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 .
Election/Restrictions
As stated on page 2 of the previous office action dated 17 October 2025:
“Applicant’s election without traverse of Group I drawn to claims 1-7 in the reply filed on 23 September 2025 is acknowledged. Claims 1-7 are examined on the merits herein.
Claims 8-16 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to the nonelected inventions of Groups II-V, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 September 2025.”
Priority
This application is a 371 of PCT/JP2021/014081 which claims the benefit of JP 2020-065253 with an effective filing date of 31 March 2020 as reflected in the filing receipt mailed on 28 December 2022.
Status of the Claims
Claims 1, 2, and 5-7 are pending.
Claim 1 is currently amended.
Claims 3 and 4 are currently cancelled.
Claims 8-16 were previously withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 16 January 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendments
Applicant’s amendments filed 16 January 2026 are acknowledged.
Claim Rejections - 35 USC § 102
Applicant’s amendment to claim 1 specifying nickel supported on yttria or scandia-stabilized zirconia catalyst not taught in one single express embodiment in Ku is sufficient to overcome the rejection of claims 1, 2, and 5-7 under 35 U.S.C. 102(a)(1) as being anticipated by Ku et al. (US20070149392, hereinafter Ku). The rejection is withdrawn and due solely to the amendment to claim 1 specifying nickel supported on yttria or scandia-stabilized zirconia catalyst not taught in one single express embodiment in Ku a new ground(s) of rejection is/are provided below.
Applicant’s amendment to claim 1 specifying nickel supported on yttria or scandia-stabilized zirconia catalyst not taught in one single express embodiment in Panaritis and cancellation of claims are sufficient to overcome the rejection of claims 1, 3, and 4 under 35 U.S.C. 102(a)(1) as being anticipated by Panaritis et al. (“Insight towards the role of ceria-based supports for reverse water gas shift reaction over RuFe nanoparticles”, 28 May 2018, Journal of CO2 Utilization, Vol. 26, Pgs. 350-358, hereinafter Panaritis). The rejection is withdrawn.
Response to Arguments
Applicant’s arguments filed 16 January 2026 have been fully considered but they are not persuasive.
Applicant’s argue that Ku and Panaritis do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are not persuasive or moot for the reasons set forth in the new grounds of rejection below and the response to arguments below.
In response to applications arguments on pages 5-6 of the remarks filed on 16 January 2026, that instant claim 1 is “amended to exclude a ceria-based metal oxide from the carrier of independent claim 1” and “to exclude iron from the catalytically active component of independent claim 1”. The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004), see MPEP 2111.
In this case, one or ordinary skill in the art would interpret the claim 1 language of “by at least supporting wherein the zirconia-based metal oxide is zirconia stabilized by at least one of yttria and scandia”, to have a zirconia-based metal oxide as “a main component”; while, not excluding any other carrier metal oxide, such as the carrier metal oxides listed in Paras. [0082]-[0084];[0089] of the instant specification, including ceria as long as zirconia-based metal oxide is a main component.
Transitional phrases such as ““comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim”, see MPEP 2111.03. The claim 1 language of “at least” and “a main component” do not exclude unrecited additional components or steps from the scope of the claim.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applications arguments on pages 6-7 of the remarks filed on 16 January 2026 with respect to Panaritis have been considered but are moot because the new ground of rejection does not rely on Panaritis applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
New Rejections Based on Amendments to the Claims in the reply filed on
16 January 2026
Claim Rejections - 35 USC § 102
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 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong et al. (US20180066371, published 08 March 2018, hereinafter Hong).
Regarding the limitations of instant application claim 1, Hong discloses a reverse water gas shift (RWGS) catalyst electrode “prepared by mixing nickel oxide (NiO), yttria-stabilized zirconia (yttria-stabilized ZrO2; YSZ) and a solvent”, creating an Ni-YSZ catalyst, see Paras. [0050]-[0061]. Specifically example 1, “[n]ickel oxide (NiO, Sumitomo Metal Mining, Japan), yttria-stabilized zirconia (8 mol % Y2O3-stabilized ZrO2, Tosoh Corp., Japan) and poly(methyl methacrylate) (PMMA) were mixed at a volume ratio of 0.37:0.33:0.3. Ethanol was used as a solvent and a dispersant, a binder and a plasticizer were further added.”, see Paras. [0080]-[0101]; Fig. 2, meeting the RWGS nickel supported on yttria or scandia-stabilized zirconia catalyst in instant application claim 1.
In regard to claim 1 reciting a “reverse water-gas shift catalyst obtained by at least supporting …”. The claim states a product catalyst “obtained by” a process. MPEP 2113(I) states “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”. Hong discloses a reverse water gas shift (RWGS) catalyst; therefore, the process of obtaining the catalyst may not be given patentable weight. In the spirit of compact prosecution, the entirety of claim 1 is interpreted as a catalysts “comprising nickel …”, not as “obtained by at least supporting nickel …”.
In regard to the preamble statement of “reverse water-gas shift”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “reverse water-gas shift” is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation.
Regarding the limitations of instant application claim 5, Hong teaches the catalyst as depicted in Fig. 2 is in layers, with a first substrate layer of Ni-YSZ and the second functional layer of Ni-YSZ both having a Ni to YSZ “volume ratio of 0.37:0.33”, i.e., about 50/50 by weight, see Paras. [0080]-[0092]; Fig. 2, meeting within the % weight range of the Ni in instant application claim 5.
Claim Rejections - 35 USC § 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, 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, 2, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US20180066371, published 08 March 2018, hereinafter Hong) in view of Ku et al. (US20070149392, hereinafter Ku).
