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
Claim 45 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/12/2025.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 7-10, 14, 16-17, 24, 26-27, 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Werwein et al. (Hydrogenation Properties of LnAl2 (Ln = La, Eu, Yb), LaGa2, LaSi2 and the Crystal Structure of LaGa2H0.71, Crystals, 2019), hereinafter ‘Werwein’.
Regarding Claim 1, Werwein discloses LaGa2 (Title), a compound meeting the formula of Claim 1, wherein A is a lanthanide, M is a group 13 metal, and x = 1; 1. Introduction: Ga− ions are iso-valence-electronic to carbon and form planar graphite-like layers, such as in LaGa2 – therefore LaGa2 is considered a layered intermetallic compound).
Regarding Claim 2, Werwein discloses LaGa2 as discussed above.
Regarding Claim 5, Werwein does not disclose BaGa2 or SrGa2.
Regarding Claim 9-10, Werwein discloses compounds wherein A is La.
Regarding Claim 14 and 16, Werwein discloses the compound LaGa2, wherein M is La. M’ is not required by the instant claim where x = 1.
Regarding Claim 19, Werwein discloses LaGa2.
Regarding Claim 27, Werwein discloses the compounds comprise a layered zintl phase (1. Introduction: LaGa2 is a zintl phase).
Regarding Claim 32, Werwein discloses compounds wherein M = Ga – this is a triel, i.e., group 13 element, and are therefore is considered to form a triel network as claimed.
Regarding Claim 38, while Werwein is silent regarding the catalyst effectively catalyzes a hydrogenation reaction, the compound of Werwein has the same chemical composition as those of the instant claims – therefore absent evidence to the contrary, the compound of Werwein must necessarily exhibit the same or nearly the same properties as those claimed, including effectively catalyzing a hydrogenation reaction. Products having the same composition cannot have mutually exclusive properties – see MPEP 2112.01(I).
Claim(s) 71-76 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hodge et al. (Transition Metal-Free Alkyne Hydrogenation Catalysis with BaGa2, a Hydrogen Absorbing Layered Zintl Phase, Journal of the American Chemical Society, 2019), hereinafter ‘Hodge’.
Regarding Claim 71-74, Hodge discloses transition metal-free alkyne hydrogenation catalysis with transition metal-free layered Zintl phase BaGa2 (Abstract; Page 19969, col. 2, second paragraph), a compound meeting the formula of Claim 71 wherein A is a group 2 metal, M is a group 13 metal, and x = 1.
Regarding Claim 75, Hodge discloses the catalyst comprises a plurality of particles with dimensions ranging from 320 nm to 13 μm (Page 19970, col. 1, end of first paragraph) and an average specific surface area of 0.272 m2/g (Page 19971, col. 1, first paragraph).
Regarding Claim 76, Hodge discloses BaGa2 as a hydrogenation catalyst (Abstract, Title).
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) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Werwein et al. (Hydrogenation Properties of LnAl2 (Ln = La, Eu, Yb), LaGa2, LaSi2 and the Crystal Structure of LaGa2H0.71, Crystals, 2019), hereinafter ‘Werwein’, in view of Hodge et al. (Transition Metal-Free Alkyne Hydrogenation Catalysis with BaGa2, a Hydrogen Absorbing Layered Zintl Phase, Journal of the American Chemical Society, 2019), hereinafter ‘Hodge’.
Regarding Claim 34, while Werwein discloses LaGa2 for use as a hydrogenation catalyst (Title), Werwein does not disclose the particle size or specific surface area of said LaGa2.
However, Stoffels demonstrates the criticality of specific surface area in hydrogenation catalysts. It discloses that the specific surface area of catalysts of 100–500 m2 g−1 is the most common category found in the hydrogenation art – in principle, the catalyst specific surface should correlate with the speed of the catalyzed reaction as the reaction mixture is in contact with a higher fraction of the catalytic body per unit. However, the specific surface area cannot be extended without influencing other geometric parameters. It seems that the surface area of catalysts of 100–500 m2 g−1 represents an optimum, when considering the other parameters (4.4.1 Physical Properties).
Accordingly, as the speed of the catalyzed reaction is a variable that can be modified, among others, by adjusting catalyst specific surface area, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed range cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the specific surface area in Werwein to obtain the desired speed of catalyzed reaction, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223).
Allowable Subject Matter
Claim 24 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
The prior art does not disclose or reasonably suggest the limitations of Claim 24, which requires the hydrogenation catalyst comprises a 13-layer trigonal polytype of CaGaGe. While Evans as cited previously discloses this compound, it does not disclose or reasonably suggest that it is a 13-layer trigonal polytype of CaGaGe.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, filed 08/12/2026, are acknowledged.
With respect to arguments with regard to the rejection of the claim(s) under section 112(b), the arguments have been fully considered and are persuasive. These rejections have been withdrawn.
With respect to arguments in regard to prior art rejections under section 102, Applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under section 102 and 103 in view of Werwein and Hodge.
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 LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 9:30-5:30 PST.
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, Anthony Zimmer can be reached at (571) 270-3591. 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.
LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights