DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 3 March 2026, in the matter of Application No. 17/885,006. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
Claims 1-2, 7, 11, and 17 have been amended.
Claims 18-20 have been newly added.
Thus, claims 1-20 represent all claims currently under consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on3 March 2026 has been entered.
REJECTIONS WITHDRAWN
The status for each rejection and/or objection in the previous Office Action is set out below.
Claim Objections
Applicant’s amendments have fully overcome the objection to claim 17.
35 U.S.C.§ 102
Applicant’s amendments and arguments filed 3 March 2026, wherein on p. 6-10 of the response Applicant argues that Ding does not teach each and every feature of amended claim 1, which now incorporates the limitation wherein the carbon dioxide source is not sodium bicarbonate as one of the metal bicarbonates. Although the teachings of Ding include Na2CO3, Ding discloses “no formate was formed” in the example using Na2CO3 (Ding; Supporting Information, page7, paragraph 1 and Figure S4 and page 8, paragraph 1), and Ding does not disclose examples using K, Li, Rb, or Cs.
These arguments have been fully considered and are persuasive to overcome the rejections of claims 1 and 3-9 under 35 U.S.C. 102(a)(1) as being anticipated Ding et al. (ChemSusChem 2018, 11, 2029-2034 with Supporting Information; IDS of 07-07-2023; PTO-892 of 06-16-2025; hereinafter “Ding”) on record of the Office Action dated 12 December 2025. Therefore, the rejections are withdrawn.
35 U.S.C.§ 103
Applicant’s amendments and arguments filed 3 March 2026, wherein on p. 10-15 of the response Applicant argues that a person of ordinary skill in the art would not have had a reasonable expectation of success modifying Ding in view of Banerjee because Ding discloses that no formate was formed when sodium carbonate was used as a reactant (Ding; Supporting Information, page7, paragraph 1 and Figure S4 and page 8, paragraph 1). Applicant further argues that the skilled artisan would not have looked to the high-temperature (320 ºC) process of Banerjee (Table 2) for modifications to Ding’s room temperature (20 ºC) process, especially since Ding discloses that sodium carbonate does not form formate. Therefore, the skilled artisan would not have a reasonable expectation of success combine Ding and Banerjee to arrive at a metal carbonate of K, Rb, or Cs as recited in amended claim 10. Applicant further argues that claims 2 and 12-13 are patentable over the cited art at least by virtue of their dependency from claim 1, and that claims 11 and 14-17 are patentable over the cited art at least by virtue of their dependency from claim 10.
These arguments have been fully considered and are persuasive to overcome the rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over Ding, in view of K. A. Suerbaev (Eurasian Chemico-Technological Journal, 2010, 12, 105-115; PTO-892 of 06-16-2025; hereinafter “Suerbaev”), the rejections of claims 10-11, 14, and 17 under 35 U.S.C. 103 as being unpatentable over Ding, in view of Banerjee et al. (ACS Cent. Sci., 2018, 4, 606-613; PTO-892 of 06-16-2025; hereinafter “Banerjee”), and the rejections of claims 12-13 under 35 U.S.C. 103 as being unpatentable over Ding, in view of H. Lin (US 2016/0137573 A1; IDS of 08-10-2022; hereinafter “Lin”) on record of the Office Action dated 12 December 2025. Neither Ding nor Ding in combination with the cited prior art would sufficiently motivate the skilled artisan to arrive at the method of amended claim 1 or claim 10. Therefore, the rejections are withdrawn.
Double Patenting
In view of Applicant’s amendments and arguments filed 3 March 2026 and the withdrawn 102 and 103 rejections detailed above, the rejections of claims 1-17 on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-6, and 9 of U.S. Patent No. 11,607,674 B2 in view of Ding on record of the Office Action dated 12 December 2025 are hereby withdrawn.
REJECTIONS-MAINTAINED, MODIFIED, & NEW
The below rejections are modified in view of the amendments to the claims. Modifications are bolded below.
NEW Claim Objections
Claim 7 is objected to because of the following informalities:
In line 7, “…the metal bicarbonates includes…” should read “…the metal bicarbonates include…”
Claim 10 is objected to because of the following informalities:
In line 8, “…isopropanol, t-butanol.” should read “…isopropanol, and t-butanol.”
Claim 11 is objected to because of the following informalities:
In lines 1-2, “…wherein wherein…” should read “…wherein...”
Claim 13 is objected to because of the following informalities:
In line 1, “…the aqueous solution…” should read “…wherein the aqueous solution...”
Claim 14 is objected to because of the following informalities:
In lines 1-2, “The method of claim 10 the metal…” should read “The method of claim 10, wherein the metal…”
Claim 16 is objected to because of the following informalities:
In line 2, “…isopropanol, t-butanol.” should read “…isopropanol, and t-butanol.”
Claim 20 is objected to because of the following informalities:
In line 2, “…Cs2CO3, KHCO3, and KHCO3.” should read “…Cs2CO3, and KHCO3.”