Regarding the limitations of instant application claim 1, Hong discloses a reverse water gas shift (RWGS) catalyst electrode “prepared by mixing nickel oxide (NiO), yttria-stabilized zirconia (yttria-stabilized ZrO2; YSZ) and a solvent”, creating an Ni-YSZ catalyst, see Paras. [0050]-[0061]. Specifically example 1, “[n]ickel oxide (NiO, Sumitomo Metal Mining, Japan), yttria-stabilized zirconia (8 mol % Y2O3-stabilized ZrO2, Tosoh Corp., Japan) and poly(methyl methacrylate) (PMMA) were mixed at a volume ratio of 0.37:0.33:0.3. Ethanol was used as a solvent and a dispersant, a binder and a plasticizer were further added.”, see Paras. [0080]-[0101]; Fig. 2, meeting the RWGS nickel supported on yttria or scandia-stabilized zirconia catalyst in instant application claim 1.
In regard to claim 1 reciting a “reverse water-gas shift catalyst obtained by at least supporting …”. The claim states a product catalyst “obtained by” a process. MPEP 2113(I) states “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”. Hong discloses a reverse water gas shift (RWGS) catalyst; therefore, the process of obtaining the catalyst may not be given patentable weight. In the spirit of compact prosecution, the entirety of claim 1 is interpreted as a catalysts “comprising nickel …”, not as “obtained by at least supporting nickel …”.
In regard to the preamble statement of “reverse water-gas shift”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “reverse water-gas shift” is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation.
Regarding the limitations of instant application claim 5, Hong teaches the catalyst as depicted in Fig. 2 is in layers, with a first substrate layer of Ni-YSZ and the second functional layer of Ni-YSZ both having a Ni to YSZ “volume ratio of 0.37:0.33”, i.e., about 50/50 by weight, see Paras. [0081]-[0092]; Fig. 2, meeting within the % weight range of the Ni in instant application claim 5.
Regarding the limitations of instant application claim 2, Hong teaches the catalyst as depicted in Fig. 2 is in layers, with a first substrate layer of Ni-YSZ and the second functional layer of Ni-YSZ both having a Ni to YSZ “volume ratio of 0.37:0.33”, i.e., about 50/50 by weight, then an additional electrolyte YSZ layer is added, see Paras. [0081]-[0092]; Fig. 2; therefore, the YSZ is the main component of the catalysts taking up at least greater than 55% by weight, see MPEP 2112.
Regarding the limitations of instant application claims 6 and 7, Hong teaches the catalyst also contains copper, see Paras. [0024];[0054], meeting the catalyst includes copper in instant application claim 6.
Hong does not specifically teach:
The carrier weight in instant application claim 2; and,
The limitations of instant application claim 7.
Ku teaches the claims 1, 2, and 5-7 limitations of a reverse water gas shift reaction catalyst of copper and nickel with a carrier, such as cerium oxide or “yttria stabilized zirconia (YSZ)”, see Paras. [0021];[0040], where the copper and nickel are present in nano-crystalline form and are disposed upon/impregnated in the carrier, and copper and nickel are used in an amount of about 2 to about 8 wt %, i.e., about 98 to about 92 wt.% carrier support, see Paras. [0021];[0040], meeting:
The copper and nickel impregnated on a carrier support reverse water-gas shift catalyst in instant application claim 1;
Within the ratio range of the carrier support in instant application claim 2;
Within the amount of nickel in instant application claim 5;
The supported copper in instant application claim 6; and,
Within the range of copper in instant application claim 7.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the nickel-copper alloy supported on yttria-stabilized zirconia catalyst of Hong to incorporate the desired amounts of nickel and copper supported on the desired ratio of yttria-stabilized zirconia as taught by Ku with a reasonable predictability of success for the purpose of efficiently utilizing a multifunctional catalyst to enhance the conversion of carbon dioxide into carbon monoxide and additional hydrocarbons in order to “facilitate the separation and/or the conversion of carbon dioxide into a form that does not contribute to the greenhouse effect”, see Ku, Paras. [0003];[0014]-[0017].
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the nickel-copper alloy supported on yttria-stabilized zirconia catalyst of Hong by applying the known techniques of incorporating the desired amounts of nickel and copper supported on the desired ratio of yttria-stabilized zirconia as taught by Ku with a reasonable predictability of success for the purpose of efficiently utilizing a multifunctional catalyst to enhance the conversion of carbon dioxide into carbon monoxide and additional hydrocarbons in order to “facilitate the separation and/or the conversion of carbon dioxide into a form that does not contribute to the greenhouse effect”, see Ku, Paras. [0003];[0014]-[0017]; and, MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Hong and Ku both teach nickel-copper alloy supported on yttria-stabilized zirconia catalyst, a person of ordinary skill in the art has good reason to modify Hong by relying upon Ku before the effective filing date of the claimed invention for knowledge generally available within the reverse water-gas shift catalyst art, see MPEP 2143 B & G and 2141, for the benefit of efficiently utilizing a multifunctional catalyst to enhance the conversion of carbon dioxide into carbon monoxide and additional hydrocarbons in order to “facilitate the separation and/or the conversion of carbon dioxide into a form that does not contribute to the greenhouse effect”, see Ku, Paras. [0003];[0014]-[0017]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[t]he 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”, such as the concentration of the catalytic metals and the carrier in the catalyst, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as a nickel-copper alloy and a yttria-stabilized zirconia, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the concentration of the catalytic metals and the carrier in the catalyst, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Y. Lynnette Kelly-O'Neill whose telephone number is (571) 270-3456. The examiner can normally be reached Tuesday-Friday, 8:30 a.m. - 6:30 p.m., EST, with Flex Time.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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