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 after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/18/2026 has been entered.
Status of the Claims
The amendment filed on 03/18/2026 has been entered. Claims 32 and 38 have been amended. Thus, claims 32-33, 36-39 and 42-43 are currently pending and under examination.
Withdrawn Rejection
Claims 32 and 38 have been amended to obviate the indefinite language. Thus the 112(b) rejection of the record has been withdrawn.
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 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.
Claim(s) 32-33 and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Ruckenstein (Ruckenstein, E. et al. “Carbon dioxide reforming of methane over nickel/alkaline earth metal oxide catalysts” Applied Catal. A: General 1995, 133, 149-161; cited in PTO-892 08/10/2020) in view of Patent number US4,831,060 (US’060; cited in PTO-892 10/01/2025).
Regarding claim 32, Ruckenstein teaches a process for producing syngas, the process comprising bringing a nickel-based solid solution catalyst containing a single transition metal Ni into contact with CO2 at a temperature of 790 °C. The claimed temperature of greater than 800 °C is merely close to Ruckenstein’s 790 °C and thus is prima facie obvious in view of MPEP § 2144.05 “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”.
The reference further teaches that the catalyst contains NiO/oxide weight ratio of 20/100 (page 151, sect. 2.1).
Based on this weight ratio, the amount of just Ni in 20 of NiO is calculated by:
(20 x 58.69at.wt.Ni)/ 74.69mol.wt.NiO = 15.7
The weight percent of Ni in the catalyst is thus calculated by:
15.7Ni/(20NiO + 100otheroxide)] x 100 = 13.08 wt%
Regarding claims 36-37, Ruckenstein is silent about the production of syngas with the claimed H2/CO ratio. However, because the reference teaches every limitation of claim 32, it is anticipated for the syngas with the claimed H2/CO ratio to be obtained in Ruckenstein. (see MPEP § 2112.01).
Regarding claim 33, Ruckenstein teaches that the catalyst is stable at a temperature of 790 ºC (Results section on pp152).
Regarding claim 32, Ruckenstein fails to teach the claimed step for producing methanol, ethanol or other alcohols from syngas, however the deficiency is cured by US’060.
US’060 teaches a process for producing mixed alcohols that include C1-10 alcohols, preferably C1-5 mixed aliphatic alcohols from syngas using a catalyst metal such as molybdenum, tungsten or rhenium in combination with a co-catalyst metal such as cobalt, nickel or iron (col. 3, ln. 38-46), wherein the catalyst comprises a support such as the aluminas, basic oxides, the silicas, carbons, or suitable solid compounds of magnesium, calcium, strontium, barium, scandium, yttrium, lanthanum and the rare earths, titanium, zirconium, hafnium, vanadium, niobium, tantalum, thorium, uranium, and zinc, of which oxides are exemplary compounds (col. 12, ln. 20-26).
MPEP § 2143 states that the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Therefore, choosing from a finite number of identified, predictable solutions, is likely to be obvious when it does no more than predictable results and with a reasonable expectation of success.
In this instance, selecting rhenium, cobalt cocatalyst and alumina as a support from the teachings of US’060, a skilled artisan would have a reasonable expectation of success in arriving at the instantly claimed second catalyst consisting of rhenium, cobalt and alumina and in obtaining mixed alcohols that include C1-10 alcohols from syngas.
US’060 further teaches that the mixed alcohols that include C1-10 alcohols are used as a fuel replacement or fuel additive. Accordingly, a skilled artisan would have been motivated to further convert the syngas obtained in Ruckenstein to mixed alcohols that include C1-10 alcohols using the methods of US’060.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in conducting a process for producing syngas that is converted into alcohols by bringing a nickel-based, solid solution catalyst into contact with CO2 at a temperature greater than 800 °C. and wherein the nickel-based, solid solution catalyst comprises only one transition metal, and wherein the transition metal is nickel at the 4.4 to 13.2 weight percent level, thereby forming syngas, wherein the syngas is reacted with a second catalyst, and wherein the second catalyst comprises cobalt and at least one metal selected from a group consisting of cerium, ruthenium, lanthanum, platinum and rhenium supported on alumina, in view of the combination of Ruckenstein and US’060.
Claim(s) 32-33 and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Ruckenstein II (Ruckenstein, E. et al. “The effect of precursor and preparation conditions of MgO on the CO2 reforming of CH4 over NiO/MgO catalysts” Applied Catalysis A: General 154 (1997) 185-205; cited in PTO-892 08/28/2024) in view of Patent number US4,831,060 (US’060; cited in PTO-892 10/01/2025).
