolite A and X granules as optimized ammonia sorbents, RSC Advances, 2022), as evidenced by Clariant (AmoMax™ 10), and further evidenced by Gutkoski et al. (How effective is biological activated carbon in removing micropollutants? A comprehensive review, Journal of Environmental Management, 2023).
Regarding Claim 8, it is noted, as discussed above, that Cussler discloses the sorption of ammonia by a sorbent comprising a metal chloride and a support that may comprise a zeolite, and further discloses that the combination of the metal halide and solid support forms a solid absorbent capable of increased absorption of ammonia as compared with the metal halide alone ([0035]).
However, Cussler as modified above does not disclose the use of one of zeolite Y, zeolite X, zeolite 4A, zeolite 5A, or ZSM-5.
Cao discloses a study regarding the use of calcium and strontium chlorides impregnated upon zeolite A and X for the optimized sorption of ammonia (title). A person of ordinary skill in the art would have recognized Cao as analogous to Cussler, as both references are drawn to the same field of endeavor as the claimed invention, the sorption of ammonia by the use of supported metal chloride adsorbents - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. Both Cussler and Cao disclose the use of metal chlorides for adsorption of ammonia including calcium chloride ([0035] of Cussler), and therefore one of ordinary skill in the art would reasonably expect the teachings and advantages as disclosed in Cao to apply to the invention of Cussler.
Further, Cussler discloses a synergistic effect resulting from the combination of such metal chlorides with zeolite A and X, disclosing that SrCl2-impregnated zeolite A granules showed a 14% increase in ammonia uptake capacity (8.39 mmol g−1) compared to zeolite A granules alone (7.38 mmol g−1), and further discloses that said composite granules showed 243% faster kinetics of ammonia sorption (0.24 mmol g−1 min−1) compared to SrCl2 alone (0.07 mmol g−1 min−1) in the first 20 min (Abstract). Further, Cao discloses the composite CaCl2/SrCl2 impregnated zeolite A granules combined the advantages of the zeolites and CaCl2/SrCl2, where the rapid physisorption from zeolites can reduce the ammonia loading and release time, and chemisorption from the CaCl2/SrCl2 offers abundant ammonia capacity (id.).
Accordingly, given that Cussler discloses the use of metal chloride adsorbents supported by zeolites, and given that Cao discloses that the combination of metal chlorides such as CaCl2 with zeolites such as Zeolite A and Zeolite X result in much greater ammonia sorption than either component could achieve alone, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize zeolite A and/or zeolite X as a support for the adsorbent of Cussler, as such a combination of materials has been shown to predictably result in improved ammonia sorption, which is disclosed by Cussler to result in increased conversion of reactants to products ([0023] of Cussler: “…by intermixing the absorbent 118 in the reactor 104 with the catalyst 116 , ammonia is selectively absorbed into the absorbent during the course of the reaction, thereby reducing the prevalence of the reverse reaction and promoting further conversion of the reactants to product”).
Regarding Claim 9, Cussler as modified above make obvious that the one more zeolites has a binding affinity for the ammonia product is at least 10 times or more greater over the unreacted hydrogen feedstock and the unreacted nitrogen feedstock (the zeolite used in Cussler in view of Cao is the same as that claimed; as such, zeolite A and X as disclosed by Cao must necessarily have a binding affinity for the ammonia product at least 10 times greater than the unreacted hydrogen feedstock and the unreacted nitrogen feedstock, as products having the same composition cannot have mutually exclusive properties – see MPEP 2112.01 (I)).
Regarding Claim 11, Cussler as modified above makes obvious at least a portion of the one or more zeolites having a desired pore size formed by ion-exchange to partially or fully replace at least a portion of one or more cations (Cao, Materials and methods: “Zeolite granules CaA and NaX… were first treated by ion exchange to replace the Ca2+ and Na+ cations with Sr2+…”; - given this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize such ion-exchanged forms of these zeolites in order to achieve the particular benefits disclosed to have been achieved by the methods of Cao).
Regarding Claim 12, while Cussler as modified above discloses the use of zeolite X and Y as claimed in Claim 8, Cussler as modified above is silent regarding the pore distribution of the zeolite; however, given that zeolite X and A having the same composition as that claimed is used in both the instant invention and the prior art, zeolite X and A, as products having the same composition cannot have mutually exclusive properties – see MPEP 2112.01 (I).