Appropriate correction is required.
NEW Claim Rejections - 35 USC § 102 – Necessitated by Amendment
In the recent response filed 3 March 2026, Applicant’s amendments and remarks were found to be persuasive to overcome the rejections of claims 1 and 3-9 under 35 U.S.C. 102(a)(1) as being anticipated Ding et al. (ChemSusChem 2018, 11, 2029-2034 with Supporting Information; IDS of 07-07-2023; PTO-892 of 06-16-2025; hereinafter “Ding”) on record of the Office Action dated 12 December 2025, as detailed above. However, a new search necessitated by amendment resulted in new rejections under 35 U.S.C. 102(a)(1) as detailed herein. The previous claim rejections can be found on pages 3-5 of the Office Action dated 12 December 2025.
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 5-7, 11, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated Su et al. (“Simultaneously Converting Carbonate/Bicarbonate and Biomass to Value-added Carboxylic Acid Salts by Aqueous-phase Hydrogen Transfer”; ACS Sustainable Chem. Eng. 2015, 3, 195-203; hereinafter “Su”).
Regarding claim 1, Su discloses a novel approach to coproduce value-added carboxylic acids via a one-pot aqueous-phase hydrogen transfer (APHT) process, in which hydrogen in biomass molecules is transferred to carbonate/bicarbonate ions over supported noble metal nanocatalysts (Su; Abstract). Su further discloses that in mild hydrothermal media, a variety of biomass derived alcohols or polyols have been efficiently converted to carboxylic acids, while simultaneously, formates have been obtained without using external H2 (Su; Abstract). Of particular note, Su discloses the reduction of 1 M Na2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 11.6 and the reduction of 1 M K2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 12.1, respectively, wherein glycerol acts as the source of H2 (Su; page 196, Table 1, entries 10 and 12; page 199, Col. 2, paragraph 1). Glycerol is a hydrocarbon containing 3 hydroxy groups and is also an alcohol containing 3 carbon atoms, in a manner consistent with the limitations of the instant claim. Furthermore, the reaction pH values of 11.6 and 12.1 disclosed in the examples of Su detailed above reside within the range recited in the instant claim. Thus, the method of Su anticipates every limitation of instant claim 1.
Regarding claim 3 depending from claim 1, the method of Su discloses the use of catalytic palladium supported on activated carbon (Su; page 196, Table 1, entries 10 and 12).
Regarding claims 5 and 18-19 depending from claim 1, Su teaches reaction examples utilizing 1 M Na2CO3 or 1 M K2CO3 in solution as the carbon dioxide source (Su; page 196, Table 1, entries 10 and 12).
Regarding claim 6 depending from claim 1, Su teaches Su teaches reaction examples utilizing 1 M Na2CO3 or 1 M K2CO3 with 1 M glycerol (Su; page 196, Table 1, entries 10 and 12). Su further teaches that glycerol donates 1 mole of hydrogen per mole of glycerol and CO2-derived salts donate 1 mole of carbon dioxide per mole of salt (Su; page 197, Scheme 1; page 198, Scheme 2). Therefore, the ratio of the hydrogen source and the carbon dioxide source is 1.0, and this ratio resides within the range of 0.1 to 10 recited in the instant claim.
Regarding claim 7 depending from claim 1 and claims 11 and 17 depending from claim 7, Su teaches reaction examples utilizing Na2CO3 or K2CO3, and therefore teaches the use of metal carbonates that include Na and K (Su; page 196, Table 1, entries 10 and 12).
NEW Claim Rejections - 35 USC § 103 – Necessitated by Amendment
In the recent response filed 3 March 2026, Applicant’s amendments and remarks were found to be persuasive to overcome the rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over Ding et al. (ChemSusChem 2018, 11, 2029-2034 with Supporting Information; IDS of 07-07-2023; PTO-892 of 06-16-2025; hereinafter “Ding”), in view of K. A. Suerbaev (Eurasian Chemico-Technological Journal, 2010, 12, 105-115; PTO-892 of 06-16-2025; hereinafter “Suerbaev”), the rejections of claims 10-11, 14, and 17 under 35 U.S.C. 103 as being unpatentable over Ding, in view of Banerjee et al. (ACS Cent. Sci., 2018, 4, 606-613; PTO-892 of 06-16-2025; hereinafter “Banerjee”), and the rejections of claims 12-13 under 35 U.S.C. 103 as being unpatentable over Ding, in view of H. Lin (US 2016/0137573 A1; IDS of 08-10-2022; hereinafter “Lin”) on record of the Office Action dated 12 December 2025, as detailed above. However, a new search necessitated by amendment resulted in new rejections under 35 U.S.C. 103 as detailed herein. The previous claim rejections can be found on pages 7-18 of the Office Action dated 12 December 2025.
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, 3-8, 11-12, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Su et al. (“Simultaneously Converting Carbonate/Bicarbonate and Biomass to Value-added Carboxylic Acid Salts by Aqueous-phase Hydrogen Transfer”; ACS Sustainable Chem. Eng. 2015, 3, 195-203; hereinafter “Su”).