Regarding claim 32, Ruckenstein II teaches a process for producing syngas, the process comprising bringing a nickel-based solid solution catalyst containing a single transition metal Ni into contact with CO2 at a temperature of 790 °C. The claimed temperature of greater than 800 °C is merely close to Ruckenstein’s 790 °C and thus is prima facie obvious in view of MPEP § 2144.05 “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”.
The reference further teaches that the catalyst contains NiO/MgO with weight ratio of 20/100 and 13.1 wt% Ni in the catalyst (Table 3, page 194).
Regarding claim 33, Ruckenstein II teaches that the catalytic reaction is conducted at temperature of 790 ºC (section 2.2 on page 187) and thus the catalyst is stable at that temperature.
Regarding claims 36-37, Ruckenstein II is silent about the production of syngas with the claimed H2/CO ratio. However because the reference teaches every limitation of claim 32 in producing syngas, there is a prima facie case of anticipation in obtaining syngas with the claimed H2/CO ratio in Ruckenstein II. (see MPEP § 2112.01).
Regarding claim 32, Ruckenstein II fails to teach the claimed step for producing methanol, ethanol or other alcohols from syngas, however the deficiency is cured by US’060.
US’060 teaches a process for producing mixed alcohols that include C1-10 alcohols, preferably C1-5 mixed aliphatic alcohols from syngas using a catalyst metal such as molybdenum, tungsten or rhenium in combination with a co-catalyst metal such as cobalt, nickel or iron (col. 3, ln. 38-46), wherein the catalyst comprises a support such as the aluminas, basic oxides, the silicas, carbons, or suitable solid compounds of magnesium, calcium, strontium, barium, scandium, yttrium, lanthanum and the rare earths, titanium, zirconium, hafnium, vanadium, niobium, tantalum, thorium, uranium, and zinc, of which oxides are exemplary compounds (col. 12, ln. 20-26).
MPEP § 2143 states that the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Therefore, choosing from a finite number of identified, predictable solutions, is likely to be obvious when it does no more than predictable results and with a reasonable expectation of success.
In this instance, selecting rhenium, cobalt cocatalyst and alumina as a support from the teachings of US’060, a skilled artisan would have a reasonable expectation of success in arriving at the instantly claimed second catalyst consisting of rhenium, cobalt and alumina and in obtaining mixed alcohols that include C1-10 alcohols from syngas.
US’060 further teaches that the mixed alcohols that include C1-10 alcohols are used as a fuel replacement or fuel additive. Accordingly, a skilled artisan would have been motivated to further convert the syngas obtained in Ruckenstein II to mixed alcohols that include C1-10 alcohols using the methods of US’060.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in conducting a process for producing syngas that is converted into alcohols by bringing a nickel-based, solid solution catalyst into contact with CO2 at a temperature greater than 800 °C. and wherein the nickel-based, solid solution catalyst comprises only one transition metal, and wherein the transition metal is nickel at the 4.4 to 13.2 weight percent level, thereby forming syngas, wherein the syngas is reacted with a second catalyst, and wherein the second catalyst comprises cobalt and at least one metal selected from a group consisting of cerium, ruthenium, lanthanum, platinum and rhenium supported on alumina, in view of the combination of Ruckenstein II and US’060.
Claim(s) 38-39 and 42-43 stand rejected under 35 U.S.C. 103 as being unpatentable over Ruckenstein (Ruckenstein, E. et al. “Carbon dioxide reforming of methane over nickel/alkaline earth metal oxide catalysts” Applied Catal. A: General 1995, 133, 149-161; cited in PTO-892 08/10/2020) in view of Nikulshina (Nikulshina, V. et al. “CO2 capture from air and co-production of H2 via the Ca(OH)2–CaCO3 cycle using concentrated solar power–Thermodynamic analysis” Energy 31 (2006) 1715–1725; cited in PTO-892 08/28/2024) and Patent number US4,831,060 (US’060; cited in PTO-892 10/01/2025).
Regarding claim 32, Ruckenstein teaches a process for producing syngas, the process comprising bringing a nickel-based solid solution catalyst containing a single transition metal Ni into contact with CO2 at a temperature of 790 °C. The claimed temperature of greater than 800 °C is merely close to Ruckenstein’s 790 °C and thus is prima facie obvious in view of MPEP § 2144.05 “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”.
The reference further teaches that the catalyst contains NiO/oxide weight ratio of 20/100 (page 151, sect. 2.1).
