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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/03/2026 has been entered.
Response to Amendment
The amendment filed on 02/03/2026 has been entered. Claims 1-4, 6-7, 10-14, 18-20 are pending in the application. Claims 12-14, 18-19 are withdrawn. Claims 5, 8-9, 15-17 are cancelled. Outstanding issues brought about by the amendment are addressed in the 112(b) section below.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 8 that Kunz does not teach complexing agents C selected from the group consisting of carboxylates and salts thereof.
However, Kunz is not relied upon to teach that limitation, Turkevich is.
Applicant argues on Pg. 8 that Turkevich does not teach the C:M molar ratio of the one or more complexing agents C to the one or more transition metals M is comprised in the range of from 10 to 50, or the transition metal nanoparticles isolated in (d) exhibit a weight-based average particle size D50 in a range of from 0.6 to 5 nm.
However, Turkevich is not relied upon to teach those limitations, Kunz is.
Applicant argues on top of page 9 that Kunz teaches a process which is carried out “in the absence of polymers, ligands, capping agents and surfactants”. The citrate of Turkevich would qualify as a ligand and/or capping agent. Therefore, the person of ordinary skill in the art would not look to the Turkevich reference to modify the teachings of Kunz.
However, claim 1 is now rejected over Turkevich in view of Kunz as described below. Reasons a person of ordinary skill in the art would look to Kunz to modify the teachings of Turkevich are described in the rejection below.
Applicant argues on page 10 that the Hagemeyer reference is not analogous art to the Kunz and Turkevich references.
However, Hagemeyer is no longer relied upon so the argument is moot.
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.
Claims 2-4, 6 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.
Claims 2-4, 6 recites “wherein the mixture provided in (a) and heated in (c)” which is indefinite because step (b) in claim 1 is not optional. It is not clear whether the process comprises step (b) or not.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-7, 11, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Turkevich et al (Palladium: Preparation and Catalytic Properties of Particles of Uniform Size”) in view of Kunz et al (Ep 3329990 A1) and Xu et al (US 20170304805 A1).
Regarding claim 1, Turkevich discloses a method for the preparation of uniform palladium particles of diameter from 55 to 450 angstrom (abstract, meeting limitation “a process for the preparation of transition metal nanoparticles”). 100 ml of 9.3 x 10-6 M PdCl2 solution (Pg. 875 right column par.2 meeting limitation “providing a mixture comprising one or more salts of one or more transition metals M wherein the one or more transition metals M comprise Pd and/or Pt”) was mixed with 200 ml of 3.4 x 10-2M sodium citrate solution in a liter flask (Pg. 875 right column par. 2 meeting limitation “one or more complexing agents C… wherein the one or more complexing agents C are selected from the group consisting of carboxylates and salts thereof”). The solution was diluted to 500 ml (Pg. 875 right column par. 2 meeting limitation “and a solvent system”) and was refluxed in an electric heating mantle for 6 hours (Pg. 875 right column par. 2 meeting limitation “heating the mixture obtained in (b) to a temperature … for obtaining a colloidal suspension of transition metal nanoparticles”). The pH of the reacting solution was also varied in the otherwise standard palladium-sodium citrate system (Pg. 876 left column par. 2 meeting limitation “adjusting the pH of the mixture provided in (a)”). At a pH of 6.1, the standard condition, uniform particles of 75 Å were observed with no aggregates (Pg. 876 left column par. 2 meeting limitation “a pH comprised in the range of from 4 to 8”). The method disclosed by Turkevich does not include polyvinyl sulfate and/or polyvinylpyrrolidone.
Turkevich does not disclose “a temperature in a range of from 80 °C to 120 °C”, “wherein the concentration of the transition metal nanoparticles in the colloidal suspension is in the range of from 0.2 to 3 wt.%”, “isolating the transition metal nanoparticles obtained in (c), wherein the transition metal nanoparticles thus isolated exhibit a weight-based average particle size D50 in a range of from 0.6 to 5 nm” and “wherein in the mixture provided in (a), the C : M molar ratio of the one or more complexing agents C to the one or more transition metals M is comprised in the range of from 10 to 50”.