Regarding claim 1 and claims 3-4, 7-8, 12, and 20 depending from claim 1, the teachings of Su were discussed in the previous rejections and are incorporated herein. Further regarding claim 1, Su teaches that the best results in terms of the highest glycerol conversion, the highest yield of formate, and the highest catalytic TON were obtained with Na2CO3 and K2CO3 as the carbon dioxide source and these results are superior to those obtained with NaHCO3 (Su; page 196, Table 1, entries 1, 2-10 and 12; page 199, Col. 2, paragraph 1). Thus, the teachings of Su would motivate the skilled artisan to exclude the use of sodium bicarbonate, in a manner consistent with instant claim 1.
Further regarding claim 1 and claims 4, 7, and 20 depending from claim 1, Su teaches a reaction example wherein the carbon dioxide source is CO2 gas, wherein NaOH was used to adjust the pH value to 8.0 (Su; page 196, Table 1, entry 13 and footnote d). In addition, Su teaches a reaction example wherein the carbon dioxide source is KHCO3 at pH 8.3 (Su; page 196, Table 1, entry 11).
Although Su teaches the use of carbon dioxide molecules and KHCO3 as the carbon dioxide source in a manner consistent with instant claims 1 and 20, and the use of NaOH (i.e., a basic material) to adjust the pH of the solution in a manner consistent with the limitation of instant claim 4, Su fails to teach a reaction solution with a pH within a range of 10 to 14 in the examples using CO2 and KHCO3, as recited in instant claim 1.
However, Su does teach the reduction of 1 M Na2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 11.6 and the reduction of 1 M K2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 12.1, respectively, as detailed above, and these reaction examples also provide the highest yields of formate (Su; page 196, Table 1, entries 10 and 12; page 199, Col. 2, paragraph 1).
Furthermore, Su teaches that in aqueous media, CO2 (in the form of bicarbonate/carbonate ions, HCO3–/CO32–) can be readily reduced with H2 to form products including formic acid (Su; page 195; Col. 1, paragraph 1), and Su also teaches that bicarbonate/carbonate ions can be generated from CO2 and NaOH to facilitate the reactions, with the more basic reactions performing the best (Su; page 196, Table 1, entries 1, 2-10 and 12; page 199, Col. 2, paragraph 1). Therefore, it would be prima facie obvious to any sources of CO2, provided that the pH is sufficiently basic to provide enough bicarbonate/carbonate ions for the ensuing hydrogenation to formate. The skilled artisan would further recognize that the concentration of base, specifically carbonate, is critical to achieve high formate yields as taught by Su (Su; page 196, Table 1, entries 10 and 12; page 199, Col. 2, paragraph 1), it the skilled artisan would recognize that more carbonate in the reaction solution can be predictably obtained by adding more carbonate or CO2 and bicarbonate with excess base. Thus, the skilled artisan could reasonably modify the reaction pH to within the range of 10-14 to pursue improved yields of formate with a reasonable expectation of success. Such an endeavor would be the result of routine experimentation that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the embodiment of instant claim 1 wherein the carbon dioxide source is carbon dioxide molecules, or the limitation of instant claims 1, 7, and 20 wherein the carbon dioxide source is KHCO3 (i.e., a metal bicarbonate) by adjusting the pH of the solution with a basic material (i.e., NaOH) as recited in instant claim 4 to levels of 11.6 to 12.1 based on the teachings of Su alone through means of routine experimentation. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a method that uses CO2 or KHCO3 as the carbon dioxide source that may impart improved yields of formate, as described above.
Regarding claim 2 depending from claim 1, Su teaches that in aqueous media, CO2 (in the form of bicarbonate/carbonate ions, HCO3–/CO32–) can be readily reduced with H2 to form products including formic acid (Su; page 195; Col. 1, paragraph 1). Su further teaches that bicarbonate/carbonate ions can be generated from CO2 and NaOH to facilitate the reactions, with the more basic reactions performing the best (Su; page 196, Table 1, entries 1, 2-10 and 12; page 199, Col. 2, paragraph 1). Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the method of Su.
Further regarding claim 3 and claim 12 depending from claim 1, Su teaches that other carbon supported noble metal catalysts including Pt, Ru, and Rh are also active in the disclosed method (Su; page 196; Table 1, page 197, Col. 2, entries 5-7). Although the reaction examples disclosed by Su are directed toward the reduction of NaHCO3 at pH 8.0, the skilled artisan could predictably substitute the Pd/AC catalyst used in reaction entries 10 (i.e., Na2CO3 at pH 11.6) or 12 (i.e., K2CO3 at pH 12.1) of Su with Pt/AC, Ru/AC, or Rh/AC to pursue routine optimization of the hydrogenation method with a reasonable expectation of success. Such an endeavor would result in the simple substitution of one known element for another to obtain predictable results, as described in MPEP § 2143(I)(B), and MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed method based on the teachings of Su.