Based on this weight ratio, the amount of just Ni in 20 of NiO is calculated by:
(20 x 58.69at.wt.Ni)/ 74.69mol.wt.NiO = 15.7
The weight percent of Ni in the catalyst is thus calculated by:
15.7Ni/(20NiO + 100otheroxide)] x 100 = 13.08 wt%
Regarding claim 39, Ruckenstein teaches that the catalytic reaction is conducted at temperature of 790 ºC (section 2.2 on page 187) and thus the catalyst is stable at that temperature.
Regarding claims 42-43, Ruckenstein is silent about the production of syngas with the claimed H2/CO ratio. However because the reference teaches every limitation of claim 32, it is anticipated for the syngas with the claimed H2/CO ratio to be obtained in Ruckenstein. (see MPEP § 2112.01).
Regarding claim 38, Ruckenstein fails to teach capturing CO2 prior to the conversion of CO2 to syngas and the step for producing methanol, ethanol or other alcohols from syngas, however the deficiencies are cured by Nikulshina and US’060.
Nikulshina teaches a process for capturing CO2 from air using a spray of Ca(OH)2 aqueous solution and using CO2 in dry reforming of natural gas to obtain syngas (H2+CO) (pages 1716-1717). It is understood to a skilled artisan that CO2 is an air pollutant, and thus the skilled artisan would have been motivated in capturing CO2 from air using Nikulshina’s methods and in using the captured CO2 in the methods of Ruckenstein to convert CO2 to syngas.
US’060 teaches a process for producing mixed alcohols that include C1-10 alcohols, preferably C1-5 mixed aliphatic alcohols from syngas using a catalyst metal such as molybdenum, tungsten or rhenium in combination with a co-catalyst metal such as cobalt, nickel or iron (col. 3, ln. 38-46), wherein the catalyst comprises a support such as the aluminas, basic oxides, the silicas, carbons, or suitable solid compounds of magnesium, calcium, strontium, barium, scandium, yttrium, lanthanum and the rare earths, titanium, zirconium, hafnium, vanadium, niobium, tantalum, thorium, uranium, and zinc, of which oxides are exemplary compounds (col. 12, ln. 20-26).
MPEP § 2143 states that the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Therefore, choosing from a finite number of identified, predictable solutions, is likely to be obvious when it does no more than predictable results and with a reasonable expectation of success.
In this instance, selecting rhenium, cobalt cocatalyst and alumina as a support from the teachings of US’060, a skilled artisan would have a reasonable expectation of success in arriving at the instantly claimed second catalyst consisting of rhenium, cobalt and alumina and in obtaining mixed alcohols that include C1-10 alcohols from syngas.
US’060 further teaches that the mixed alcohols that include C1-10 alcohols are used as a fuel replacement or fuel additive. Accordingly, a skilled artisan would have been motivated to further convert the syngas obtained in Ruckenstein to mixed alcohols that include C1-10 alcohols using the methods of US’060.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in conducting a process for producing syngas that is converted into methanol, ethanol or other alcohols, wherein the process comprises capturing CO2 to provide a captured CO2 stream at a temperature greater than 800 °C, and bringing a nickel-based, solid solution catalyst into contact with CO2 from the captured CO2 stream, and wherein the nickel-based, solid solution catalyst comprises only one transition metal, and wherein the transition metal is nickel at the 4.4 to 13.2 weight percent level, thereby forming syngas, wherein the syngas is reacted with a second catalyst, and wherein the second catalyst comprises cobalt and at least one metal selected from a group consisting of cerium, ruthenium, lanthanum, platinum and rhenium supported on alumina, in view of the combination of Ruckenstein, Nikulshina and US’060.
Claim(s) 38-39 and 42-43 are rejected under 35 U.S.C. 103 as being unpatentable over Ruckenstein II (Ruckenstein, E. et al. “The effect of precursor and preparation conditions of MgO on the CO2 reforming of CH4 over NiO/MgO catalysts” Applied Catalysis A: General 154 (1997) 185-205; cited in PTO-892 08/28/2024) in view of Nikulshina (Nikulshina, V. et al. “CO2 capture from air and co-production of H2 via the Ca(OH)2–CaCO3 cycle using concentrated solar power–Thermodynamic analysis” Energy 31 (2006) 1715–1725; cited in PTO-892 08/28/2024) and Patent number US4,831,060 (US’060; cited in PTO-892 10/01/2025).
Regarding claim 38, Ruckenstein II teaches a process for producing syngas, the process comprising bringing a nickel-based solid solution catalyst containing a single transition metal Ni into contact with CO2 at a temperature of 790 °C. The claimed temperature of greater than 800 °C is merely close to Ruckenstein’s 790 °C and thus is prima facie obvious in view of MPEP § 2144.05 “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”.
