DETAILED ACTION
Claims 1 and 4 were rejected in the Office Action mailed 10/27/2025.
Applicants filed a Request for Continued Examination, and amended claim 1, and canceled claim 4 on 01/27/2026.
Claim 1 and 6-19 are pending, and claims 6-19 are withdrawn.
Claim 1 is rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/27/2026 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.
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 is rejected under 35 U.S.C. 103 as being unpatentable over Zhen et al., Co3O4@CeO2 core@shell cubes: Designed synthesis and optimization of catalytic properties, Chem. Eur. J. 2014 (Zhen), in view of Wang et al., Crystal plane effect of ceria on supported copper oxide cluster catalyst for CO oxidation: Importance of metal-support interaction, ACS Catal. 2017 (Wang).
Regarding claim 1, Zhen teaches Co3O4@CeO2 core@shell cubes, with CeO2 being the shell; these Co3O4@CeO2 core@shell cubes are used for catalytic CO oxidation (Zhen, Abstract);
Co3O4 cubes were synthesized first as the core (Zhen, page 4469, right column, bottom paragraph), and Figure 1A (also shown below) shows that Co3O4 cubes are of nm size, (reading upon a cobalt (Co) nanoparticle core having a hexahedral shape).
PNG
media_image1.png
187
395
media_image1.png
Greyscale
Figure 1 of Zhen
Zhen further teaches the thickness of the this CeO2 could be tuned easily by varying the feeding molar ratio of Ce/Co (Zhen, page 4469, right column, bottom paragraph), and the catalytic activities are highly dependent on the CeO2 shell thickness (Zhen, page 4472, right column).
Zhen does not explicitly disclose (a) copper (Cu) supported on the core-shell particle; or wherein the carbon monoxide and hydrocarbon oxidation catalyst comprises a range of 2wt.% to less than 4wt.% of the copper based on a total weight of the catalyst;
or (b) the core-shell nanoparticle includes cobalt (Co) and cerium (Ce) in a mole ratio in a range greater than or equal to 1:7.7 to less than 1:15.4.
With respect to the difference (a), Wang teaches CO oxidation catalyst comprising ceria (Wang, Title and Abstract). Wang specifically teaches copper oxide ( 1 wt% Cu loading, i.e., based on the CO oxidation catalyst) deposited on ceria (Wang, Abstract; page 1315, left column, 1st paragraph) and a similar catalyst with 5 wt% Cu loading (Wang, page 1326, left column, bottom paragraph).
As Wang expressly teaches, copper-ceria is one of the very active catalysts for oxidation reaction (Wang, Abstract); CuOx clusters on the surface of CeO2-{111} were easily reduced to Cu(I) species when there were subjected to interactions with CO; the stronger reduction trend of Cu (II)[Wingdings font/0xE0] Cu (I) in the CeO2-{111} face is considered to be the intrinsic reason that ensures the high activity of the CuCe-nanosphere catalyst (Wang, page 1314, right column, 2nd paragraph; page 1327, right column, 2nd paragraph).
Wang is analogous art as Wang is drawn to CO oxidation catalyst comprising ceria.
In light of the motivation of using copper-ceria, e.g., CuOx clusters on the surface of CeO2-{111}, as CO oxidation catalyst, as taught by Wang, it therefore would have been obvious to a person of ordinary skill in the art, to form CeO2-{111} crystal plane on the Co3O4@CeO2 core@shell cubes of Wang, and deposit CuOx clusters on the Co3O4@CeO2 core@shell cubes, at a Cu loading of 1 wt% or 5 wt%, in order to obtain very active catalysts for CO oxidation.
Furthermore, given that Zhen in view of Wang teaches a copper loading of 1wt% and 5 wt%, it therefore would have been obvious to a person of ordinary skill in the art to use any level within the range of 1 wt% to 5 wt%, which encompasses the range of the presently claimed, in order to meet desired product needs.
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).
With respect to the difference (b), given that Zhen in view of Wang teaches the thickness of this CeO2 could be tuned easily by varying the feeding molar ratio of Ce/Co (Zhan, page 4469, right column, bottom paragraph), and the catalytic activities are highly dependent on the CeO2 shell thickness (Zhan, page 4472, right column).
Although there are no disclosures on the amounts of the core-shell nanoparticle includes cobalt (Co) and cerium (Ce) in a mole ratio in a range greater than or equal to 1:7.7 to less than 1:15.4, 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 mole ratio of cobalt (Co) and cerium (Ce), for the Co3O4@CeO2 loaded with Cu catalyst of Zhen in view of Wang, including over the amounts presently claimed, in order to achieve the desired catalyst activity, and thereby arrive at the claimed invention.
Furthermore, the recitation in the claims that the core-shell nanoparticle is “a hydrocarbon oxidation catalyst” 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.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Zhen in view of Wang teaches the core-shell nanoparticle as presently claimed, it is clear that the core-shell nanoparticle of Zhen in view of Wang would be capable of performing the intended use, i.e. a hydrocarbon oxidation catalyst, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Response to Arguments
Applicant primarily argues:
“Examples 4, 5, and 6 of the instant application demonstrate the catalyst Cu/Co-7.7CeO2 being prepared with 1 wt.%, 2wt.% and 4 wt.% of copper, respectively. As can be seen in Figures 4 and 5 of the instant application, Example 5 includes 2 wt.% of copper and exhibits a distinct peak in performance with significantly superior results compared to Examples 4 and 6, which include 1 wt.% and 4 wt.% of copper, respectively. Example 5 displays that 50% reduction in carbon monoxide and hydrocarbons could be achieved at lower temperatures when using 2 wt.% of copper. Examples 4 and 6 required higher temperatures to achieve the same 50% reduction of carbon monoxide and hydrocarbons. The results of Examples 4, 5, and 6 demonstrate the criticality of the narrowed range, as shown by amended claim 1.”
