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 Interpretations
Claim recited the molar mass of MMgO, MCuO and MAl2O3 are interpreted as applicant defined in their specification (see page 15 lines 15-17 of the English lanauge specification as originally filed), which applicant has been explained page 10 last para. -firs para. Of page 11 in the response filed on 12/15/2025: MMgO=40.304g/mol, MCuO=79.546g/mol, MAl2O3=101.96g/mol.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 18-19 are rejected under 35 U.S.C. 103 as obvious over Lambert (FR3061036) (for applicant’s convenience, English equivalent US2019/0388874 has been provided hereof for citations) in view of Aral (WO2002079090).
Lambert teaches a solid oxygen carrier comprising redox active mass (particularly being copper oxide-CuO) dispersed onto a ceramic matrix, wherein the redox active mass material (i.e. copper oxide) content is between 5% and 75% by weight of said oxygen-carrying solid, while the ceramic matrix content being 25 and 95% by weight of said oxygen-carrying solid (claim 1, para. [0080], [0081]) and the ceramic matrix being magnesium aluminate of MgAl2O4 (para. [0098], [0106], [0109]). It is noted that Lambert disclosed CuO content overlapping with that of instantly claimed CuO content (i.e. X). While MgO (molar mass being 40) mass content in MgAl2O4 (molar mass being 142) is (40/142x100%=28.2%) and Lambert discloses mass content of MgAl2O4 in the solid oxygen carrier being 25-95 %, therefore, Lambert suggests MgO content in the solid oxygen carrier range being 28.2%x(25%-95%)=7.05%-26.97%, such MgO content is within the instantly claimed MgO content range (i.e. Y).
Regarding claim 1, Lambert does not expressly teach the magnesium aluminate being sub-stoichiometric as that of instantly claimed.
Aral teaches a magnesium aluminate can have excess alumina as compared to Mg, i.e. a magnesium aluminate being substiochiometric (page 9 lines 5-9, 27-35, examples, table 3, claim 27).
It would have been obvious for one of ordinary skill in the art adopt such well-known substiochiometric magnesium aluminate of Aral to practice the magnesium aluminate of Lambert because adopting known substiochiometric magnesium aluminate to modify the known oxygen carrier comprising magnesium aluminate for improvement would have predictable results (see MPEP §2143 KSR).
Since Lambert already teaches copper oxide content overlapping with that of instantly claimed and MgO content, Al2O3 being same as that of instantly claimed, while Arai teaches a substiochiometric magnesium aluminate can have excess alumina, magnesium being less in the spinel. Therefore, applied references teach same or substantially the same CuO, MgO and Al2O3 contents, same molar mass of MgO as that of instantly claimed MMgO, same molar mass of Al2O3 as that of instantly claimed MAl2O3, same molar mass of MCuO as that of instantly claimed McuO. Thus, a first sub-stoichiometric spinel and/or a second sub-stoichiometric spinel with formula of a, b, c, d and e as those of instantly claimed would be expected from applied references’ teachings. Lambert already teaches similar X and Y ranges leading to a similar X, Y leading to a similar Y<-0.6342X+26.223 as that of instantly claimed too.
Regarding claim 2, such limitations are taught as discussed above.
Regarding claim 3, the recited second spinel not necessarily presented in the instant claimed oxygen carrier solid composition because claim 3 does not further limit the oxygen carrier solid composition being only first spinel embodiment of claim 1 at all: claim 3 does not positively recites that the recited second spinel being included in the oxygen carrier composition.
Regarding claim 4, Lambert further teaches the particles of the oxygen carrier solid are preferably substantially spherical (para. [0114]) and such particles having a particle size such that more than 90% of the particles have a size of 50 µm and 600 µm (para. [0112], claim 10).
Regarding claim 5, Lambert further teaches the particles of the solid oxygen carrier having a total pore volume Vtot between 0.1 and 0.85 ml/g (para. [0090]) and total pore volume Vtot of the particles is constituted, for at least 40%, by macropores (para. [0091]), a size distribution of the macropores, measured by mercury porosimetry, is between 50 nm and 3 µm (para. [0092], examples, claim 2-4).
Regarding claim 18-19, such limitations have been taught as discussed above.
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 1-5 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of U.S. Patent No. 11717811 (noted US’811 is the allowed patent of US2019/0388874) in view of Aral (WO2002079090). US’811 teaches a same or substantially the same oxygen solid carrier comprising magnesium aluminate and CuO with same CuO, MgO and Al2O3 content (see above explanation in rejections), but does not teach the magnesium aluminate being sub-stoichiometric as that of instantly claimed. Aral has been described as above. It would have been obvious for one of ordinary skill in the art adopt such well-known substiochiometric magnesium aluminate of Aral to practice the magnesium aluminate of US’811 because adopting known substiochiometric magnesium aluminate to modify the known oxygen carrier comprising magnesium aluminate for improvement would have predictable results (see MPEP §2143 KSR). Since US’811already teaches copper oxide content overlapping with that of instantly claimed and MgO content, Al2O3 being same as that of instantly claimed, while Arai teaches a substiochiometric magnesium aluminate can have excess alumina, magnesium being less in the spinel. Therefore, similar or overlapping molar mass of MgO as that of instantly claimed MMgO, similar or overlapping molar mass of Al2O3 as that of instantly claimed MAl2O3 would be expected and US’811 already teaches similar X and Y ranges as that of instantly claimed. Thus, a first sub-stoichiometric spinel and/or a second sub-stoichiometric spinel with formula of a, b, c, d and e as those of instantly claimed would be expected from US’811 and Aral’s teachings.