The reference further teaches that the catalyst contains NiO/MgO with weight ratio of 20/100 and 13.1 wt% Ni (Table 3, page 194).
Regarding claim 39, Ruckenstein II teaches that the catalytic reaction is conducted at temperature of 790 ºC (section 2.2 on page 187) and thus the catalyst is stable at that temperature.
Regarding claims 42-43, Ruckenstein II is silent about the production of syngas with the claimed H2/CO ratio. However, because the reference teaches every limitation of claim 38 in producing syngas, there is a prima facie case of anticipation or obviousness in obtaining syngas with the claimed H2/CO ratio in Ruckenstein II. (see MPEP § 2112.01).
Regarding claim 38, Ruckenstein II fails to teach capturing CO2 prior to the conversion of CO2 to syngas and the step for producing methanol, ethanol or other alcohols from syngas, however the deficiencies are cured by Nikulshina and US’060.
Nikulshina teaches a process for capturing CO2 from air using a spray of Ca(OH)2 aqueous solution and using CO2 in dry reforming of natural gas to obtain syngas (H2+CO) (pages 1716-1717). It is understood to a skilled artisan that CO2 is an air pollutant, and thus the skilled artisan would have been motivated in capturing CO2 from air using Nikulshina’s methods and in using the captured CO2 in the methods of Ruckenstein II to convert CO2 to syngas.
US’060 teaches a process for producing mixed alcohols that include C1-10 alcohols, preferably C1-5 mixed aliphatic alcohols from syngas using a catalyst metal such as molybdenum, tungsten or rhenium in combination with a co-catalyst metal such as cobalt, nickel or iron (col. 3, ln. 38-46), wherein the catalyst comprises a support such as the aluminas, basic oxides, the silicas, carbons, or suitable solid compounds of magnesium, calcium, strontium, barium, scandium, yttrium, lanthanum and the rare earths, titanium, zirconium, hafnium, vanadium, niobium, tantalum, thorium, uranium, and zinc, of which oxides are exemplary compounds (col. 12, ln. 20-26).
MPEP § 2143 states that the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Therefore, choosing from a finite number of identified, predictable solutions, is likely to be obvious when it does no more than predictable results and with a reasonable expectation of success.
In this instance, selecting rhenium, cobalt cocatalyst and alumina as a support from the teachings of US’060, a skilled artisan would have a reasonable expectation of success in arriving at the instantly claimed second catalyst consisting of rhenium, cobalt and alumina and in obtaining mixed alcohols that include C1-10 alcohols from syngas.
US’060 further teaches that the mixed alcohols that include C1-10 alcohols are used as a fuel replacement or fuel additive. Accordingly, a skilled artisan would have been motivated to further convert the syngas obtained in Ruckenstein to mixed alcohols that include C1-10 alcohols using the methods of US’060.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention in conducting a process for producing syngas that is converted into methanol, ethanol or other alcohols, wherein the process comprises capturing CO2 to provide a captured CO2 stream at a temperature greater than 800 °C, and bringing a nickel-based, solid solution catalyst into contact with CO2 from the captured CO2 stream, and wherein the nickel-based, solid solution catalyst comprises only one transition metal, and wherein the transition metal is nickel at the 4.4 to 13.2 weight percent level, thereby forming syngas, wherein the syngas is reacted with a second catalyst, and wherein the second catalyst comprises cobalt and at least one metal selected from a group consisting of cerium, ruthenium, lanthanum, platinum and rhenium supported on alumina, in view of the combination of Ruckenstein II, Nikulshina and US’060.
Response to Arguments
Applicant argues that claims 32 and 38 have been amended to recite that the second catalyst consists cobalt and another metal supported on alumina and that US’060 is not applicable.
The examiner disagrees. US’060 teaches a catalyst metal such as molybdenum, tungsten or rhenium in combination with a co-catalyst metal such as cobalt, nickel or iron (col. 3, ln. 38-46), wherein the catalyst comprises a support such as the aluminas, basic oxides, the silicas, carbons, or suitable solid compounds of magnesium, calcium, strontium, barium, scandium, yttrium, lanthanum and the rare earths, titanium, zirconium, hafnium, vanadium, niobium, tantalum, thorium, uranium, and zinc, of which oxides are exemplary compounds. Thus, selecting rhenium as a catalyst metal, cobalt as co-catalyst metal and alumina as a support, a skilled artisan has a reasonable expectation of success in arriving at a catalyst consisting of rhenium, cobalt and aluminas.
In view of the foregoing, the instantly claimed methods are obvious for reasons set forth above.
Conclusion
Claims 32-33, 36-39 and 42-43 are rejected and no claims are allowed.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692