Detailed Notice
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 .
Response to Amendment
Applicant’s amendment filed 8/4/2026 has entered prosecution.
Claims 1-3, 5-7 are pending examination.
Applicant’s amendment has necessitated the new grounds of rejection presented in this office action.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: the instant claims make reference to “catalyst particles”, though this should be consistent with the language of the independent claim which defines “a catalytically active component”. To be consistent, the “a catalytically active component” should be structurally further defined as “catalyst particles” or the term “catalyst particles” should be removed altogether. Appropriate correction is required.
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 1 recites the limitation "the mesoporous support impregnated" in Claim 1. There is insufficient antecedent basis for this limitation in the claim, as there is no previously indicated recited element which teaches to the mesoporous support being impregnated. Attention is required.
Claims 2-3, 5-7 are rejected as depending from Claim 1.
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.
Claims 1-3, 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kui Zhang et al. Applied Catalysis A: General, 2015, 502, 138-149 in view of Li Bian et al. Molecular Catalysis, 2018, 446, 131-139 further in view of Lee, H., Sci Rep 8, 9956 (2018) further in view of Juchuan Kim et al Chemical Engineering Journal, 2019, 377, 119896.
Regarding Claim 1-2 and 7, Zhang teaches a method for valorizing CO2 into syn-gas (a process referred to as the Fischer-Tropsch synthesis [page 138]) and higher hydrocarbons by dielectric-barrier discharge at low temperature and ambient pressure (abstract). Zhang teaches the sol-gel synthesis of a Ni/SiO2 system (page 139, col. 2, section 2.1), whereby the SiO2 serves as a catalyst support (page 147, col, 1). The Ni/SiO2 system is packed between an outer quartz tube and an inner quartz tube (Fig. 1; page 140, section 2.3) at a volume of 100 cm3, which defines the discharge region (page 140, col. 1, last paragraph). Zhang further teaches that the properties of a catalyst may be modified by exposure to the strong electric field in a DBD and thus influence the reactions in a non-thermal plasma (page 145, col. 1, para 2 after eq. 7). Accordingly, it is understood that Zhang teaches an adiabatic system whereby the initial temperature of the system was room temperature and the interaction of the plasma with the catalyst caused an increase in the temperature as the reaction progressed. Further, Zhang teaches that the temperature inside the plasma reactor was 110 °C which was set by a plasma power of 86 W [Caption to Fig. 2]. Zhang teaches that the plasma power could be set between 0 and 150 W, where it is understood that the plasma power directly effects the temperature in the system [Sec. 2.3, 1s line of 2nd paragraph]. Thus, while it is clear that the apparatus of Zhang is capable of being used to achieve a temperature of 150 °C, more pertinently the courts have held generally that differences in temperature do not support the patentability of subject matter unless there is a demonstration of criticality (see MPEP 2144.05 II A). Therefore, it is understood that the apparatus of Zhang teaches to the requirement that the temperature be raised to 150 °C.
However, Zhang does not teach that the silica support is a mesoporous structure nor that the DBD reactor comprises an external furnace and an insulating material. Zhang does not teach that the catalyst particles comprising the mesoporous support impregnated with the catalytically active component are in the microscale range of 10 to 200 µm, nor that the particles have an average gap distance between 1 and 20 µm.
Bian teaches a method of synthesizing an ordered mesoporous Ni/Ce/SBA-15 (silica) system with improved stability and performance during CO methanation (page 131, abstract), in order to upgrade carbon dioxide and syngas into methane (page 131, section 1; equations 1 and 2).
Bian teaches that the mesoporous silica support (SBA-15) is an important factor affecting catalytic performance that has particular relevance in catalysis owing to its tunable large pores (5-30 nm), high specific surface area, and good hydrothermal stability (page 132, col. 1, para 1). Bian teaches that the synthesis of the ordered mesoporous structure is done first by synthesizing the SBA-15 support by a sol-gel method, followed by calcination (page 132, section 2.1), after which the Ni-based catalysts were deposited by a wet impregnation method in the support (page 132, section 2.1).
Lee teaches a plasma-catalyst hybrid DBD system is used to synthesize methanol from methane (abstract).
Lee teaches the DBD reactor system shown in Fig. 5 of Lee below. Lee teaches that the reactor comprises a furnace (bottom paragraph of page 5 to page 6). Lee teaches that the DBD reactor contains Quartz wool (bottom paragraph of page 5), which is understood to be a heat insulating material, in order to monitor the temperature of the system without exposing the conductive thermocouple to the plasma directly.