Further regarding claim 12, absent any demonstration of criticality, there is no clear indication in the present application that the recited metals are critical to the claimed invention, which would have supported the non-obviousness of the simultaneous conversion of a hydrogen source and a carbon dioxide source into a formate, wherein the simultaneous conversion is performed in the presence of a catalyst has a form in which one or more metals selected from among ruthenium (Ru), iridium (Ir), rhodium (Rh), and gold (Au) are supported on a support, as recited in instant claim 12 and in claim 1 on which the instant claim depends. Although the instant application shows 40 working examples of the instantly claimed method (Specification; pages 13-23), all of these examples are carried out in the presence of Pt/C and Pd/C. Therefore, it is unclear to what extent (if any) the recited metals contribute to the criticality of the claimed invention, and as a result the present application does not clearly demonstrate a criticality for the metals recited in instant claim 12.
Regarding claim 8 depending from claim 1, Su teaches reaction examples utilizing 1 M glycerol in 20 mL H2O (Su; page 196, Table 1, entries 10 and 12). This corresponds to a concentration of about 9.2% by weight, and resides close to the range recited in the instant claim. MPEP § 2144.05(I) states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”
Claims 9-10, 13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Su et al. (“Simultaneously Converting Carbonate/Bicarbonate and Biomass to Value-added Carboxylic Acid Salts by Aqueous-phase Hydrogen Transfer”; ACS Sustainable Chem. Eng. 2015, 3, 195-203; hereinafter “Su”) as applied to claims 1, 3-8, 11-12, and 17-20 above, and further in view of H. Lin (US 2016/0137573 A1; IDS of 08-10-2022; hereinafter “Lin”).
Regarding claims 9 and 13 depending from claim 1, Su teaches a reaction pressure of 400 psi (Su; page 196, Table 1, reaction conditions footnote). A pressure of 400 psi corresponds to about 27.6 bar, and therefore the reaction pressure of Su resides within the range recited in instant claim 9.
Su fails to teach wherein the reaction is performed at a temperature in a range of 0 ºC to 50 ºC, as recited in instant claim 9; and wherein the aqueous solution contains at least one of n-propanol, isopropyl alcohol, and t-butanol as recited in instant claim 13.
Further regarding claim 10 and claims 15-16 depending from claim 10, Su teaches a novel approach to coproduce value-added carboxylic acids via a one-pot aqueous-phase hydrogen transfer (APHT) process, in which hydrogen in biomass molecules is transferred to carbonate/bicarbonate ions over supported noble metal nanocatalysts (Su; Abstract). Su further discloses that in mild hydrothermal media, a variety of biomass derived alcohols or polyols have been efficiently converted to carboxylic acids, while simultaneously, formates have been obtained without using external H2 (Su; Abstract). Of particular note, Su discloses the reduction of 1 M K2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 12.1, respectively, wherein glycerol acts as the source of H2 (Su; page 196, Table 1, entries 10 and 12; page 199, Col. 2, paragraph 1). The skilled artisan would recognize that glycerol is a hydrocarbon containing 3 hydroxy groups.
Su fails to teach (1) wherein the reaction is performed in an aqueous solution containing at least one of ethanol, n-propanol, isopropanol, or t-butanol as recited in instant claim 10; (2) the method of claim 10, wherein the simultaneous conversion is performed in the presence of a catalyst, and the catalyst has a form in which one or more metals selected from ruthenium (Ru), iridium (Ir), rhodium (Rh), and gold (Au) are supported on a support, as recited in instant claim 15; and (3) wherein the aqueous solution contains at least one of n-propanol, isopropanol, and t-butanol, as recited in instant claim 16.
These deficiencies are addressed by Lin, who teaches the following.
Lin teaches methods and catalyst systems for carbon dioxide conversion, wherein a heterogeneous catalyst system is used to convert CO2-derived compounds other than sodium bicarbonate to formate, formic acid, or a mixture thereof in the presence of H2 gas at a pressure ranging from 350 psi to 450 psi and a temperature of from 20 ºC to 80 ºC (Lin; Title; Abstract; claims 1 and 9 paragraph [0006]). The CO2-derived compound includes potassium bicarbonate, potassium carbonate, and sodium carbonate (Lin; claim 11).
