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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on 7/2/26 after allowance. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's 7/2/26 and 8/20/26 submissions have been entered.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 21-22, 25, and 29 are rejected under 35 U.S.C. 112(b)/2nd par. 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.
Regarding claim 21, the claim recites “oxides of… aluminum… or combinations thereof.” However, as aluminum and gallium only have one oxide form each (i.e. Al2O3 and Ga2O3), employing “oxides” thereof is not possible, especially since the claim only requires a minimum of one such member of the Markush group. The foregoing presents an internal contradiction/inconsistency that creates confusion as to the claimed scope and how to avoid infringement thereof, rendering claim 21 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. See Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366-67 (Fed. Cir. 2016) (stating that an internally contradictive/inconsistent claim is indefinite and thus properly rejected as such under 35 U.S.C. 112(b)/2nd par.), and Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (citing Columbia v. Symantec).
Regarding claim 22, regenerating a spent catalyst with O2 means that the spent catalyst being so regenerated is in a reduced form; regenerating a spent catalyst with H2 means that the spent catalyst being so regenerated is in an oxidized form. As the claim is written, an oxidized spent catalyst may be regenerated with O2, and a reduced spent catalyst may be regenerated with H2, neither of which is possible. The foregoing presents an internal contradiction/inconsistency that creates confusion as to the claimed scope and how to avoid infringement thereof, rendering claim 22 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. Trs. of Columbia v. Symantec; Multilayer Stretch v. Berry Plastics (citing Columbia v. Symantec).
Regarding claim 25, the claim recites “the catalyst promoter is iron; and the dehydration catalyst comprises… iron oxide” and depends from claim 24, which recites “the dehydration catalyst further comprises… iron…” As the plain meaning of claims 24-25’s “iron” is Fe (the first mention of “iron oxide” is in claim 25), claim 25’s “the catalyst promoter is iron; and the dehydration catalyst comprises… iron oxide” presents an internal contradiction/inconsistency, especially when viewed in light of claim 24’s “the dehydration catalyst further comprises… iron…” The foregoing creates confusion as to the claimed scope and how to avoid infringement thereof, rendering claim 25 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. Trs. of Columbia v. Symantec; Multilayer Stretch v. Berry Plastics (citing Columbia v. Symantec).
Regarding claim 29, “the propylene” recitations lack sufficient antecedent bases, rendering claim 29 rejected as indefinite under 35 U.S.C. 112(b)/2nd par.
Also regarding claim 29, the claim recites “oxides of… aluminum… or combinations thereof.” However, as aluminum and gallium only have one oxide form each (i.e. Al2O3 and Ga2O3), employing “oxides” thereof is not possible, especially since the claim only requires a minimum of one such member of the Markush group. The foregoing presents an internal contradiction/inconsistency that creates confusion as to the claimed scope and how to avoid infringement thereof, rendering claim 29 further rejected as indefinite under 35 U.S.C. 112(b)/2nd par. Trs. of Columbia v. Symantec; Multilayer Stretch v. Berry Plastics (citing Columbia v. Symantec).
Claim 25 is rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to include all the limitations of the claim upon which it depends. Claim 25 recites “the catalyst promoter is iron; and the dehydration catalyst comprises… iron oxide” and depends from claim 24, which recites “the dehydration catalyst further comprises… iron…” Note that claims 24-25’s “iron” is “iron”; the first mention of “iron oxide” is in claim 25; “iron” is not “iron oxide”. MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch v. Berry Plastics, 831 F.3d at 1362 (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.). Since claim 25 may be infringed without necessarily also infringing claim 24, claim 25 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim.
Allowable Subject Matter
Claims 19-20, 23-24, and 26-28 are allowable over the prior art and do not suffer from any deficiencies under 35 U.S.C. § 101 or § 112. The following is an Examiner’s statement of reasons for allowance: regarding independent claim 19, the most pertinent prior art of record appears to be the 2013 Liebig et al. article (“Liebig”, see applicant’s 3-16-26 IDS) in view of CN111330573A (2020) (“’573”) (incl. machine English transl’n, “EMT”). Regarding claim 19, Liebig teaches a method of dehydrating glycerol in the presence of a dehydration catalyst comprising 13.2 wt% or 15 wt% WO3 on TiO2 to give acrolein (“AC”). See Liebig at, e.g., p. 170, R col., p. 172, R col. 1st full par., and p. 173, §3.1.1; Table 1. Liebig’s catalyst does not, however, also comprise Pt and/or Pd as claim 19 requires (much less within claim 19’s range(s)).
For its part, ‘573 teaches a catalyst comprising 3-20wt% WO3 on ZrO2 (9wt% WO3 being preferred), further comprising 1.5wt% Pt (as chloroplatinic acid, i.e. platinum acid sites). See ‘573 at, e.g., EMT p. 3 (boxed area). However, ‘573 is considered non-combinable with Liebig, as ‘573’s Pt/WO3-ZrO2 catalyst is employed to form 1,3-propylene glycol (“PG”) from glycerol (see id.), not forming AC from glycerol as claimed; further dehydration would be required to arrive at AC from PG and, as such, employing ‘573’s (undesirably expensive) Pt-comprising catalyst in Liebig’s AC synthesis would not achieve Liebig’s desired result. MPEP 2143.01 V.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany said fee. Such comments should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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.
/DANIEL BERNS/ September 22, 2026
Primary Examiner
Art Unit 1736
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