Response to Arguments
Applicant's arguments regarding 112 rejections (filed on 12/16/2025) have been acknowledged and thus previous rejections have been withdrawn.
Applicant's arguments filed on 12/16/2025 regarding obvious rejections based on Lambert in view of Aral have been fully considered but they are not persuasive. In response to applicant’s arguments about Lambert et at not teaching an oxygen carrier solid of a ceramic matrix including a sub-stoichiometric spinel of formula MgaAlbO4 or Aral not teaching sub-stoichiometric spinel as required by claim 1, as explained during the office action, Lambert teaches a solid oxygen carrier comprising redox active mass (particularly being copper oxide-CuO) dispersed onto a ceramic matrix, wherein the copper oxide content is between 5% and 75% by weight of said oxygen-carrying solid, while the ceramic matrix content being 25 and 95% by weight of said oxygen-carrying solid (claim 1, para. [0080], [0081]). Apparently, Lambert disclosed CuO content overlapping with that of instantly claimed CuO content (i.e. X). While MgO (molar mass being 40) mass content in MgAl2O4 (molar mass being 142) is (40/142x100%=28.2%) and Lambert discloses mass content of MgAl2O4 in the solid oxygen carrier being 25-95 %, therefore, Lambert suggests MgO content in the solid oxygen carrier range being 28.2%x(25%-95%)=7.05%-26.97%, such MgO content is within the instantly claimed MgO content range (i.e. Y). In summary, Lambert teaches overlapping X, and same Y as that of instantly claimed (see explanation in previous rejection), with same molar mass of MgO, CuO, and Al2O3. Furthermore, Aral expressly teaches using a sub-stoichiometric magnesium aluminate wherein Al2O3 content being 76.5%, while MgO content being 22.0, based on Lambert discloses mass content of MgAl2O4 (magnesium aluminate ) in the solid oxygen carrier being 25-95 %, therefore, MgO content in the solid carrier being 22.0% x(25-95%)=5.5%-20.9%, overlapping with that of instantly claimed Y content as well. Hence, Aral expressly teaches sub-stoichiometric magnesium aluminate can be used. In summary, Lambert in view of Aral teaches overlapping X, overlapping Y content as that of instantly claimed and such magnesium being stoichiometric, and Lambert in view of Aral disclosed composition having same molar mass of MgO, CuO and Al2O3, therefore, a sub-stoichiometric MgaAlbO4 and/or sub-stoichiometric spinel of CucMgdAleO4 as that of instantly claimed are expected from applied references’ teachings. Since Lambert teaches same or substantially the same X and Y, therefore, same or substantially the same Y<-0.6342X+26.223 as that of instantly claimed is expected as well.
In response to applicant’s arguments about sub-stoichiometric showing improved results (i.e. improving distribution of copper) as compared to stoichiometric spinel form of MgAl2O4 (example 3-6 as compared to comparative example 2), the examiner would like to remind the applicant that evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (see MPEP § 716.02(d) - § 716.02(e)). In this case, the applied closest prior art Lambert in view of Aral teaches a sub-stoichiometric magnesium aluminate or copper magnesium aluminate as that of instantly claimed having overlapping CuO and MgO content as that of instantly claimed. Therefore, comparison against comparative example 2 using a stoichiometric MgAl2O4 is not even against the closest prior art. Next, even if assuming applicant’s allegation of example 3-6 showing improved results of example 2 being true, it is noted that example 3-6 showing specific sub-stoichiometric spinel with specific X and Y content as summarized in following table:
Example #
CuO content X (wt%)
MgO content Y (wt%)
Sub-Stoichiometric spinel
3
13
12.2
Mg0.48Al2.34O4
4
13
6.09
Cu0.243Mg0.224Al2.355O4
5
13
12.18
Cu0.245Mg0.453Al2.355O4
6
11.15
3.52
Cu0.205Mg0.328Al2.445O4
It can be seen that such example demonstrated only one X content being 13%, 12.2% of MgO and with a specific sub-stoichiometric spinel of Mg0.48Al2.34O4, while 3 different sub-stoichiometric copper magnesium aluminate with specific content of copper and MgO, first of all, none of such example covering the claimed embodiment of the solid oxygen carrier comprising both first sub-stoichiometric spinel and second sub-stoichiometric spinel at all. Secondly, such examples demonstrated specific data has much narrower scope as compared to the instantly claimed scope even if the claimed solid oxygen carrier being first sub-stoichiometric spinel or second sub-stoichiometric spinel. Specifically, example 3 demonstrated one first sub-stoichiometric spinel data cannot show that instantly claim 1 claimed all first sub-stoichiometric spinel would have such alleged improved results. Similarly, example 4-6 demonstrated three specific second sub-stoichiometric spinel data do not show that instantly claimed all second sub-stoichiometric spinel composition having such improved results either. Therefore, such arguments are not found convincing.
In response to applicant’s arguments about instant invention unlike Lambert to (FR3061036) wherein instant invention “copper did not form copper oxide nodules int eh porosity of the particles, and the distribution of copper in the particles is substantially improved”, firstly, such limitation is not even being claims. Secondly, applied references teach a same or substantially the same sub-stoichiometric magnesium aluminate with same or substantially the same Cu content and same or substantially the same MgO content, therefore, same or substantially the same property of “not form copper oxide nodules int eh porosity of the particles, and the distribution of copper in the particles is substantially improved” would be expected from the applied references.
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 JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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/JUN LI/Primary Examiner, Art Unit 1732