Further regarding claim 9, Lin teaches an embodiment wherein the hydrogenation of K2CO3 to formate takes place at room temperature and at a pressure of 2.75 MPa, and Lin further teaches that increasing the reaction temperature from 20 ºC to 80 ºC increases hydrogenation rates (Lin; paragraphs [0120]-[0121]; Table 2, entry 4). The reaction pressure range of 350 psi to 450 psi corresponds to a pressure range of 24.1 bar to 31 bar and a reaction pressure of 2.75 MPa corresponds to a pressure of 27.5 bar. Therefore, the reaction pressures and temperatures described in the method of Lin reside within or overlap with the ranges recited in instant claim 9. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Further regarding claims 10 and 16, Furthermore, Lin teaches that exemplary solvents that can be used in the methods disclosed include water, an alcohol or a combination thereof, and suitable alcohols include but are not limited to ethanol, 1-propanol, 2-propanol, butanol, and isobutanol (Lin; claims 5-7; paragraphs [0013] and [0086]). One of ordinary skill in the art would recognize that 1-propanol is also known as n-butanol, and 2-propanol is also known as isopropyl alcohol, in a manner consistent with instant claim 13. Furthermore, butanol and isobutanol are position isomers of t-butanol. MPEP § 2144.09(I) states that “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.” and MPEP § 2144.09(II) states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” Of particular note, Lin teaches that including ethanol as a co-solvent improves the yield as the solubility of hydrogen in ethanol is one magnitude larger than in water, so increasing the proportion of ethanol can facilitate the hydrogenation reaction (Lin; paragraphs [0140] and [0146]). Finally, Lin teaches that organic solvents, such as ethanol, 1-propanol, and 2-propanol, have a great improvement effect on the hydrogenation of CO2 (Lin; paragraph [0152]).
Regarding claim 15, Su teaches that other carbon supported noble metal catalysts including Pt, Ru, and Rh are also active in the disclosed method (Su; page 196; Table 1, page 197, Col. 2, entries 5-7). In addition, Lin teaches that the metal of the catalyst system can be selected from a Group 8 metal, a Group 9 metal, or a Group 10 metal, and in particular disclosed embodiments, the metal is selected from Pd, Ru, Rh, Pt, or Ni, and the support material can be a hydrophilic or hydrophobic support material (Lin; paragraph [0080]). Lin further teaches that the metal component used in combination with a support material can be alloyed with one or more additional metals such as, but not limited to, gold (Au), rhodium (Rh), ruthenium (Ru), and iridium (Ir) (Lin; paragraph [0084]).
Further regarding claim 15, absent any demonstration of criticality, there is no clear indication in the present application that the recited metals are critical to the claimed invention, which would have supported the non-obviousness of the simultaneous conversion of a hydrogen source and a carbon dioxide source into a formate, wherein the simultaneous conversion is performed in the presence of a catalyst has a form in which one or more metals selected from among ruthenium (Ru), iridium (Ir), rhodium (Rh), and gold (Au) are supported on a support, as recited in instant claim 12 and in claim 1 on which the instant claim depends. Although the instant application shows 40 working examples of the instantly claimed method (Specification; pages 13-23), all of these examples are carried out in the presence of Pt/C and Pd/C. Therefore, it is unclear to what extent (if any) the recited metals contribute to the criticality of the claimed invention, and as a result the present application does not clearly demonstrate a criticality for the metals recited in instant claim 12.
The prior art as taught by Su and Lin reside in the closely overlapping technical area of formate production from the hydrogenation of CO2-derived compounds including metal carbonates, and are therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would be sufficiently motivated to incorporate the teachings of Lin into the method of Su to pursue a reaction temperature range (i.e., from 20 ºC to 80 ºC) that overlaps with the range recited in instant claim 9 because Lin demonstrates that metal carbonates can be hydrogenated in this temperature range and at a pressure identical to the method of Su. Such an endeavor would be the result of routine optimization of reactions conditions that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In addition, the skilled artisan would be sufficiently motivated to incorporate the teachings of Lin into the method of Su to implement an alcohol co-solvent such as ethanol, 1-propanol (i.e., n-propanol) or 2-propanol (i.e., isopropyl alcohol) solvent of Lin in a manner consistent with instant claims 10, 13, and 16 to pursue a method for improving the hydrogenation of CO2 with a reasonable expectation of success. Such an endeavor would result in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A), and applying a known technique to a known device (method, or product) ready for improvement to yield predictable results as described in MPEP § 2143(I)(D). Furthermore, one of ordinary skill would be sufficiently motivated to incorporate the scope of catalyst metals as taught by both Su and Lin in a manner consistent with the limitation of instant claim 15 to pursue routine optimization of the CO2 hydrogenation method with a reasonable expectation of success. MPEP § 2144.05(II).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Su to incorporate the teachings of Lin to arrive at the instantly claimed invention as recited in instant claims 9-10, 13, and 15-16. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a great improvement effect on the hydrogenation of CO2 and the routine optimization of chemical synthesis procedures, as detailed above.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Su et al. (“Simultaneously Converting Carbonate/Bicarbonate and Biomass to Value-added Carboxylic Acid Salts by Aqueous-phase Hydrogen Transfer”; ACS Sustainable Chem. Eng. 2015, 3, 195-203; hereinafter “Su”), in view of H. Lin (US 2016/0137573 A1; IDS of 08-10-2022; hereinafter “Lin”) as applied to claims 9-10, 13, and 15-16 above, and further in view of Ainembabazi et al. (“Efficient transfer hydrogenation of carbonate salts from glycerol using water-soluble iridium N-heterocyclic carbene catalysts”; Green Chem. 2020, 22, 6093-6104; hereinafter “Ainembabazi”).