Kunz discloses a method for preparing precious metal nanoparticles (Pg, Pd, Ir, Ru) (abstract). A method for preparing precious metal nanoparticles free of organic adsorbates that have a molar weight above 100 g/mol, comprising the steps: a) providing at least one inorganic precursor for the precious metal nanoparticle, i.e. one or more salts of one or more transition metals M, at least one mono-alcoholic solvent system, i.e. solvent system M, and at least one base, i.e. one or more complexing agent C, wherein at least one precious metal is selected from the group consisting of Pt, Pd, Ir and Ru and the at least one mono-alcohol in the at least one mono-alcoholic solvent system is methanol, ethanol or propanol ([0017]). b) mixing the at least one inorganic precursor for the precious metal nanoparticle, at least one mono-alcoholic solvent system and the at least one base in the absence of polymers, ligands, capping agents and surfactants, thereby obtaining a reaction mixture, so as to reduce the at least one inorganic precursor for the precious metal nanoparticle with the at least one mono-alcoholic solvent system, and c) obtaining the precious metal nanoparticles ([0017]). Preferably, the reflux temperature of the at least one mono-alcohol in the at least one mono-alcoholic solvent system is 65 °C to 90 °C ([0041]). The reflux temperature is selected depending on the boiling temperature of the at least one mono-alcohol used in the at least one mono-alcohol solvent system ([0041]).
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). In the instant case, the range taught by Kunz (65 °C to 90 °C) overlaps with the claimed range (80 °C to 120 °C). Therefore, the range in Kunz renders obvious the claimed range.
Since Kunz discloses the reflux temperature is selected depending on the boiling temperature of the solvent system, and since the solvent system in the method of Turkevich is water which has a boiling temperature of 100 °C, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the temperature to be in a range of from 80 °C to 120 °C.
Kunz further discloses in step c) the precious metal nanoparticles are separated and obtained from the at least one solvent system ([0044]). Preferably, the solid precious metal nanoparticles are obtained by centrifugation ([0058]).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to isolate the transition metal nanoparticles obtained in (c) in the method of Turkevich in order to obtain the nanoparticles as taught by Kunz.
Kunz further discloses the precious metal nanoparticle obtained in step c) has a particles size of preferably 1 to 4 nm ([0047]) which is within the claimed range of from 0.6 to 5 nm.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the transition metal nanoparticles thus isolated exhibit a weight-based average particle size D50 in a range of from 0.6 to 5 nm in the method of Turkevich since this particle size is a preferred embodiment taught by Kunz.
In a preferred embodiment of the present invention the molar ratio of the at least one base, i.e. one or more complexing agents C, to the at least one precursor of the precious metal nanoparticle in the reaction mixture obtained in step b), i.e. one or more transition metals M, is preferably 20 ([0043]) which is within the claimed range.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the C : M molar ratio of the one or more complexing agents C to the one or more transition metals M is comprised in the range of from 10 to 50 in the method of Turkevich since this molar ratio is a preferred embodiment taught by Kunz.
Regarding the limitation “wherein the concentration of the transition metal nanoparticles in the colloidal suspension is in the range of from 0.2 to 3 wt.%”, Xu discloses a colloidal dispersion comprising nanoparticles of one or more precious group metals ([0006]) the precious group metal nanoparticles are selected from the group consisting of Pt, Pd, alloys thereof, and combination thereof ([0008]). A method of making a PGMNP dispersion as described above… such methods generally comprise the steps of ([0054]): a) preparing a solution comprising: PGMNP precursors, wherein the PGMNP precursors are substantially free of halides, alkali metals, alkaline earth metals and sulfur compounds; at least one water soluble polymer suspension stabilizing agent; and a solvent; and b) combining the solution with at least one reducing agent so as to convert at least about 90% of the PGM to fully reduced metal ([0056]). In some embodiments, one or more steps of the method can be conducted at elevated temperature ([0058]). As prepared, the colloidal dispersions can have varying concentrations of nanoparticles, e.g., about 1% to about 10% by weight ([0075]).
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). In the instant case, the range taught by Xu (1% to about 10% by weight) overlaps with the claimed range (0.2 to 3 wt.%). Therefore, the range in Xu renders obvious the claimed range.
