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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/19/2025 has been entered.
Claim Objections
Claims 1, 10, and 29 are objected to because of the following informalities:
In order to ensure proper grammar, it is suggested to amend “is a one metal” to “is one metal” in claim 1, line 6.
In order to ensure proper grammar, it is suggested to amend “or combination thereof” to either “or a combination thereof” or “or combinations thereof” in claim 10, line 2.
In order to ensure proper chemical notation, it is suggested to amend “CeO2” to “CeO2” in claim 29, line 2.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-5, 8-17, 29, and 31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “wherein the wt% is based on a total weight of the catalyst support and the catalyst metal”. However, there is only support for “the wt % is based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter, when present” (emphasis added) (Specification, [0008]). For the purposes of examination, the examiner interprets the limitation to mean “the wt% is based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter, when present”. Clarification is requested.
Regarding dependent claims 4-5, 8-17, 29, and 31, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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 8-9 and 11-12 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.
Claim 8 recites “wherein the catalyst metal is present in an amount from about 0.5 wt% to about 18 wt%”. However, it is unclear what this weight percentage is based on, based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter, when present; based on the weight of the catalyst metal; based on the total weight of the catalyst support and the catalyst metal, etc. For purposes of examination, the examiner interprets the weight percentage to mean “based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter, when present”, i.e., the total weight of the catalyst. Clarification is requested.
Claim 9 recites “wherein the catalyst metal is present in an amount from about 0.5 wt% to about 6 wt%”. However, it is unclear what this weight percentage is based on, based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter, when present; based on the weight of the catalyst metal; based on the total weight of the catalyst support and the catalyst metal, etc. For purposes of examination, the examiner interprets the weight percentage to mean “based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter, when present”, i.e., the total weight of the catalyst. Clarification is requested.
Claim 11 recites, “wherein the catalyst promoter is present in an amount from about 2 wt% to about 6 wt%”. However, it is unclear what this weight percentage is based on, i.e., based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter; based on the weight of the catalyst metal; based on the total weight of the catalyst support and the catalyst metal, etc. For purposes of examination, the examiner interprets the weight percentage to mean “based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter”, i.e., the total weight of the catalyst. Clarification is requested.
Claim 12 recites, “wherein the total weight of the catalyst metal and the catalyst promoter is from about 3 wt% to about 10 wt%”. However, it is unclear what this weight percentage is based on, i.e., based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter; based on the weight of the catalyst metal; based on the total weight of the catalyst support and the catalyst metal, etc. For purposes of examination, the examiner interprets the weight percentage to mean “based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter”, i.e., the total weight of the catalyst. Clarification is requested.
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 1-12, 14-15 and 29-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-20 of copending Application No. 18/284,525 (copending). Although the claims at issue are not identical, they are not patentably distinct from each other as set forth below.
Claim 1 requires a multifunctional catalyst comprising: a catalyst support, wherein the catalyst support is selected from one of comprising a CeO2 catalyst support, a Cr2O3 catalyst support, a La2O3 catalyst support, a Y2O3 catalyst support, or combinations thereof; a catalyst metal comprising at least one metal selected from Groups 6-11; provided that if the catalyst metal is a one metal selected from Groups 6-11 that is not Ru; provided that if the catalyst metal is two or more metals, it is selected from Groups 6-11; and optionally a catalyst promoter comprising at least one metal selected from Group 1, and Group 2; wherein the catalyst is capable of interacting with microwave energy in the frequency range of 300 MHz to 50 GHz; wherein the catalyst metal is present in an amount from about 0.1 wt% to about 20 wt%; and wherein the wt% is based on a total weight of the catalyst support and the catalyst metal.
While copending claim 16 requires a heterogeneous catalyst comprising: a catalyst support comprising a cerium oxide, a lanthanum oxide, or a combination thereof; wherein the cerium oxide, if present, comprises Ce(III), Ce(IV), or combinations thereof; and wherein the lanthanum oxide, if present, comprises La(III); a catalyst metal comprising at least one metal selected from Rh, Ir, Os, Ru, Pt, Pd, Cr, Mn, Fe, Co, Ni, Zn, and combinations thereof; wherein the catalyst metal is present in an amount from about 0.1 wt% to about 15 wt%;wherein the catalyst is capable of interacting with electromagnetic energy having a frequency of 13.5 MHz to 50 GHz; and a catalyst promoter comprising a metal selected from K, Cs, and a combination thereof; wherein the catalyst promoter is present in an amount from about 0.1 wt% to about 15 wt%; wherein the wt% is based on the total weight of the catalyst support, the catalyst metal, and the catalyst promoter (copending, claim 16), which meets the limitations of claims 1-12, 14-15, and 29-31 of the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1, 4-5, 8-9, 13-17, 29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Pantaleo et al. (“Synthesis and support composition effects on CH4 partial oxidation over Ni–CeLa oxides”, 2015) (Pantaleo).