Regarding claim 14, claim 10 is rendered obvious over Su and Lin, as detailed above.
Su and Lin fail to teach wherein the metal is at least one of Rb and Cs, as recited in instant claim 14.
However, Ainembabazi teaches the transfer hydrogenation of CO2 and carbonates from biomass-derived alcohols, such as glycerol, to afford formic and lactic acid (Ainembabazi; Abstract). Of particular note, Ainembabazi teaches that the cation of the carbonate salt significantly impacts catalytic activity, with highest activity observed with Cs2CO3 which demonstrated greater turnover numbers (TONs) of formic acid and greater glycerol conversion than Li2CO3, Na2CO3, or K2CO3 (Ainembabazi; Abstract; page 6098, Col. 1, paragraph 1 and Fig. 4; page 6099, Fig. 5). In addition, Ainembabazi teaches that the stability of the product formate salts are likely to be more favourable with more polarizable cations, such as Cs+ (Ainembabazi; page 6098; Col. 2, paragraph 3). Ainembabazi further teaches that catalytic amounts of Cs+ significantly enhance activity with K2CO3 to levels comparable to those obtained with Cs2CO3 (Ainembabazi; page 6098; Col. 2, paragraph 4; page 6102, Col. 1, paragraph 1). T
The prior art as taught by Su, Lin, and Ainembabazi reside in the closely overlapping technical area of formate production from the hydrogenation of CO2-derived compounds including metal carbonates. Furthermore, both Su and Ainembabazi teach methods for the production of formate from K2CO3 via transfer hydrogenation with glycerol as the H2 source. As such, the skilled artisan would be sufficiently motivated to substitute the use of K2CO3 in the method of Su with Cs2CO3 as taught by Ainembabazi, or alternatively to further incorporate the teachings of Ainembabazi to implement the use of Cs2CO3 in combination with K2CO3 in the method of Su to pursue a method with enhanced catalytic activity for the production of formate with greater glycerol conversion with a reasonable expectation of success. Such an endeavor would result in the simple substitution of one known element for another to obtain predictable results, as described in MPEP § 2143(I)(B), or combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A), respectively.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Su and Lin to incorporate the teachings of Ainembabazi to implement the use of Cs2CO3 to arrive at the instantly claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a method with enhanced catalytic activity for the production of formate with greater glycerol conversion, as detailed above.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed method. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
NEW Double Patenting Rejections – Necessitated by Amendment
In the recent response filed 3 March 2026, Applicant’s amendments and remarks were found to be persuasive to overcome the rejections of claims 1-17 on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-6, and 9 of U.S. Patent No. 11,607,674 B2 in view of Ding on record of the Office Action dated 12 December 2025, as detailed above. However, a new search necessitated by amendment resulted in new rejections on the ground of nonstatutory double patenting as detailed herein. The previous claim rejections can be found on pages 19-27 of the Office Action dated 12 December 2025.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, and 9 of U.S. Patent No. 11,607,674 B2 in view of Su et al. (“Simultaneously Converting Carbonate/Bicarbonate and Biomass to Value-added Carboxylic Acid Salts by Aqueous-phase Hydrogen Transfer”; ACS Sustainable Chem. Eng. 2015, 3, 195-203; hereinafter “Su”) and H. Lin (US 2016/0137573 A1; IDS of 08-10-2022; hereinafter “Lin”).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claims 1 and 10, claim 1 of U.S. Patent No. 11,607,674 B2 teaches a method of converting carbon dioxide to formic acid, comprising: reacting at least one among carbon dioxide and/or carbon dioxide-derived inorganic carbonate with hydrocarbon containing at least one hydroxyl group, in presence of a catalyst in which, as active metals in a catalyst complex, at least one of noble metals in Group VIII other than palladium (Pd) and at least one selected from among transition metals in Group VIII other than the noble metals and palladium (Pd) are supported on a support. In addition, claims 5-6 of U.S. Patent No. 11,607,674 B2 teaches that the reaction is carried out with a hydrocarbon containing at least one hydroxyl group selected from among a monohydric alcohol including butanol and propanol or a mixture thereof.
Thus, claims 1 and 5-6 of U.S. Patent No. 11,607,674 B2 teach every limitation of instant claim 1 with the exception of (1) the simultaneous conversion reaction is performed in an aqueous solution; and (2) the solution in which the hydrogen source and the carbon dioxide source are dissolved is adjusted to have a pH within a range of 10 to 14. In addition, claims 1 and 5-6 of U.S. Patent No. 11,607,674 B2 teach every limitation of instant claim 1 with the exception of the simultaneous conversion reaction is performed in an aqueous solution
This deficiency is remedied by Su, who teaches the following.
