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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/24/2025 has been entered.
Response to Amendment
The amendment filed on 11/24/2025 has been entered into the prosecution for the application. 1, 13, 16-20, 26-32 are pending consideration.
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 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. Specifically, the instant claim requires a catalyst that comprises at least one iron species consisting of elemental iron or iron oxide. It is unclear whether the applicant is attempted to limit that the catalyst can only contain iron or iron oxide, or whether alloys, even including minority iron alloys, satisfy the claim limitation. Paragraphs 90-98 of the instant specification render clear that nearly any combination of metals is possible for the instant system, but further clarification in the claim language is required to ensure the limitations are apparent by a plain face reading,
Claim Rejections - 35 USC § 103
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 1, 13, 16-20, 26-32 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards (WO2018104712A1) in view Miyakoshi (WO 2015029377A1) [wherein all references to the text correspond to the English translation provided].
Regarding Claims 1, 18-20, 26-27, and 28 Edwards teaches a method for producing hydrogen gas by exposing a liquid composition containing a metal catalyst and a liquid hydrocarbon to microwave radiation [abstract]. Edwards demonstrates that a single or binary metal catalyst of iron and/or nickel [00227-00228, and 00252 demonstrating various compositions of the catalyst/support] can be made by impregnating catalyst supports such as silicon carbide, activated carbon, or silica with hydrated metal salt and placing the catalyst-on-support in a reducing environment to form an elemental metal loaded catalyst on a silicon carbide, activated carbon, or silica support [00227-00228, 00252]. The catalyst was then loaded into a microwave in the presence of hexadecane or diesel (these being a liquid hydrocarbon) and irradiated with microwave energy to generate gases [00236 and Table 1], including hydrogen gas [00240]. Edwards discloses that examples of hydrocarbons would be, for instance, benzene, toluene, or xylene [0044]. Edwards teaches that while the liquid hydrocarbon is initially in a liquid state under standard atmospheric conditions, it is recognized that the material in the process conditions can be carried out such that the hydrocarbon is in the gaseous state during the process [0099]. Consequently, as a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments, it is understood that Edwards anticipates the claim language of gaseous hydrocarbon (MPEP 2123 I).
However, Edwards does not teach that a gaseous hydrocarbon may be selected from C1-4 compounds.
Miyakoshi teaches that hydrocarbon compounds such as methane, ethane, propane, butane, benzene, toluene, or xylene [Lines 3-5, Page 8] may be used as the hydrogen-containing compound. These compounds are abundant as well as preferable as chemical resources for protecting the global environment [Lines 6-10, Page 2]. Miyakoshi teaches that the catalyst may be Ni containing-catalyst on a SiC support [Lines 23-27, Page 10]. Further, the hydrogen production may result from the catalytic decomposition of “one or more hydrogen-containing compounds” [Lines 6-7, Page 8] when utilizing a microwave reactor such that less by-products are produced in the hydrogen generation [Abstract]. That is, if one hydrogen-containing compound is used, then the gaseous hydrocarbon species used therein accounts for 100 wt. % of the hydrogen-containing compound, whereby the compound in one instance is methane. Furthermore, Miyakoshi teaches in a specific instance that “methane gas” was introduced to the catalysis chamber [Lines 13-15, Page 11].
Prior to the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art that the method of Edwards, as per Claim 1, could be modified to incorporate the use of methane as a hydrocarbon gas to be cracked, as per Miyakoshi, into the microwave-based iron on a silicon carbide supported catalytic production of hydrogen gas method, as per Edwards, in order to generate hydrogen with less by-products from a hydrocarbon source.
Regarding Claim 13, the solid catalyst species comprises “elemental Fe” on “Silicon Carbide” [00198].
Regarding Claim 16-17, 29-32, the elemental iron on a SiC support has a 1 to 10 wt. % of the catalyst [00198].
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant argues that the combination of Edwards and Miyakoshi is improper, as Miyakoshi does not teach an embodiment with a catalyst using iron, and further that Edwards does not teach a gaseous hydrocarbon of C1-4. This is not persuasive as was stated in the rejection above, the courts have allowed that non-preferred embodiments may still constitute prior art, which means that the prior art may contain limitations that are not explicitly recited. In the instant case, it is clear from [0099] of Edwards that alteration of the temperature and pressure in the system would induce species to become gaseous in processing. Accordingly, Edwards is understood to have the capacity to react a catalyst on a support system with a gaseous compound. This is further supported as being obvious to one of ordinary skill in that Miyakoshi uses C1-4 compounds, which can be imported to Edwards. This is because one of ordinary skill would have found it obvious to try the precursors of Miyakoshi, with any combination of the catalysts of Edwards, as both references teach the use of Ni/SiC, which would lend credence to the viability of experimentation with the other metal catalyst systems of Edwards.
Lastly, applicant argues that a distinguishing feature of the present invention is the sustained high selectivity conversion to hydrogen. This is not a fact contended against. However, it is not in the claims, and is thus a moot point with respect to the propriety of the application of the aforementioned prior art references.
Conclusion
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.
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NATHANAEL JASON. DOWNES
Examiner
Art Unit 1794
/NATHANAEL JASON DOWNES/Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759