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; Election/Restriction
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 allowance. 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, prosecution in this application has been reopened per 37 CFR 1.114. Applicant's 4/27/26 submission has been entered.
The indicated allowability of claim 74 et seq. is withdrawn in view of one or more references within applicant’s newly-submitted 4/27/26 IDS. Rejections based on the newly cited reference(s) follow. As the conditions (i.e. the allowability of composition claim 74 et seq.) for which rejoinder of previously-withdrawn claims 90-93 (and now new claim 97, which would have likewise been withdrawn for the same reasons as claims 90-93) no longer exist, the 4/27/26 rejoinder of withdrawn claims 90-93 is rescinded as currently unripe, and the 8/22/24 Restriction Requirement between Groups I and III (Group III now also including new claim 97) is reinstated. Claims 90-93 and 97 are now withdrawn from further consideration per 37 CFR 1.142(b) as drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the 10/4/24 reply.
Claim Rejections - 35 U.S.C. 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 74-77, 79, 81, 83, and 94-96 are rejected under AIA 35 U.S.C. 103 as being unpatentable over WO2020/091418 (published 5/7/20; PCT filed 10/30/19) (see applicant’s 4/27/26 IDS) (“’418”)1. Regarding claims 74, 76-77, 79, and 94-96, ‘418 teaches a catalyst composition, devoid of Cr, Pt, Au, Ag, Cu, and Pd (inferred from ‘418’s silence as to the presence thereof; MPEP 2144.01), comprising 2-3 wt% of isolated Co+2 single atoms/ions supported/grafted on the surface of an SiO2 support (~0.1-10 wt%, ~0.5-5 wt%, and ~1-3 wt% Co+2 is also taught); the SiO2 comprises “silanol groups and siloxane groups present on the molecule surface thereof”, i.e. silicon oxyhydroxide (SiO(OH)). See ‘418 at, e.g., par. 49-51, 57, and 62. The claimed surface density is reasonably expected to be met/present given ‘418’s teachings of employing claim 76’s 2-3 wt% (or ~0.1-10 wt%, ~0.5-5 wt%, and ~1-3 wt%) Co+2, as isolated, single atoms/ions per claim 74, i.e. rather than as a uniform coating, coated regions, etc. MPEP 2144.01.
Regarding claim 75, this claim’s limitation is regarded as stating a mere property of claim 74’s composition. As such, since ‘418 renders claim 74’s composition prima facie obvious as detailed above, claim 75’s property of said composition is reasonably expected to be met/present, i.e. the presence of claim 75’s property within ‘418’s composition would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977); MPEP 2112.01 & 2144.01. This conclusion of obviousness is buttressed by the Federal Circuit’s holding that “[w]hen a chemical composition is claimed, a prima facie case of obviousness under Section 103 may be established by [the prior art’s teaching of] a
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similar composition, the presumption being that similar compositions have similar properties.” See, e.g., In re Soni, 54 F.3d 746 (Fed. Cir. 1995) (internal citations omitted); Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985); MPEP 2112.01 I-II; MPEP 2144.09 I, citing In re Payne, 606 F.2d 303, 313 (CCPA 1979).
Regarding claim 81, ‘418’s composition has a BET surface area of ≥~100 m2/g, such as ~200-1,500 m2/g, or more specifically ~300-1,000 m2/g. See ‘418 at, e.g., par. 63.
Regarding claim 83, ‘418’s composition is in a form such as particles and/or a powder. See id. at, e.g., par. 46, 62, and 99.
Claim 80 is rejected under AIA 35 U.S.C. 103 as being unpatentable over ‘4182 in view of the 2019 Dewangan ChemCatChem article (see applicant’s 4/27/26 IDS) (“Dewangan”). Regarding claim 80, ‘418’s teachings are as detailed above. While ‘418’s support does not comprise ≥1 of the listed aluminas, Dewangan so teaches.
Dewangan teaches that “Cobalt-based catalysts supported on SiO2 (such as ‘418’s) and Al2O3 have been widely accepted for their promising performance in the Fischer-Tropsch process and several other important reactions… cobalt-based catalysts were also reported for non-oxidative dehydrogenation reaction supported on SiO2 and Al2O3.” See Dewangan at, e.g., §1 (2nd par.). Dewangan supports its cobalt on gamma-Al2O3 (see id. at, e.g., §2.1.1 1st par.), and states that gamma-Al2O3 “has been extensively used in catalysis”, and “enhances the metal dispersion, thus improving the interaction with the support.” See id. at, e.g., §1 (3rd par.). Dewangan further teaches that employing SiO2 (such as ‘418’s) may desirably “help to suppress the strong Lewis acidic center and prevent coke deposition.” See id. at, e.g., §3 (1st par.). Given the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘418’s overall methodology by additionally employing gamma-Al2O3 with its SiO2 support as taught by Dewangan, to thereby achieve Dewangan’s taught advantages of enhanced metal (i.e. cobalt) dispersion on the support as well as increased coking resistance. MPEP 2143 I.(G). Additionally and/or alternatively, Dewangan’s teaching that SiO2-and-Al2O3-supported cobalt catalysts have been used for dehydrogenation reactions (‘418’s catalyst is to be used for such a purpose; see ‘418 at, e.g., par. 2), in addition to Dewangan’s above teaching that gamma-Al2O3 enhances catalytic metal dispersion upon the support, are also sufficient to support a finding that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Dewangan’s gamma-Al2O3 with ‘418’s SiO2; it has been held prima facie obvious to combine two compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); MPEP 2144.06.
Conclusion
Any inquiry concerning this communication or earlier communications from Examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. Examiner can normally be reached M-F 8:30-5:00 (Central). 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.fIf attempts to reach Examiner by telephone are unsuccessful, Examiner’s supervisor, Anthony Zimmer can be reached on (571) 270-3591. 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.
/DANIEL BERNS/ August 18, 2026
Primary Examiner
Art Unit 1736
1 NOTE: the Office is employing US 2021/0394160 (“’460”) as an English-language equivalent of the Korean-language ‘418 (‘418 qualifies as prior art under AIA 35 U.S.C. 102(a)(2)/pre-AIA 35 U.S.C. 102(e)). Indeed, ‘460 is National Stage domestication application under 35 U.S.C. 371 of PCT/KR2019/014476, which is the PCT application for which ‘418 is the WIPO publication thereof. See the front page of both ‘418 and ‘460. As such, while the rejection itself employs ‘418, all citations within the rejection are in fact to ‘460 (i.e. “see ‘418 at par. 28” in fact directs the reader to par. 28 of ‘460). All citations within ‘460 shall be understood as also citing to the corresponding portions of ‘418.
2 See fn. 1, above.
Prosecution Insights