Su discloses a novel approach to coproduce value-added carboxylic acids via a one-pot aqueous-phase hydrogen transfer (APHT) process, in which hydrogen in biomass molecules is transferred to carbonate/bicarbonate ions over supported noble metal nanocatalysts (Su; Abstract). Su further discloses that in mild hydrothermal media, a variety of biomass derived alcohols or polyols have been efficiently converted to carboxylic acids, while simultaneously, formates have been obtained without using external H2 (Su; Abstract). Of particular note, Su discloses the reduction of 1 M Na2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 11.6 and the reduction of 1 M K2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 12.1, respectively, wherein glycerol acts as the source of H2 (Su; page 196, Table 1, entries 10 and 12; page 199, Col. 2, paragraph 1). These reaction examples also provide the highest yields of formate (Su; page 196, Table 1, entries 10 and 12; page 199, Col. 2, paragraph 1). Glycerol is a hydrocarbon containing 3 hydroxy groups and is also an alcohol containing 3 carbon atoms, in a manner consistent with the limitations of the instant claim. Furthermore, the reaction pH values of 11.6 and 12.1 disclosed in the examples of Su detailed above reside within the range recited in the instant claim.
The prior art as taught by U.S. Patent No. 11,607,674 B2 and Su, reside in the closely overlapping technical area of formate production from the conversion of CO2-derived compounds including metal carbonates. Furthermore, both U.S. Patent No. 11,607,674 B2 and Su teach methods for the production of formate from metal carbonates using a supported palladium catalyst with glycerol as the hydrocarbon containing at least one hydroxyl group (as recited in claim 7 of U.S. Patent No. 11,607,674 B2). As such, the skilled artisan would be sufficiently motivated to modify the method of U.S. Patent No. 11,607,674 B2 to incorporate the teachings of Su to implement the use of an aqueous solution of Na2CO3 at a pH of 11.6 or an aqueous solution of K2CO3 at a pH of 12.1 to pursue a method capable of producing high formate yields with a reasonable expectation of success. Such an endeavor would result in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A), respectively.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify U.S. Patent No. 11,607,674 B2 to incorporate the teachings of Su to arrive at the claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a method capable of producing high formate yields, as detailed above.
Regarding instant claim 2, claim 9 of U.S. Patent No. 11,607,674 B2 teaches that before reacting the hydrocarbon containing at least one hydroxyl group with the inorganic carbonate, reacting the carbon dioxide with at least one selected from among a metal, a metal salt, and an ammonium salt to produce the inorganic carbonate. This teaching of a carbon dioxide-derived metal carbonate reads directly on the instant claim.
Regarding instant claims 3, 12, and 15, claim 1 of U.S. Patent No. 11,607,674 B2 teaches a method of converting carbon dioxide to formic acid, as detailed above, wherein a catalyst including at least one of Pd supported on a support is used. Furthermore, claim 2 of U.S. Patent No. 11,607,674 B2 teaches that Ru, Ir, Rh, or Pt can also be used.
Regarding instant claims 4, 7, and 20, Su teaches a reaction example wherein the carbon dioxide source is CO2 gas, wherein NaOH was used to adjust the pH value to 8.0 (Su; page 196, Table 1, entry 13 and footnote d). In addition, Su teaches a reaction example wherein the carbon dioxide source is KHCO3 at pH 8.3 (Su; page 196, Table 1, entry 11).
Although Su teaches the use of carbon dioxide molecules and KHCO3 as the carbon dioxide source in a manner consistent with instant claims 1 and 20, and the use of NaOH (i.e., a basic material) to adjust the pH of the solution in a manner consistent with the limitation of instant claim 4, Su fails to teach a reaction solution with a pH within a range of 10 to 14 in the examples using CO2 and KHCO3, as recited in instant claim 1.
However, Su does teach the reduction of 1 M Na2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 11.6 and the reduction of 1 M K2CO3 with 1 M glycerol and catalytic Pd/AC in 20 mL H2O at a pH of 12.1, respectively, as detailed above, and these reaction examples also provide the highest yields of formate (Su; page 196, Table 1, entries 10 and 12; page 199, Col. 2, paragraph 1).
Thus, the skilled artisan could reasonably modify the NaOH-adjusted reaction examples of Su that uses CO2 and KHCO3 as the carbon dioxide source (Su; page 196, Table 1, entries 11 and 13, footnote d) to further adjust the pH to levels of 11.6 to 12.1 to pursue improved yields of formate with a reasonable expectation of success. Such an endeavor would be the result of routine experimentation that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on the teachings of U.S. Patent No. 11,607,674 B2 in view of Su.
Regarding instant claims 5 and 18-19, Su teaches reaction examples utilizing 1 M Na2CO3 or 1 M K2CO3 in solution as the carbon dioxide source (Su; page 196, Table 1, entries 10 and 12).
