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 .
Claim Status
The claims are newly amended.
Response to Arguments
Applicant's arguments filed 8/29/25 have been fully considered but they are not persuasive.
Pages 6-7 of the remarks argue the following:
Amended claim 144 is not obvious over Cizeron. First, Cizeron does not teach or suggest a dilute methane oxidation catalyst for converting methane to CO2 as presently claimed. Rather, Cizeron discloses using doped mixed lanthanide oxide catalysts for other catalytic reactions, including the oxidative coupling of methane (OCM) to ethane and ethylene; oxidative dehydrogenation (ODH) of alkanes to the corresponding alkenes, for example oxidative dehydrogenation of ethane or propane to ethylene or propylene, respectively; selective oxidation of alkanes, alkenes, and alkynes; oxidation of CO, dry reforming of methane, selective oxidation of aromatics; Fischer-Tropsch, hydrocarbon cracking (Cizeron, paragraph [0227]). Cizeron provides no teaching or guidance that would motivate one skilled in the art to employ doped mixed lanthanide oxide catalytic materials for dilute hydrocarbon oxidation that converts methane to COz.
The remarks are respectfully not persuasive. The claims are composition claims. Therefore, as recited in the non-final action, the same composition would be effective in the same way.
The remarks on page 7 then argues the following:
Second, Cizeron evaluates catalysts under methane-rich feeds and high temperatures using conventional OCM conditions. It is well known in the art that in air-fed OCM, methane concentrations are typically ~15—30 mol %, while in Oo-fed OCM, the feed is even richer, often 50-95 mol %. Reaction temperatures within the reactor are generally 750-950 °C, and reported single-pass methane conversions are about 6—28%. By contrast, the present claims are limited to <5 mol % methane, temperatures <600 °C, methane conversion >60%, and COz selectivity >60%. These conditions define a non-overlapping operating window distinct from OCM.
Third, COz formation is consistently regarded by those skilled in the art as undesirable in OCM reactions. Cizeron’s figures and discussion associate higher CO2 selectivity with reduced C2 yield and expressly direct the skilled person to suppress CO2 formation (Cizeron, paragraph [269]; FIG. 11). The present claims, in contrast, require high COs» selectivity as the desired outcome—an opposite objective that constitutes clear teaching away.
This is respectfully not persuasive. The evaluation feature of Cizeron is used to analyze the features of the product, but do not limit the product itself.
Next, the remarks argue on page 7, the following:
Fourth, Cizeron describes lanthanide oxides doped with an alkaline earth metal together with at least one other dopant from groups 3-16 for oxidative coupling of methane (Cizeron, paragraph [0022]). However, Cizeron is completely silent with regard to the presently claimed specific dopant combination consisting essentially of one or more group 2 elements in combination with at least one dopant specifically chosen from group 4, 9, 10, and 11 for the purpose of converting methane to COz. As the Examiner will appreciate, the transitional phrase “consisting essentially of excludes the presence of dopants that would materially affect the basic and novel characteristics of the claimed invention. Accordingly, Cizeron teaches dopants that cannot be included in the claimed catalysts, and including the additional dopants taught by Cizeron would materially affect the performance of the claimed catalysts (e.g., at least 60% methane conversion and at least 60% COz selectivity). Accordingly, it would not be obvious to modify the catalysts of Cizeron to arrive at the claimed invention.
The remarks are respectfully not persuasive. Cizeron teaches that the catalyst comprises a mixed oxide (para. 21 or 104) and that this metal oxide is doped with two different compounds, one of which can be in group II of the periodic table (para. 0122) and then combined with another metal, such as Rh, Ni and other group 4, 9, 10 or 11 metals (para. 122). Since the claim state “consisting essentially of one or more dopants”, these portions of Cizeron meet these features of the claims.