Xu further discloses the dispersions disclosed herein are considered to be highly stable ([0010]). For example, such dispersions can, in some embodiments, be shelf-stable for at least about 6 months or at least about 12 months at ambient temperature.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the concentration of the transition metal nanoparticles in the colloidal suspension to be in the range of from 0.2 to 3 wt.% in the method of Turkevich in order for the dispersion to be shelf-stable for 6 to 12 months as taught by Xu.
Regarding claim 2, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above including wherein the mixture does not comprise a polyvinyl sulfate, polyvinylpyrrolidone, a copolymer comprising vinylpyrrolidone, and/or a fatty acid-substituted or unsubstituted polyoxyethylene, see the mixture disclosed by Turkevich Pg. 875 right col. par. 2.
Regarding claim 3, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above including wherein the mixture does not comprise ascorbic acid, an ascorbate, formic acid, a formate, and/or a borohydride, see the mixture disclosed by Turkevich Pg. 875 right col. par. 2.
Regarding claim 4, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above including wherein the mixture provided in (a) and heated in (c) or obtained in (b) and heated in (c) consists of the one or more salts of one or more transition metals M, the one or more complexing agents C, the solvent system, and optionally one or more compounds employed for adjusting the pH of the mixture in (b) as discussed above.
Regarding claim 6, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above including wherein the mixture provided in (a) and heated in (c) or obtained in (b) and heated in (c) does not comprise a complexing agent other than the one or more complexing agents C, see the mixture disclosed by Turkevich Pg. 875 right col. par. 2.
Regarding claim 7, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above including the pH of the reacting solution was also varied in the otherwise standard palladium-sodium citrate system (Turkevich Pg. 876 left column paragraph 2). At a pH of 6.1, the standard condition, uniform particles of 75 Å were observed with no aggregates (Turkevich Pg. 876 left column paragraph 2), which is within the claimed range of from 5 to 7.
Regarding claim 10, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above and Xu further discloses in a method for synthesizing 100 g of 2% Pt colloidal solution, 40 g of PVP solution (0.02M) and 15.86 g of monoethanolamine Pt(IV) hexahydroxide (Pt-A) solution (12.61 wt. % Pt) and 13.39 g of H2O are mixed ([0082]).
15.86 g x 12.61 % = 1.99 g of Pt
1.99 g/ 195.08 g/mol= 0.0103 mol of Pt
0.743 mol water / 0.0103 mol of Pt = 72.48
13.39 g of water
13.39 g/ 18.02 g/mol= 0.743 mol of water
Therefore, Xu discloses a S : M molar ratio of the solvent system S to the one or more transition metals M of 72.48 which is within the claimed range of 50 to 3500.
Xu further discloses as prepared, the colloidal dispersions can have varying concentrations of nanoparticles, e.g., about 1 % to about 10 % by weight ([0075]). The colloidal dispersions can be used as is or can be diluted with suitable solvents to lower PGM concentrations ([0075]). In other embodiments, the colloidal dispersions can be concentrated (e.g., by removing solvent therefrom). Methods for concentrating dispersions generally are known and, in some embodiments, concentrations significantly higher than those originally obtained can be obtained in this matter ([0075]). Xu therefore discloses that the amount of solvent used increases or decreases the PGM concentration.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the S : M molar ratio of the solvent system S to the one or more transition metals M is comprised in the range of from 50 to 3500 in the method of Turkevich in view of Kunz and Xu in order to prepare a colloidal dispersion with the desired PGM concentration as taught by Xu.
Regarding claim 11, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above and Turkevich further discloses two methods were developed for the preparation of the alumina support for the palladium catalysts (Pg. 877 middle col. par. 3). In one preparation 80 ml of a 1 percent suspension of fibrillar Baymol… were autoclaved… to obtain rods (Pg. 877 middle col. par. 3). Palladium sols were added to the boehmite rod suspensions with constant stirring (Pg. 877 right col. par. 2).
Regarding claim 20, Turkevich in view of Kunz and Xu discloses all the limitations in the claims as set forth above including Kunz discloses in step c) the precious metal nanoparticles are separated and obtained from the at least one solvent system ([0044]). Preferably, the solid precious metal nanoparticles are obtained by centrifugation ([0058]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE L QUIST whose telephone number is (571)270-5803. The examiner can normally be reached Mon-Fri 8:30-5:00.
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/N.L.Q./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738