In the alternative, zeolite X and A are known to be microporous zeolites, or having pores smaller than 2 nm, or 0-20 Å. Given that zeolite X and A are expected to have pores between 0 and 20 Å, and given the molecular diameter of the ammonia product (about 4 Å) overlaps with this range, the claimed pore diameter is considered prima facie obvious over the prior art range in the absence of evidence of criticality or non-obviousness associated with the claimed pore size.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20200325030A1, hereinafter ‘Cussler’, in view of US3531246, hereinafter ‘Matsen’, and further in view of Cao et al. (Calcium/strontium chloride impregnated zeolite A and X granules as optimized ammonia sorbents, RSC Advances, 2022) and Rai et al. (Active and stable Fe-based catalyst, mechanism, and key role of alkali promoters in ammonia synthesis, Journal of Catalysis, 2021), hereinafter ‘Rai, as evidenced by Clariant (AmoMax™ 10), and further evidenced by Gutkoski et al. (How effective is biological activated carbon in removing micropollutants? A comprehensive review, Journal of Environmental Management, 2023).
Regarding Claim 14, it is noted that Cussler discloses that promoters may be added to the catalyst in order to enhance activity of said catalyst, including alkali and alkaline earth metals ([0034]).
However, Cussler as modified above does not disclose that the catalyst structure includes one or more promoter materials, the one or more promoter materials including K, Ce, Cs, or a mixture thereof.
Rai discloses a study on alkali promoters and their effect on the synthesis of ammonia in the presence of iron-based catalysts (title). A person of ordinary skill in the art would have recognized Rai as analogous to Cussler, as both references are drawn to the same field of endeavor as the claimed invention, the catalytic synthesis of ammonia - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Rai discloses analysis of the catalytic performance of catalysts prepared with various alkali metals – importantly, Rai discloses significant improvement in the catalytic performance observed in the samples with alkali metals, with respect to the sample prepared without promoters, and that the best performances are observed for the catalyst promoted with K and Cs (3.2.2. Effect of different alkalis). As such, it is apparent that the presence of alkali promoters such as K and Cs significantly improves the catalytic performance of iron-based ammonia synthesis catalysts.
Accordingly, given that Cussler discloses the use of alkali promoters to promote catalytic activity, and given that Rai discloses significant catalytic improvement in iron-based catalysts analogous to those used in Cussler by the addition of Cs and K, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to add Cs and/or K promoters to the catalyst portion of Cussler, as such an addition has been shown by the prior art to predictably result in improved catalysis of ammonia synthesis, which would thereby improve the yield and conversion of ammonia synthesis in the process of Cussler.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20200325030A1, hereinafter ‘Cussler’, in view of US3531246, hereinafter ‘Matsen’, and further in view of Cao et al. (Calcium/strontium chloride impregnated zeolite A and X granules as optimized ammonia sorbents, RSC Advances, 2022) and Ueda et al. (Effect of Confinement on the Fluid Properties of Ammonia in Mesopores of MCM-41 and SBA-15, Langmuir, 2008), hereinafter ‘Ueda’, as evidenced by Clariant (AmoMax™ 10), and further evidenced by Gutkoski et al. (How effective is biological activated carbon in removing micropollutants? A comprehensive review, Journal of Environmental Management, 2023).
Regarding Claim 15, it is noted that Cussler, as discussed above, discloses the use of porous adsorbents that may include zeolites in the selective sorption of ammonia.
However, Cussler does not disclose that the catalyst-sorbent structure includes a porous structure having an average pore diameter between about 20 nm and about 5 microns.
Ueda discloses a study regarding the effect of pore size on capillary condensation and solid−liquid phase changes of ammonia in mesopores of MCM-41 and SBA-15, which are zeolite materials – namely, the adsorption properties of these materials were characterized through adsorption and FTIR measurements to characterize the adsorption properties of these materials in the context of ammonia adsorption (Abstract). A person of ordinary skill in the art would have recognized Cussler as analogous to Ueda, as both references are drawn to the same field of endeavor as the claimed invention, the adsorption of ammonia - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. Namely, Ueda is analogous to Cussler in that it demonstrates how the pore size of an adsorbent material influences its ability to adsorb ammonia, and such relationships, while established in Ueda using MCM-41 and SBA-15, are not exclusive to such materials and are applicable to any porous sorbent for adsorption of ammonia, in that the physical mechanisms being explored in Ueda are mutual to the fundamental process of adsorption of ammonia on a porous adsorbent.