As to Applicant’s interpretation that this excludes the presence of dopants that would materially affect the basic and novel characteristics of the claimed invention, this is respectfully disputed for several reasons. First, it is unclear which dopants would “materially affect the basic and novel characteristics” of the claimed invention. Second, the claims are product claims and merely having additives that are inferior to others does not obviate references from reading on those claims. Finally, the language of the claims themselves do not exclude dopants that do this.
Next, the remarks argue on page 8, the following:
Further, Cizeron does not teach or suggest catalysts capable of achieving the presently claimed performance requirements of methane conversion of at least 60% and CO: selectivity of at least 60% when the claimed catalytic material is employed as a heterogeneous catalyst contacting a gas stream comprising oxygen and methane in a fixed bed reactor at a pressure no greater than 5 barg and at a temperature no greater than 600 °C, wherein the gas stream contains less than 5 mol % methane. In contrast, the catalysts disclosed by Cizeron can only achieve CO: selectivity no greater than 50% (Cizeron, paragraph [0269]) with a much higher methane concentration. For example, Cizeron teaches that the OCM feed gas normally contains methane and oxygen with a CH4/O2 ratio of 4 (Cizeron, paragraph [0367]), which is inconsistent with the presently claimed dilute methane oxidation conditions.
The remarks are respectfully not persuasive because these are process features and the claims are composition claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 144, 153 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 41 of U.S. Patent Application No.: 13/479767. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 41 of ‘767 overlaps the features of Claims 144 and 153 of the current application because it discloses mixed lanthanide oxides doped by at least one doping element from groups 2, 4-15. The “at least one doping element” meets the dopant feature of Claim 144 and 153 using a dopant from group 2 and groups 4, 9, 10 and 11. As to the other features of Claims 144 and 153, the other method steps of that claim are intended use features. The other features of the claim are intended use.
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.
Claim(s) 144, 145, 147, 148, 149, 150, 151, 152, 153, 154, 155, 156, 157, 158, 159, 160, 161, 162, 163 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cizeron (US Pub.: 2013/0023709).
Claims 144 and 159 describes a catalyst composition. The method features are intended use features and therefore not limiting on the chemical composition of the catalyst.
Cizeron describes a catalyst material that can include a mixed oxide that can include at least two lanthanides in the mixed oxide catalyst (para. 104). The composition can include dopants from groups 4, 9, 12 and 13 of the periodic table as well as at least one additional dopant from group 2 (para. 111). Since Cizeron teaches this feature, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that in some embodiments that in some embodiments, the catalyst of Cizeron can include two lanthanides in a mixed oxide catalyst modified with dopants from group 2 and another one from Groups 4, 9, 12 and 13.
As to the method steps, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition used the same way would be similarly effective.
As to Claim 145, Cizeron teaches that the catalyst blend can include nanowires (para. 0185).
As to Claim 147, Cizeron teaches the catalyst composition of Claim 145. Although Cizeron does not specifically describe that the catalyst has a methane conversion at least it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would be effective in the same way.
As to Claims 148, 149, 150, 160, 161 and 162, Cizeron teaches the catalyst composition of Claim 145. Although Cizeron does not specifically describe that the catalyst has a methane described by Claims 148, 149 and 150, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would be effective in the same way.
As to Claims 151, 152 and 157 and 163, Cizeron teaches the dopants can include magnesium, cobalt (para. 111), nickel (para. 121), calcium and strontium (Claim 61).
As to Claim 153, Cizeron teaches that the catalyst blend can include nanowires (para. 0185). The composition can include dopants from groups 4, 9, 12 and 13 of the periodic table as well as at least one additional dopant from group 2 (para. 111). As to the method steps, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition used the same way would be similarly effective.
As to Claims 154, 155, 156 and 158, Cizeron teaches the catalyst composition of Claim 145. Although Cizeron does not specifically describe that the catalyst has a methane described by Claims 148, 149 and 150, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would be effective in the same way.
Conclusion
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 SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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, Fung Coris 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.
/SHENG H DAVIS/Primary Examiner, Art Unit 1732 October 21, 2025