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 (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 2026 has been entered.
Election/Restrictions
As stated in the previous office actions, Applicant’s election without traverse of Group I drawn to claims 1-7 in the reply filed on 23 September 2025 was acknowledged. Claims 1-7 were examined on the merits. Claims 8-16 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to the nonelected inventions of Groups II-V, there being no allowable generic or linking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. Herein, claims 8-16 still stand withdrawn and claims 1 and 5-7 are examined on the merits.
Status of the Claims
Claims 1 and 5-7 are pending.
Claim 1 is currently amended.
Claim 2 is currently cancelled.
Claims 3 and 4 were previously cancelled.
Claims 8-16 were previously withdrawn.
Response to Amendments
Applicant’s amendments filed on 02 July 2026 are acknowledged.
Claim Rejections - 35 USC § 102
Applicant’s amendment to claim 1 specifying a ratio of the carrier in the catalyst is 65% by weight or more not taught in one single express embodiment in Hong is sufficient to overcome the rejection of claims 1 and 5 under 35 U.S.C. 102(a)(1) as being anticipated by Hong et al. (US20180066371, published 08 March 2018, hereinafter Hong). The rejection is withdrawn and due to the amendment to claim 1, a new ground(s) of rejection is/are provided below.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 specifying a ratio of the carrier in the catalyst is 65% by weight or more not taught in Hong is sufficient to overcome the rejection of claims 1, 2, and 5-7 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). Due to the amendment to claim 1 and cancellation of claim 2, the rejection is withdrawn and a new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed on 02 July 2026 have been fully considered but they are moot or not persuasive.
Applicant’s argue that Hong and Ku do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are moot or not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
In response to applications arguments throughout the remarks filed on 02 July 2026 with respect to Hong, the arguments have been considered but are moot because the new ground of rejection does not rely on Hong applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to Applicant’s arguments on pages 8-9 of the remarks filed on 02 July 2026, regarding the operating temperature of the water-gas shift reaction of Ku. It is noted that the feature upon which applicant relies (i.e., the operating temperature of the water-gas shift reaction) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims, see In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) and MPEP 2111.01. For the reasons indicated above, Applicant’s above arguments are not persuasive.
New Rejections Based on Amendments to the Claims and the RCE filed on 02 July 2026
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
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 newly rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lockhart et al. (US5261944, patented 16 November 1993, hereinafter Lockhart).
Regarding the limitations of instant application claims 1 and 5, Lockhart discloses a nickel cermet catalyst containing “35-70% by weight of a metal nickel phase and 65-30% by weight of a zirconia phase stabilized in the cubic form with yttria”, see Abstract; Col. 1, Lns. 41-48. Specifically, the nickel phase is dispersed on the surface of the zirconia stabilized with yttria phase, where the nickel content in the solid product may be 35%, see Col. 1, Ln. 59-Col. 2, Ln. 19; Col. 4, Lns. 15-62, Example 1, i.e., a support phase of zirconia stabilized with yttria of about 65 wt.% and a catalytically active phase of Ni of about 35 wt.% on the surface of the support, meeting:
The catalyst including a carrier support and a catalytically active nickel component in instant application claim 1;
The main component carrier of zirconia stabilized with yttria within the ratio range of the zirconia stabilized with yttria in instant application claim 1; and,
Within the range of the catalytically active component in instant application claim 5.
In regard to the instant application claim 1 preamble statement of a “reverse water-gas shift catalyst”, “[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 a “reverse water-gas shift catalyst” is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
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, 5, and 6 are newly rejected under 35 U.S.C. 103 as being unpatentable over Ku et al. (US20070149392, published 28 June 2007, hereinafter Ku).
Ku is in the known prior art field of reactions using a reverse water-gas shift reaction catalyst, where the catalyst comprises nickel, copper, and a yttrium stabilized zirconia support, see Paras. [0006];[0021];[0040].
Regarding the limitations of instant application claims 1, 5, and 6, Ku teaches a reverse water-gas shift first catalyst comprising an active component 14 deposited on support substrate walls 12, where the reactive coating 2 is optional, see Paras. [0020]-[0021];[0031]-[0033]; Fig. 1. The active component 14 is a mixture of “copper and nickel” “used in an amount of about 2 to about 8 wt %”, see Paras. [0029];[0040]; Claims 1, 45, and 46, meeting:
The reverse water-gas shift catalyst including a carrier support and a catalytically active nickel component in instant application claim 1;
Within the range of the catalytically active component in instant application claim 5;
The additional copper catalytically active component in instant application claim 6; and,
The support substrate walls 12 are “yttria stabilized zirconia (YSZ)”, see Para. [0021], where the catalyst consists of support substrate walls 12 and active components 14 “used in an amount of about 2 to about 8 wt %”, see Paras. [0021];[0029];[0040]; Claims 1, 45, and 46, i.e., as calculated by the examiner about 98 to about 92 wt.% support substrate walls of YSZ, meeting the main component carrier of YSZ and within the ratio range of YSZ in instant application claim 1.
In regard to the instant application claim 1 preamble statement of a “reverse water-gas shift catalyst”, “[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 a “reverse water-gas shift catalyst” is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
Ku does not teach the limitations of the above instant application claims in one single express embodiment or Example.
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 Ku to choose YSZ as the support with a reasonable predictability of success for the purpose of efficiently selecting a porous support substrate where “catalytic particles are selectively located in order to enhance the conversion” by designing “the composition of the pores and the walls of the substrate” “to control chemical stability, catalytic activity and/or surface energy” as well as designing “the pore architecture of the substrate” “to control the diffusion of reactants to the catalyst particles, the permselectivity as well as the surface area of the catalyst particles that are exposed to the reactants”, see Ku, Paras. [0017];[0020]-[0022].
A 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. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying Ku to select YSZ as the support substrate by applying the differing known support substrates as taught by Ku with a reasonable predictability of success for the purpose of efficiently selecting a porous support substrate where “catalytic particles are selectively located in order to enhance the conversion” by designing “the composition of the pores and the walls of the substrate” “to control chemical stability, catalytic activity and/or surface energy” as well as designing “the pore architecture of the substrate” “to control the diffusion of reactants to the catalyst particles, the permselectivity as well as the surface area of the catalyst particles that are exposed to the reactants”, see Ku, Paras. [0017];[0020]-[0022]; and MPEP 2143 I. B-D.
Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Ku teaches YSZ and ceria as support substrates, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try YSZ as the support substrate instead of ceria.
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.
Selection of a known material, such as a YSZ support substrate, 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, “[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 amounts of Ni, Cu, and YSZ 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.
Claim 7 is newly rejected under 35 U.S.C. 103 as being unpatentable over Ku et al. (US20070149392, published 28 June 2007, hereinafter Ku), as applied to claims 1, 5, and 6 in the 35 USC 103 rejection above, in view of Buccheri et al. (“Evaluation of a Cu/YSZ and Ni/YSZ Bilayer Anode for the Direct Utilization of Methane in a Solid Oxide Fuel Cell”, published online 13 February 2014, Fuel Cells, Vol. 14, No. 2, Pgs. 162-170, hereinafter Buccheri).
Ku does not specifically teach the limitations of instant application claim 7.
Buccheri is in the known prior art field of “a bilayer anode that contains a functional layer consisting of Ni/YSZ and a conduction layer consisting of Cu/YSZ” for the catalytic conversion of methane, see Abstract; Pgs. 162-163, 1 Introduction, and is applied to teach the same.
Regarding the limitations of instant application claim 7, Buccheri teaches a catalytic “anode functional layer” with a YSZ support having about 40 wt.% Zr, about 10 wt.% Y, and about 5 wt.% O supporting a catalytically active layer of about 30 wt.% Ni and about 10 wt.% Cu, specifically “percentages of the elements O, Y, Zr, Ni, and Cu were 6.3, 11, 40, 31, and 12 wt.%, respectively” see Pgs. 165-166, Figs. 2 (a and b) and 3.1 Cu/YSZ and Ni/YSZ Bilayer Anode Cell Microstructure and Elemental Analysis, meeting within the range of the supported amount of copper less than the supported amount of nickel in instant application claim 7.
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 copper concentration in Ku to be equal to or below the concentration of nickel as taught by Buccheri with a reasonable predictability of success for the purpose of efficiently producing a catalyst with the optimal amount of copper loading in order to reduce the accumulation of carbon within the catalyst pores and increase the stability of the catalyst depending upon the desired operating temperature of the catalyst, see Buccheri, Abstract, Pgs. 168-169, 3.4 Discussion – 4 Conclusion.
A 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. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the concentration of the copper of Ku by applying the known technique of modifying the concentration of the copper as taught by Buccheri with a reasonable predictability of success for the purpose of efficiently producing a catalyst with the optimal amount of copper loading in order to reduce the accumulation of carbon within the catalyst pores and increase the stability of the catalyst depending upon the desired operating temperature of the catalyst, see Buccheri, Abstract, Pgs. 168-169, 3.4 Discussion – 4 Conclusion; 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 Ku and Buccheri both teach the use of Ni-Cu/YSZ catalysts in the catalytic conversion industry, a person of ordinary skill in the art has good reason to modify Ku by relying upon Buccheri before the effective filing date of the claimed invention for knowledge generally available within the Ni-Cu/YSZ catalytic conversion art regarding the concentration of the copper, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing a catalyst with the optimal amount of copper loading in order to reduce the accumulation of carbon within the catalyst pores and increase the stability of the catalyst depending upon the desired operating temperature of the catalyst, see Buccheri, Abstract, Pgs. 168-169, 3.4 Discussion – 4 Conclusion; 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 copper as compared to the concentration of the nickel 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.
Conclusion
No claims are allowed.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Yen-Ye Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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