Regarding claims 1, 4-5, 8-9, Pantaleo teaches a nickel catalyst (6 wt%) supported over a mixed CeO2-La2O3 (Pantaleo, Abstract), wherein the ratio of CeO2 to La2O3 is 50/50 wt% (Pantaleo, p. 136, Section 2.1.1. Support preparation) (i.e., a catalyst support is selected from a CeO2 catalyst support and a La2O3 catalyst support, a catalyst metal comprising nickel, wherein the catalyst metal is present in an amount of 6 wt% based on the weight of the catalyst; claims 4, 5, and 31, the catalyst metal is nickel; claims 8 and 9, the catalyst metal s present in an amount of 6 wt% which falls within the claimed range; claims 14, 15, and 29, the catalyst support is CeO2-La2O3 in a 1:1 ratio based on weight).
Further, as Pantaleo teaches a catalyst that is substantially identical to the claimed catalyst, it is clear that the catalyst of Pantaleo is capable of interacting with microwave energy in the frequency range of 300 MHz to 50 GHz.
Further, while there is no disclosure that the catalyst of Pantaleo is a multifunctional catalyst as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., as a multifunctional catalyst, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 13, 16, and 17, Pantaleo teaches the multifunctional catalyst of claim 1, wherein the Ni crystallite size is 44 nm (co-precipitation) and 30 nm (wet-impregnation) and the support crystallite size is 37 nm (co-precipitation) and 27 nm (wet-impregnation) (Pantaleo, p. 138, Table 1) (i.e., claim 16, catalyst support has a particle size of 37 nm or 27 nm; claim 17, the catalyst metal has a particle size of 44 nm or 30 nm). Therefore, the particle size is clearly greater than 10 nm as the support and metal are both greater than 10 nm, but less than 50 μm, as the support and metal combined is not greater than 81 nm (co-precipitation) and 57 nm (wet-impregnation) (i.e., claim 13).
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Pantaleo, as applied to claim 1 above, and further in view of Wang et al. (“Lithium and lanthanum promoted Ni-Al2O3 as an active and highly coking resistant catalyst layer for solid-oxide fuel cells operating on methane”, 2011) (Wang).
Regarding claims 10-12, Pantaleo teaches the multifunctional catalyst of claim 1, but does not explicitly teach wherein the catalyst promoter is Li, Na, K, Mg, Ca, Ba, Cs, or combination thereof; wherein the promoter is present in an amount from about 2 wt% to about 6 wt%; or wherein the total wt% of both the catalyst metal and catalyst promoter is from about 3 wt% to about 10 wt%.
With respect to the difference, Wang teaches a lithium, lanthanum, and calcium promoted Ni-Al2O3 catalysts (Wang, Abstract) (i.e., claim 10, the promoter is Li and Ca). Wang teaches the nickel content in all catalysts is 7 wt%, the Li content in the LiLaNi-Al2O3 is 1 wt%, which falls within the claimed range of the total weight percent of both the catalyst metal and the catalyst promoter (i.e., claim 12); and the Ca content in the CaLaNi-Al2O3 is 3.75 wt%, which falls within the claimed range of the catalyst promoter present (i.e., claim 11) (Wang, p. 92, Table 1).
As Wang expressly teaches, the promoter improves the resistance to coking and catalytic stability and activity for partial oxidation (Wang, Abstract).
Wang s analogous art as it is drawn to a nickel-based partial oxidation catalyst comprising lanthanum oxide (Wang, Abstract).
In light of the motivation of including Li and Ca as promoters as disclosed by Wang, it therefore would have been obvious to one of ordinary skill in the art to modify the catalyst of Pantaleo by including Li and Ca as promoters in order to improve the resistance to coking and catalytic stability and activity, and thereby arrive at the claimed invention.
Response to Arguments
In response to the amendments to claims 5, 9, and 15, the previous claim objections and 112(d) rejection are withdrawn from the record.
Upon further consideration of claims 1, 8-9, and 11-12, it is noted that claim 1 and its dependent claims are subjected to 35 U.S.C. 112(a) new matter issues and claims 8-9 and 11-12 are rejected under 35 U.S.C. 112(b), as set forth above.
In response to Applicants' remark, regarding the double patenting rejection to be held in abeyance, Applicants’ request that the double patenting rejections to be held in abeyance is noted. However, the double patenting rejection will be maintained until such time as the rejection is properly overcome (see MPEP IB and IB1).
In response to the amendment regarding the catalyst metal is not Ru if it is only one metal and based on applicant’s remarks filed on pages 5-13 regarding 35 U.S.C. 102 and 103 rejections over Wang and Wang in view of Jiang, it is agreed that Wang would not meet the present claims. However, the amendment necessitates a new set of rejection as set forth above using Pantaleo.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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