Kim is in the same field of endeavor of dielectric barrier discharge reactors [abstract]. Kim teaches a study relating to the effects on catalytic activity and performance as relates to the particle size and gap distance within the catalyst bed [Pg. 2, Col. 2, Para. 2]. Kim teaches that the particles (size L, in Kim) are in the range of 100 to 150 µm [Pg. 3, Col. 1, Para. 1] and that KIT-6 (a mesoporous silica) can have a gap size distribution of 8.43 +/- 3.15 µm [see Table 1 and Pg. 3, Col. 2, Sec. 2.1]. Kim teaches that (L) sized particles were shown to increase the intensity of the discharges, meaning that more charge was transferred during the discharge [Pg. 8, Col. 2, Para. 1].
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill in the art that the silica support of Zhang could be substituted for the ordered mesoporous silica support of Bian in order that one would arrive at a dielectric barrier discharge catalyst support structure with improved catalytic activity to make hydrocarbons from COx (see MPEP 2143 I D). Further, it would have been obvious to one of ordinary skill that the system of Zhang in view of Bian was ready for improvement by the incorporation of the furnace and packed DBD reactor bed of Lee in order that one would arrive at a DBD system that can effectively monitor the temperature of the system without the risk of interference from the thermal probe. Further, prior to the filing of the present invention it would have been obvious to one of ordinary skill that the DBD reactor system of modified Zhang was ready for improvement by the incorporation of the large size particles (100 to 150 µm in size) and the corresponding gap distances (on the order of 10 µm) of the mesoporous particles taught by Kim, in order that one would arrive at a DBD reactor system with improved micro discharge intensity and thus reducing power.
Regarding Claim 3, Zhang teaches that the dielectric barrier discharge reactor was operated at ambient pressure (page 139, col. 2, para 1).
Regarding Claim 5, Zhang teaches that after reduction of the catalyst at 550 °C the catalyst is allowed back to room temperature before the feed gases are added (page 140, section 2.3). Accordingly, while 550 °C as disclosed by Zhang is outside the required range of 300 – 500 of the instant claim, the courts have held broadly where ranges are so close that one skilled in the art would have expected them to have the same properties there exists a prima facie case of obviousness exists (see MPEP 2144.05 I).
Regarding Claim 6, Zhang in view of Bian teaches to Claim 1.
However, Zhang in view of Bian does not teach that the catalyst is active in the pores of the mesoporous support by means of a wet impregnation method.
Bian teaches that the synthesis of the ordered mesoporous structure is done first by synthesizing the SBA-15 support by a sol-gel method, followed by calcination (page 132, section 2.1), after which the Ni-based catalysts were deposited by a wet impregnation method in the support using an aqueous solution (page 132, section 2.1). Bian teaches that the pores of the mesoporous support in conjunction with catalysts inside the mesoporous structure improves selectivity for CO methanation (page 135, section 3.3).
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill in the art that Ni/silica catalyst-on-support of Zhang could be substituted for the Ni particle impregnated ordered mesoporous silica support of Bian in order that one would arrive at a dielectric barrier discharge catalyst support structure with improved catalytic activity to make hydrocarbons from COx (see MPEP 2143 I D).
Response to Arguments
Applicant's arguments filed 4/8/2026 have been fully considered but they are not persuasive.
Applicant argues that because they have claimed the 102(b)(1)(a) exception as the rejection of Kim above was a disclosure of their own, that incorporation of Claim 8 into the independent Claim 1 would overcome the rejection on record. This is not persuasive as the declarations provided by the applicant do not satisfy the conditions necessary for the 102(b)(1)(a) exception to be applied. Specifically, the applicant has failed to tender a “reasonable explanation of the presence of additional authors” who are not listed as inventors on the instant claim (see MPEP 2155.01). More specifically, the first author listed on that paper is indicated by the applicants to have “not ma(d)e an inventive contribution to any of the subject matter claimed in the present application” in addition to two other authors on that paper, without any additional information regarding these persons, the relation to the inventors of the present invention, or any information detailing the circumstances of the publication of Kim. Further, the declarations provided lacks a statement of perjury, which is a formal requirement for an effective declaration to traverse a rejection (see MPEP 716). That is, 37 CFR 1.68 permits a declaration to be used instead of an affidavit. The declaration must include an acknowledgment by the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001 ) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
Accordingly, both the declaration and the applicant’s arguments making claim to Kim as being a disclosure owned by the inventors within the one year grace period of the filing date of the instant application is not compelling, and the previously applied rejection is maintained.
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 NATHANAEL J DOWNES whose telephone number is (571)272-1141. The examiner can normally be reached 8am to 5pm.
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, James Lin can be reached at (571) 272-8902. 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.
NATHANAEL JASON. DOWNES
Examiner
Art Unit 1794
/NATHANAEL JASON DOWNES/Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