Regarding instant claim 6, Su teaches Su teaches reaction examples utilizing 1 M Na2CO3 or 1 M K2CO3 with 1 M glycerol (Su; page 196, Table 1, entries 10 and 12). Su further teaches that glycerol donates 1 mole of hydrogen per mole of glycerol and CO2-derived salts donate 1 mole of carbon dioxide per mole of salt (Su; page 197, Scheme 1; page 198, Scheme 2). Therefore, the ratio of the hydrogen source and the carbon dioxide source is 1.0, and this ratio resides within the range of 0.1 to 10 recited in the instant claim.
Regarding instant claims 7, 11 and 17, Su teaches reaction examples utilizing Na2CO3 or K2CO3, and therefore teaches the use of metal carbonates that include Na and K (Su; page 196, Table 1, entries 10 and 12).
Regarding instant claim 8, Su teaches reaction examples utilizing 1 M glycerol in 20 mL H2O (Su; page 196, Table 1, entries 10 and 12). This corresponds to a concentration of about 9.2% by weight, and resides close to the range recited in the instant claim. MPEP § 2144.05(I) states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”
Regarding instant claim 9, Su teaches a reaction pressure of 400 psi (Su; page 196, Table 1, reaction conditions footnote). A pressure of 400 psi corresponds to about 27.6 bar, and therefore the reaction pressure of Su resides within the range recited in instant claim 9.
Lin teaches methods and catalyst systems for carbon dioxide conversion, wherein a heterogeneous catalyst system is used to convert CO2-derived compounds other than sodium bicarbonate to formate, formic acid, or a mixture thereof in the presence of H2 gas at a pressure ranging from 350 psi to 450 psi and a temperature of from 20 ºC to 80 ºC (Lin; Title; Abstract; claims 1 and 9 paragraph [0006]). The CO2-derived compound includes potassium bicarbonate, potassium carbonate, and sodium carbonate (Lin; claim 11).
Further regarding claim 9, Lin teaches an embodiment wherein the hydrogenation of K2CO3 to formate takes place at room temperature and at a pressure of 2.75 MPa, and Lin further teaches that increasing the reaction temperature from 20 ºC to 80 ºC increases hydrogenation rates (Lin; paragraphs [0120]-[0121]; Table 2, entry 4). The reaction pressure range of 350 psi to 450 psi corresponds to a pressure range of 24.1 bar to 31 bar and a reaction pressure of 2.75 MPa corresponds to a pressure of 27.5 bar. Therefore, the reaction pressures and temperatures described in the method of Lin reside within or overlap with the ranges recited in instant claim 9. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
The prior art as taught by U.S. Patent No. 11,607,674 B2, Su, and Lin reside in the closely overlapping technical area of formate production from CO2-derived compounds including metal carbonates, and are therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would be sufficiently motivated to incorporate the teachings of Lin into the method of U.S. Patent No. 11,607,674 B2 and Su to pursue a reaction temperature range (i.e., from 20 ºC to 80 ºC) that overlaps with the range recited in instant claim 9 because Lin demonstrates that metal carbonates can be hydrogenated in this temperature range and at a pressure identical to the method of Su. Such an endeavor would be the result of routine optimization of reactions conditions that is non-inventive in nature. MPEP § 2144.05(II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of U.S. Patent No. 11,607,674 B2 and Su to incorporate the teachings of Lin to arrive at the instantly claimed invention through means of routine experimentation. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, the routine optimization of chemical synthesis procedures, as detailed above.
Regarding instant claims 13 and 16, claims 5-6 of U.S. Patent No. 11,607,674 B2 teaches that the reaction is carried out with a hydrocarbon containing at least one hydroxyl group selected from among a monohydric alcohol including butanol and propanol or a mixture thereof. The skilled artisan would recognize propanol as n-propanol, in a manner consistent with instant claims 13 and 16. Furthermore, propanol and butanol are positional isomers of isopropyl alcohol/isopropanol and t-butanol, respectively. MPEP § 2144.09(I) states that “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.” and MPEP § 2144.09(II) states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.”
Regarding instant claim 14 and further regarding instant claims 17-20, claim 1 of U.S. Patent No. 11,607,674 B2 teaches a method of converting carbon dioxide to formic acid, comprising: reacting at least one among carbon dioxide and/or carbon dioxide-derived inorganic carbonate with hydrocarbon containing at least one hydroxyl group, in presence of a catalyst in which, as active metals in a catalyst complex, at least one of noble metals in Group VIII other than palladium (Pd) and at least one selected from among transition metals in Group VIII other than the noble metals and palladium (Pd) are supported on a support. In addition, claim 9 of U.S. Patent No. 11,607,674 B2 teaches a before reacting the hydrocarbon containing at least one hydroxyl group with the inorganic carbonate, reacting the carbon dioxide with at least one selected from among a metal, a metal salt, and an ammonium salt to produce the inorganic carbonate. The claimed genus of inorganic carbonate can be further construed as at least one selected from among, for example, KHCO3, K2CO3, RbHCO3, Rb2CO3, CsHCO3, and Cs2CO3 (paragraph [0064]). MPEP § 804(II)(B)(1) states that “The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim.”
Conclusion
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/ Primary Examiner, Art Unit 1692
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