In particular, Ueda discloses that the average pore diameter of an adsorbent has a direct effect on the mechanism and characterization of ammonia adsorption, and influences phenomena such as capillary condensation, in which ammonia is condensed within the pores of an adsorbent, and the amount of ammonia that an adsorbent can take into its pores. Ueda discloses that, in pores smaller than 2.4 nm, no hysteresis loops occur (Abstract) – a hysteresis loop is a phenomenon shown by an adsorption isotherm graph where the amount of a gas adsorbed is different from the amount of gas released upon desorption. In these 2.4 nm pores, then, it is evident that, if no hysteresis loop occurs, the amount of ammonia released is equal to the amount of ammonia adsorbed, and therefore no ammonia has condensed within the pores such that the ammonia has been effectively adsorbed. However, in larger pores having a diameter greater than 2.4 nm, capillary condensation is disclosed as occurring, resulting in a hysteresis loop and by extension retention of condensed ammonia within said pores (Conclusions). Evidently, if larger pores exhibited such condensation and smaller pores did not, the findings of Ueda establish a clear relationship between the average pore size of an adsorbent and its capacity to retain, or effectively adsorb, ammonia within said pores.
Accordingly, as the ammonia adsorption capacity of an adsorbent is a variable that can be modified, among others, by adjusting the size of pores within an adsorbent, the precise average pore size of the adsorbent used in Cussler would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed range cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the precise average pore size of the adsorbent used in Cussler in order to obtain the desired ammonia adsorption capacity of the adsorbent, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). Such a modification would include values greater than 2.4 nm as disclosed by Ueda, and would render obvious the inclusion of a porous structure having an average pore diameter between 20 nm and about 5 microns.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-11, 13, and 14 of copending Application No. 19195102 (reference application) in view of US20200325030A1, hereinafter ‘Cussler’, and US3531246, hereinafter Matsen’.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims encompass the same subject matter as the instant invention. Particularly, as modified by Cussler and Matsen, the claims of the reference application make obvious the following claims of the instant application (in the format: “instant claim: teaching in reference claims):
Claim 1: Claims 7, 13, 14, and modified by Cussler (the use of a porous adsorbent is obvious for such a process, as shown above) and Matsen (integrating the sorbent and catalyst portions into an integral component is obvious).
Claim 2: Claim 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, filed 02/27/2026, are acknowledged.
With respect to arguments in regard to prior art rejections under section 103, Applicant’s arguments have been fully considered but are not persuasive. These rejections, as repeated above, are maintained.
Applicant argues that Matsen never actually describes or suggests unified particles containing both sorbent and catalyst (Remarks, page 7). This is not persuasive – the passage relied upon from Matsen in the rejection above is repeated: “One possible method for improving the conversion in a reversible gas phase equilibrium process involves the use of a sorbent which is selective to the product, either alone or in combination with or as part of the integral composition of a catalyst.” Use of a sorbent as “part of the integral composition of a catalyst” is a clear description of a unified catalyst-sorbent composition as claimed, contrary to the assertion of Applicant.
To the degree that Applicant implicates the age of the cited references (“Matsen, in 1967…57 years of experience in the art of ammonia generation later, Cussler files…”, pages 7-8), contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
Applicant argues that the teachings of Cussler provide good reasons to not combine sorbent and catalyst into a unified particle on account of its teaching that catalyst activity declines over time: “If the catalyst were integrated into a unified particle with the sorbent, the sorbent would be removed from the system at the same time as the degraded catalyst, or the recycling process would require more complex steps than would be needed if the catalyst was removable on its own.” (Remarks, page 8). This is not persuasive, as this conclusion is not actually supported by the reference, as Cussler does not actually criticize, discredit, or otherwise discourage the solution as claimed – the passage relied upon by Applicant to show a teaching away merely discloses that catalyst activity decreases over time, a fact that does not necessarily imply anything about unified catalyst sorbent particles as claimed. "…the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). The assertion that Cussler teaches away from the claimed product is therefore without evidence, and is not persuasive – see MPEP 2145.
Applicant presents the disclosures of Smith and Ojha as evidence that the prior art teaches away from systems where catalyst and sorbent are combined (Remarks, page 8-9). Upon consideration of these references, the arguments are not considered persuasive. At most, Smith and Ojha identify known design considerations associated with catalyst/adsorbent proximity, including material compatibility, water sensitivity, degradation, and possible reverse reaction effects under certain operating conditions. Such disclosures do not directly criticize, discredit, or otherwise discourage the solution as claimed, nor do they negate the express teachings of the cited prior art that a sorbent may be present as an integral part of the catalyst composition to remove ammonia during formation and shift equilibrium toward product formation. The presence of known engineering tradeoffs does not necessarily amount to a general teaching away from the claimed solution.
In response to applicant' s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application' s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 9:30-5:30 PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LOGAN LACLAIR
Examiner
Art Unit 1736
/LOGAN LACLAIR/Examiner, Art Unit 1738
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights