DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/05/2026 has been entered.
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 14-15, 20-22, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Rio et al. (“Stainless steel wire mesh-supported potassium-doped cobalt oxide catalysts for the catalytic decomposition of nitrous oxide”, 2012) (Rio).
Regarding claims 14 and 20-22, Rio teaches stainless steel wire mesh-supported potassium doped cobalt oxide catalysts for the catalytic decomposition of nitrous oxide (i.e., claim 20, used as a catalyst; claim 21, used as a catalyst in oxidation/decomposition of gases; claim 22, used as a catalyst for decomposition of N2O) (Rio, Title; Abstract), wherein the cobalt oxide catalyst is Co3O4 spinel (i.e., spinel crystal structure) (Rio, p. 39, Col. 2, line 2) (i.e., A is alkali metal potassium). Rio further teaches the molar ratio of K/Co is between 0 and 0.03 (Rio, p. 40, 2.1. Catalyst Synthesis), which overlaps with the range of the presently claimed A/Co atomic ratio. Further, when the ratio between K/Co is between 0 and 0.03, the atomic amount of K is from 0 to 0.09 (i.e., 0.09 K/3 Co = 0.03 atomic ratio), which overlaps with the claimed x value. Rio further teaches the crystal size is about 21 to about 27 nm (Rio, p. 41, Col. 2, lines 2-5), which falls within the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further, Rio teaches doping the cobalt spinel with small amount of alkali metals significantly increases the activity of the catalyst as the role of these agents is to increase the amount of oxygen adsorbed on cobalt ions and to promote the reduction of Co3+ to Co2+ through an electron donation effect, thus favouring the desorption of oxygen from the surface of the catalysts which is the controlling step of N2O decomposition (Rio, p. 39, Col. 2, lines 4-11).
Although there are no disclosures on the ratio of Co2+/Co3+ being between 0.55 and 0.80 as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of potassium in order to reduce the Co3+ to Co2+, including over the amounts that correspond to the ratio of the presently claimed, in order to favor the desorption of oxygen from the surface of the catalysts in N2O decomposition reactions.
Further, as Rio teaches the material that is substantially identical to the claimed material including the potassium dopant amount, crystallite size, and Co2+/Co3+ ratio, it is clear that the x value of between 0.02 and 0.3 would be inherent in the material of Rio (i.e., a non-stoichiometric spinel crystal structure).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Additionally, even though Rio teaches the intended use as a catalyst for the decomposition of nitrous oxide, the recitation in the claims that the material is “used as a catalyst; used as a catalyst in oxidation/decomposition of gases; and used as a catalyst for decomposition of N2O” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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.
Regarding claim 15, Rio teaches the material according to claim 14, wherein the specific surface area is up to a value of 52 m2/g (Rio, p. 41, Col. 2, lines 5-9), which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 28, Rio teaches the material according to claim 14, wherein the crystal size changes depending on the amount of potassium added (Rio, p. 41, Col. 2, lines 13-17).
Although there are no disclosures on the primary particle size equivalent to the crystallite size being about 8 nm to about 15 nm as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the particle size, including over the amounts presently claimed, in order to have the desired amount of potassium.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Rio, as applied to claim 14 above, and further in view of Klegova et al. (“Cobalt Oxide Catalysts on Commercial Supports for N2O Decomposition”, 2017) (Klegova).
Regarding claims 16 and 17, Rio teaches the material of claim 14, but does not explicitly teach a pore volume of between 0.2 cm3/g and 0.4 cm3/g or wherein the material is mesoporous.
With respect to the difference, Klegova teaches Co3O4 catalysts supported on different mesoporous supports for catalytic decomposition of N2O (Klegova, Title; Abstract). Klegova specifically teaches the presence of mesopores and their diameters are highly important parameters for the catalysts in shaped form (Klegova, p. 984, Col. 1, Paragraph 2), wherein the supports include TiO2 with a pore volume of 0.24 cm3/g (Klegova, Table 2), which falls within the claimed range, and wherein TiO2 has a high catalytic conversion (Klegova, p. 987, Col. 2, lines 1-2).
As Klegova expressly teaches, a small pore size usually causes a large surface area which is demanding for catalytic reactions, but with smaller pore size the rate of internal diffusion also decreases (Klegova, p. 984, Col. 1, Paragraph 2).
Klegova is analogous art as it is drawn to Co3O4 catalysts for N2O decomposition (Klegova, Abstract).
In light of the motivation of using a mesoporous support as disclosed by Klegova, it therefore would have been obvious to one of ordinary skill in the art to modify the support of Rio by using a mesoporous support such as TiO2 in order to have a larger surface area for the catalytic reaction, and thereby arrive at the claimed invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Rio, as applied to claim 14 above, and further in view of JP 5483723 B2 (JP’723).
The Examiner has provided a machine translation of JP 5483723 B2. The citation of the prior art in this rejection refer to the machine translation.
Regarding claim 19, Rio teaches the material according to claim 14, but does not explicitly teach wherein the alkali element A is Cs, x is 0.235, and y is 0.15.
With respect to the difference, JP’723 teaches cobalt tetroxide catalysts doped with alkali metal for the decomposition of nitrous oxide (JP’723, p. 1, Technical Field and Paragraph 3). JP’723 specifically teaches cobalt oxide doped with Cs (JP’723, p. 2, Paragraph 5), wherein the ratio of Cs to Co is 0.0005 to 0.05 (JP’723), which would result in a y value of 0.0015 to 0.15 (i.e., 0.0015 Cs/3 Co = 0.0005; 0.15 Cs/3 Co = 0.05), which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As JP’723 expressly teaches, the combination of cobalt oxide and Cs is superior in decomposition performance of N2O compared to the K (JP’723, p. 2, Paragraph 5).
JP’723 is analogous art as it is drawn to cobalt oxide catalysts doped with alkali metal for the decomposition of nitrous oxide (JP’723, p. 1, Technical Field and Paragraph 3).
In light of the motivation of doping cobalt oxide with Cs as disclosed by JP’723, it therefore would have been obvious to one of ordinary skill in the art to modify the catalyst of JP’723 by doping with Cs in order to have a superior decomposition performance of N2O, and thereby arrive at the claimed invention.
Further, as Rio, in view of JP’723, teaches the material that is substantially identical to the claimed material including the cesium dopant amount, crystallite size, and Co2+/Co3+ ratio, it is clear that the x value of between 0.235 would be inherent in the material of Rio, in view of JP’723.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Response to Arguments
In response to applicant’s remarks filed on pages 5-8 regarding the 35 U.S.C. 103 rejection over Zhang in view of Haneda and in view of evidence by Tang it is agreed that Zhang in view of Haneda and in view of evidence by Tang would not meet the present claims. However, a new set of rejection over 35 U.S.C. 103 using Rio is set forth above.
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.
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, Ching-Yiu Fung can be reached at (571)270-5713. 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.
/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
Prosecution Insights