Remarks, p. 6
The Examiner respectfully traverses as follows:
The data to show advantageous effects by the core-shell nanoparticle includes a range of 2wt% to 4wt% of the metal based on a total weight of the carbon monoxide and hydrocarbon oxidation catalyst, in the present invention is not persuasive for the following reasons.
Firstly, the data is not commensurate in scope with the scope of the claims. The data disclosed in the specification only provide support for a carbon monoxide and hydrocarbon oxidation catalyst, comprising: a core-shell nanoparticle comprising: a specific cobalt (Co) nanoparticle core having a hexahedral shape, and a shell surrounding the cobalt nanoparticle core; copper supported on the core-shell nanoparticle, wherein the shell comprises cerium oxide, and the core-shell nanoparticle includes cobalt (Co) and cerium (Ce) in a specific mole ratio;
however the present claims broadly recite a carbon monoxide and hydrocarbon oxidation catalyst, comprising: a core-shell nanoparticle comprising: any cobalt (Co) nanoparticle core having a hexahedral shape, and a shell surrounding the cobalt nanoparticle core; any metal supported on the core-shell nanoparticle, wherein the shell comprises cerium oxide, and the core-shell nanoparticle includes cobalt (Co) and cerium (Ce) in any mole ratio in a range greater than or equal to 1:7.7 to less than 1:15.4.
Further, the data does not show using the upper- and lower-ends of cobalt (Co) and cerium (Ce) in a mole ratio in a range greater than or equal to 1:7.7 to less than 1:15.4. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of cobalt (Co) and cerium (Ce) in a mole ratio in a range greater than or equal to 1:7.7 to less than 1:15.4.
Applicant further argues:
“The Office action states, at the time of invention, it would have been obvious to one of ordinary skill in the art to vary the amount of mole ratio of cobalt (Co) and cerium (Ce), for the Co3O4@CeO2 loaded with Cu catalyst of Zhen in view of Wang, in order to achieve the desired catalyst activity. See, Office action page 7. Applicants disagree.
Zhen discloses a Co:Ce ratio where cobalt (Co) is the majority component, with ratios of up to a 1:1. In contrast, the instant application utilizes a cerium-rich composition, in which cerium (Ce) is present in an amount at least 7.7 times greater than cobalt (Co). Thus, Zhen discloses a Co-rich composition, whereas the instant application is directed to fundamentally different, a Ce-rich composition.”
Remarks, p. 6-7
The Examiner respectfully traverses as follows:
The fact remains that Zhen in view of Wang teaches the thickness of this CeO2 could be tuned easily by varying the feeding molar ratio of Ce/Co (Zhan, page 4469, right column, bottom paragraph), and the catalytic activities are highly dependent on the CeO2 shell thickness (Zhan, page 4472, right column), as set forth on page 6 of Office Action mailed 10/27/2025.
Therefore, it remains the examiner’s position that it would have been obvious to one of ordinary skill in the art to vary the amounts of mole ratio of cobalt (Co) and cerium (Ce), for the Co3O4@CeO2 loaded with Cu catalyst of Zhen in view of Wang, including over the amounts presently claimed, in order to achieve the desired catalyst activity, and thereby arrive at the claimed invention, absent evidence to the contrary.
Applicant further argues:
“Additionally, the Office action asserts that Wang teaches copper oxide ( deposited on ceria, specifically disclosing a catalyst having 1 wt.% Cu loading, i.e., based on the CO oxidation catalyst, and a similar catalyst with 5 wt.% Cu loading. See, Office action, page 5. However, the weight percentages disclosed in Wang are based on a 2-component system consisting of ceria and copper. In contrast, the weight percentages recited in amended claim 1 are based on a 3- component weight of the catalyst, including cobalt, ceria, and copper. The numerical values disclosed in Wang are not comparable to the weight percentages recited in amended claim 1.
Therefore, one of ordinary skill in the art would not be motivated by the Co-rich compositions in Zhen to modify the weight percentages disclosed in Wang to disclose "a range of 2wt.% to less than 4wt.% of the copper based on a total weight of the carbon monoxide and hydrocarbon oxidation catalyst" of amended claim 1. One having ordinary skill in the art would not be motivated to combine the teachings of Zhen and Wang because of the differences in compositions stated above.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
Firstly, Wang is only used as teaching reference in order to teach Cu to be included on a CO oxidation catalyst. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference Zhen. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Secondly, Wang teaches copper-ceria is one of the very active catalysts for oxidation reaction (Wang, Abstract). When combing the teaching of Want to Zhen, in the core@shell cubes of Zhen, the cubes have CeO2 shell (i.e., ceria), which allows for copper to deposit on to have the advantage of copper-ceria as active catalyst, while still maintain the benefits of core@shell cubes of Zhen.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm EST.
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.
/KELING ZHANG/
Primary Examiner
Art Unit 1732