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Claim 45 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claims 2 and 7, CaGe2 is not covered by the scope of Claim 1. To result in CaGe2 within the formula set forth in Claim 1, the value of x must be negative 1, so that there is no group 13 metal present in the compound. However, Claim 1 requires a value for x between 0 and 1. Therefore, it is unclear what the actual range of acceptable values for x are encompassed by the claim. For purposes of examination, the examiner will interpret the limitation as allowing for the value of x to be between negative and positive 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, the claims fail to include all the limitations of the claim upon which it depends, as the compound CaGe2 falls outside the compounds permitted by the provisions of Claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 Evans et al. (Structural properties and superconductivity in the ternary intermetallic compounds 𝑀𝐴𝐵 (𝑀=Ca, Sr, Ba; 𝐴=Al, Ga, In; 𝐵=Si, Ge, Sn), Physical Review B, 2009), hereinafter ‘Evans’.
Regarding Claim 1, Evans discloses several layered intermetallic compounds having the formula required by Claim 1 – particularly, Evans discloses ternary intermetallic compounds CaAlSi, SrAlSi, BaAlSi, CaGaSi, SrGaSi, BaGaSi, SrAlGe, BaAlGe, CaGaGe, SrGaGe, BaGaGe, BaInGe, BaAlSn, CaGaSn, SrGaSn, and BaGaSn (Abstract), and discloses these compounds to have layered structure (A. Structural properties). These compounds are considered catalysts such that they meet the instant claimed requirement of “[a] catalyst comprising a layered intermetallic compound”, as these compounds share the same composition and therefore must necessarily both be considered catalytic as claimed.
Regarding Claim 2, Evans discloses the compounds BaGaGe, BaGaSn, BalnGe, CaGaGe, CaGaSi, BaAlSi, and SrAlSi as claimed.
Regarding Claim 3, Evans discloses the compounds BaGaGe, BaGaSn, and BalnGe as claimed.
Regarding Claim 5, Evans does not disclose BaGa2 or SrGa2.
Regarding Claim 7, Evans discloses the compounds BaGaGe, BaGaSn, BalnGe, CaGaGe, CaGaSi, BaAlSi, and SrAlSi as claimed.
Regarding Claim 8, Evans discloses the compounds BaGaGe, BaGaSn, BalnGe, BaAlSi, and SrAlSi as claimed, wherein, according to the formula of Claim 1, the value of x is zero.
Regarding Claim 9-10, Evans discloses compounds wherein A is Ba, Sr, and Ca.
Regarding Claim 14, Evans discloses the compounds CaAlSi, SrAlSi, BaAlSi, CaGaSi, SrGaSi, BaGaSi, SrAlGe, BaAlGe, CaGaGe, SrGaGe, BaGaGe, BaInGe, BaAlSn, CaGaSn, SrGaSn, and BaGaSn, wherein in each compound M is selected from Al, Ga, and In.
Regarding Claim 16, Evans discloses the compounds CaAlSi, SrAlSi, BaAlSi, CaGaSi, SrGaSi, BaGaSi, SrAlGe, BaAlGe, CaGaGe, SrGaGe, BaGaGe, BaInGe, BaAlSn, CaGaSn, SrGaSn, and BaGaSn, wherein in each compound M’ is selected from Si, Ge, and Sn.
Regarding Claim 17, Evans discloses the compounds BaGaGe, BaGaSn, BalnGe, BaAlSi, and SrAlSi as claimed, wherein, according to the formula of Claim 1, the value of x is zero.
Regarding Claim 24, Evans discloses the compound CaGaGe as claimed.
Regarding Claim 26, Evans does not disclose any presence of transition metals in the disclosed compounds.
Regarding Claim 27, Evans discloses the compounds comprise a layered zintl phase (I. INTRODUCTION: the nine-electron systems MASi (i.e., BaGaSi) can be considered as charge imbalanced zintl phases).
Regarding Claim 32, Evans discloses compounds wherein A = Al, Ga, and In – these are triels, i.e., group 13 elements, and are therefore considered to form a triel network as claimed.
Regarding Claim 38, while Evans is silent regarding the catalyst effectively catalyzes a hydrogenation reaction, the compounds of Evans have the same chemical composition as those of the instant claims – therefore absent evidence to the contrary, the compounds of Evans 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) 1-3, 9-10, 14, 26-27, 32, 34, 38 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 1, 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 1 wherein x = 1.
Regarding Claims 2-3, 9-10, 14, the BaGa2 compound disclosed by Hodge meets the requirements of the claims.
Regarding Claim 26, Hodge discloses the BaGa2 is transition metal free, as discussed above.
Regarding Claim 27, Hodge discloses a Zintl phase BaGa2 as discussed above.
Regarding Claim 32, Hodge discloses compounds wherein A = Ga – this is a triels, i.e., a group 13 element, and therefore the compound of Hodge is considered to form a triel network as claimed.
Regarding Claim 34, 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 38, Hodge discloses BaGa2 as a hydrogenation catalyst (Abstract, Title).
Conclusion
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