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 § 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 2-15 and 16-20 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 this case, claim 16 recites a “second catalyst”, but instant claim does not describe what is “second catalyst”, nor describes the relationship between such claimed “second catalyst” as compared to the claimed “first catalyst”, such as “second catalyst” being same or different as compared to “first catalyst”. The instant specification has not provided a clear explanation what’s the difference between first catalyst as compared to second catalyst either. Therefore, such limitation renders claim indefiniteness. All claim 16’s depending claims are rejected for similar reasons.
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.
Claims 16-20 and 2-15 are rejected under 35 U.S.C. 103 as obvious over Hossain et al. (US11819825) in view of Loganathan (US2021/0205789) and Bai (Modulation of surface chemistry by boron modification to achieve a superior VOX/Al2O3 catalyst in propane dehydrogenation, Catalysis Today 402 (2022), page 248–258).
Hossain et al. teaches a method for producing propylene via oxidative dehydrogenation of propane comprising (col. 4 lines 47-49, Fig. 2 B, col. 13 lines 8-60):
introducing a feed gas stream containing CO2 and propane into a reactor containing an active catalyst composition, passing the feed gas stream through the reactor in the presence of the active catalyst composition at a temperature of 300 to 900° C to convert at least a portion of propane to propylene and produce a propylene-containing gas stream leaving the reactor, wherein the active catalyst composition contains a first vanadium catalyst vanadium oxide (VOx) particles embedded in the at least one support and a second vanadium catalyst (claim 1, col. 2 lines 24-51, Fig. 2A, col. 8 lines 56-66). Hossain et al also teaches the at least one support including one or both of a smectite clay and a metal oxide which comprises at least one selected from the group consisting of magnesium oxide (MgO), aluminum oxide (Al2O3), and titanium oxide (TiO2) (claim 8, col. 3 lines 19-21), and a weight ratio of the at least one support to the vanadium oxide precursor is in a range of 100:1 to 10:1.
Regarding claim 16, Hossain et al. does not expressly teach the aluminum oxide support size being 5 to 100 micrometers (µm), or the first catalyst particles comprising boron oxide.
Loganathan teaches microsphere support, specifically alumina support with particle size range of 20-150 µm can be used supporting vanadium catalyst for alkane dehydrogenation (para. [0030], [0031], [0037], [0055], claim 1).
It would have been obvious for one of ordinary skill in the art to adopt such well-known particle size as shown by Loganathan to modify the alumina containing support of Hossain et al. because adopting a well-known technique of a support size being 20-150 µm to modify a well-known process of forming vanadium containing oxidative dehydrogenation catalyst for improvement would have predictable results (see MPEP §2143 KSR).
Bai teaches using boric acid as precursor to modify a vanadium oxide wherein the obtained catalyst comprising boron oxide particles presented together with vanadium oxide wherein such boron oxides can improve alumina supported vanadium oxidative dehydrogenation catalyst stability and propylene selectivity (section 2.1, 2.2, 3.1, Fig. 1 and 6, page 252 left col. first para., and page 252 last para., page 253 right col. first para., page 254 left col. last para.-right col. first para., page 256 right col. first para.).
It would have been obvious for one of ordinary skill in the art to adopt boron oxide particles to modify the process of forming the vanadium oxide catalyst of Hossain et al. because by doing so can help provide an oxidative dehydrogenation catalyst with improved stability and increased selectivity to propylene as suggested by Bai (Fig. 1, 6, page 254 left col. last para.-right col. first para., page 256 right col. first para.).
As for the claimed specific process steps used to obtain the active composition, “wherein the active composition ……is obtained by: mixing……, grinding……, calcining……” in claim 16, such limitations are product by process limitations, even though product-by-process limitations are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See MPEP§ 2113). In the instant case, combined teachings of applied references already teach a same or substantially the same active catalyst composition as that of instantly claimed.
Regarding claim 17, Hossain further teaches the volume ratio of CO2 to propane in the feed gas stream is in a range of 1:10 to 10:1 (col. 13 lines 18-20).
Regarding claim 18, Hossain also discloses the propylene-containing gas stream includes methane, ethane, ethylene, propane, carbon monoxide, carbon dioxide, a hydrocarbon containing C4-C9 such as butane, butene, pentane, and pentene; and aromatics such as benzene, naphthalene, anthracene, or their isomers, or mixtures of these substance (col. 14 lines 3-8).
Regarding claim 19, Hossain teaches the method having a propane conversion to propylene of up to 80 wt. % based on an initial weight of the propane in the feed gas stream (claim 18, page 4 lines 5-7).
Regarding claim 20, Hossain teaches the method having a propylene yield varied between 27.4-28.8%, or up to 70% according to a same equation as that of instantly claimed (col. 4 lines 8-27, col. 21 line 23-26, Fig. 12 C-D, claim 19-20).
Regarding claim 2, Hossain already teaches a same or substantially the same process of calcining same or substantially the same support precursor comprising alumina (claim 1, col. 2 lines 24-51, col. 3 lines 19-21, col. 8 lines 56-66 Fig. 2A) as that of instantly application, therefore, same or substantially the same at least one support being alpha, delta, theta or gamma alumina would be expected. Hossain also teaches gamma-alumina is well-known support for VOx dehydrogenation catalyst (col. 1 lines 55-57). It would have been obvious for one of ordinary skill in the art to “obvious to try” such well-known gamma-alumina as metal oxide support because choosing gamma-alumina from a finite number of identified, predictable solutions of metal oxide support would have with a reasonable expectation of success (see MPEP §2143 KSR).
Regarding claim 3-4, Hossain in view of Loganathan and Bai already teaches a same or substantially the same catalyst composition as discussed above. As for the claimed first catalyst precursor particles comprised vanadium compound, or boron compound, such limitations are product by process limitation, please see similar remarks in claim 16.
Regarding claim 5, Hossain et al. further teaches the vanadium oxide (VOx) particles comprise vanadium monoxide (VO), vanadium trioxide (V2O3), vanadium dioxide (VO2), and vanadium pentoxide (V2O5) (claim 3).
Regarding claim 6-7, Hossain also teaches forming the second vanadium catalyst by: mixing the first vanadium catalyst with a second support and grinding to form a second precursor; wherein a weight ratio of the first vanadium catalyst to the second support in a range of 2:1 to 1:2, wherein the second support comprises a smectite clay and a metal oxide (claim 9, col. 9 lines 53- col. 10 line 7, Fig. 2A). Since Hossain et al. disclosed second vanadium catalyst formed by a same or substantially the same process of obtaining the first vanadium catalyst, and the first catalyst of vanadium oxide particles have an average particle size of 50 to 200 nanometers (nm), therefore, Hossain disclosed second vanadium catalyst formed by a same or substantially the same process as that of first vanadium catalyst would leading to a same or substantially the same second vanadium oxide catalyst having same or substantially the same particle size of 50 to 200 nanometers (nm). As for the claimed weight ratio of the first catalyst to the second catalyst precursor particles being in a range of 100:1 to 9:1, Hossain disclosed a weight ratio of the first vanadium catalyst to the second support in a range of 2:1 to 1:2 is within the claimed range. It would have been obvious for one of ordinary skill in the art to adopt a same first catalyst to second catalyst precursor (including second catalyst, vanadium precursor and boron precursor) as that of instantly claimed via routine experimentation (see MPEP §2144. 05 II) for help obtaining a desired second vanadium oxide and boron oxide containing catalyst with improved oxidative dehydrogenation performance.
As for the claimed specific process steps or specific materials (e.g. solvent) used in such specific process steps, please refer to similar product by process limitation remarks as stated in claim 16.
Regarding claim 8, Hossain already teaches second precursor and second solvent being mixed to form a second mixture (col. 10 lines 7-15), wherein the second precursor is larger than 0% but less than 100% by weight based on the second mixture, wherein such range overlapping with that of instantly claimed range thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Regarding claim 9, Hossain already teaches the active catalyst composition can be vanadium oxide supported onto an alumina containing carrier while Bai teaches boron oxide can be included in such active catalyst composition, therefore, the applied references teach an active composition being alumina supported vanadium oxide, and/or an alumina supported vanadium oxide and boron oxide as that of instantly claimed.
Regarding claim 10-13, Hossain et al. further teaches active catalyst composition has a multi-layered mesoporous structure (claim 11); the active catalyst composition has a specific surface area in a range of 50 to 200 square meters per gram (m2/g) (claim 12); the active catalyst composition has a cumulative specific pore volume in a range of 0.1 to 0.8 cubic centimeters per gram (cm3/g)(claim 13); and the active catalyst composition has an average pore diameter of 50 to 300 angstroms (Å) (claim 14, col. 3 lines 45-54).
Regarding claim 14-15, Hossain et al. in view of Loganathan and Bai already teaches a same or substantially the same active catalyst composition as that of instantly claimed, therefore, same or substantially the same property, i.e. same or substantially the same temperature-programed desorption of ammonia of 0.01 to 0.5 millimoles per gram, and same or substantially the same hydrogen temperature-programed reduction of 0.01 to 0.7 mmol/g as those of instantly claimed would be expected. Hossain et al. expressly teaches some the active catalyst composition having temperature-programed desorption of ammonia of 0.001 to 0.1 mmol/g (col. 12 line 65-col. 13 line 7, Fig. 10 A-B), and hydrogen temperature-programed reduction being preferably 0.1 to 0.8 mmol/g (col. 11 lines 23-51, Fig. 9 A-B).
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 16-20 and 2-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15-20 and 1-14 of U.S. Patent No. 11819825 in view of Loganathan (US2021/0205789) and Bai (Modulation of surface chemistry by boron modification to achieve a superior VOX/Al2O3 catalyst in propane dehydrogenation, Catalysis Today 402 (2022), page 248–258). US’825 (noted US’825 is Hossain et al used in 103 rejections) teaches a substantially the same process of forming propylene via dehydrogenation of propane and carbon dioxide using a substantially the same catalyst composition comprising vanadium oxide except not teaching the alumina support size or the active catalyst composition comprising boron oxide, such limitations are taught by Lognathan and Bai respectively as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well-known particle size as shown by Loganathan to modify the alumina containing support of US’825 because adopting a well-known technique of a support size being 20-150 µm to modify a well-known process of forming vanadium containing oxidative dehydrogenation catalyst for improvement would have predictable results (see MPEP §2143 KSR). It would have been obvious for one of ordinary skill in the art to adopt boron oxide particles to modify the process of forming the vanadium oxide catalyst of US’825 because by doing so can help provide an oxidative dehydrogenation catalyst with improved stability and increased selectivity to propylene as suggested by Bai (Fig. 1, 6, page 254 left col. last para.-right col. first para., page 256 right col. first para.).
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732