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 .
Response to Amendment
The amendment filed on 04/19/2026 has been entered. Claims 1-18 are pending in the application. Claims 8-15 withdrawn and claims 16-18 are newly added. Applicants’ amendments to the claims have overcome each 112(b) rejection previously set forth in the office action mailed 02/05/2026.
Response to Arguments
Applicant's arguments filed 04/19/2026 have been fully considered but they are not persuasive. Applicant argues on Pg. 6 that Milanov necessarily requires the presence of iridium as an essential component of the catalyst while the claimed catalytic system does not require iridium.
However, since claim 1 uses “comprising” language, the claim as written does not exclude the possible inclusion of iridium.
Applicant further argues on Pg. 7 that nickel is disclosed only as one alternative among multiple possible base metal promoters, without any specific preference or requirement for its selection, and nickel is not used in specific working examples.
However, it would have been obvious to one of ordinary skill in the art to choose any of the promoters disclosed by Milanov, including nickel, and arrive at the composition according to claim 1.
Applicant argues on Pg. 8 that the catalyst according to Milanov is a heterogeneous system consisting of (i) an iridium active phase deposited on (ii) a yttrium-stabilized zirconia support, rather than a system in which yttrium acts as a dopant of an iridium-based active composition, which is in contrast to the disclosure of Milanov.
However, Milanov discloses a catalyst for the CO2 reforming of hydrocarbons (Pg. 3 line 11 meeting limitation “catalytic system”) having an active composition which comprises at least… zirconium dioxide-comprising support material (Pg. 3 lines 12-13 meeting limitation “a support comprising zirconium”). In a preferred embodiment of the catalyst of the invention, the Ir is present on the zirconium dioxide-comprising support and the latter is doped with further elements (Pg. 4 lines 5-7). For doping the zirconium dioxide support, preference is given to selecting elements form the group of the rare earths (i.e. from the group consisting of… Y…Gd) … and oxides thereof (Pg. 4 lines 7-13 meeting limitation “a promoter chosen from gadolinium, yttrium”).
In a further preferred embodiment, the catalyst comprises at least one base metal-comprising promoter from the group consisting of Ni (Pg. 6 lines 11-12 meeting limitation “nickel”).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to choose any of the promoters disclosed by Milanov, including Ni, and arrive at the composition according to claim 1.
Applicant argues on Pg. 9 that Milanov discloses a fundamentally different catalyst structure centered on an iridium-based active phase supported on yttrium-stabilized zirconium dioxide (YSZ).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., process for preparing the catalytic system) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues on Pg. 9 that the claimed combination of features yields a synergistic effect that is neither disclosed nor suggested in Milanov.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., enhanced CO) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
Claims 1-4, 6-7, 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Milanov et al (CA 2877956).
Regarding claim 1, Milanov discloses a catalyst for the CO2 reforming of hydrocarbons (Pg. 3 line 11 meeting limitation “catalytic system”) having an active composition which comprises at least… zirconium dioxide-comprising support material (Pg. 3 lines 12-13 meeting limitation “a support comprising zirconium”). In a preferred embodiment of the catalyst of the invention, the Ir is present on the zirconium dioxide-comprising support and the latter is doped with further elements (Pg. 4 lines 5-7). For doping the zirconium dioxide support, preference is given to selecting elements form the group of the rare earths (i.e. from the group consisting of… Y…Gd) … and oxides thereof (Pg. 4 lines 7-13 meeting limitation “a promoter chosen from gadolinium, yttrium and mixtures thereof”).
In a further preferred embodiment, the catalyst comprises at least one base metal-comprising promoter from the group consisting of Ni, inter alia (Pg. 6 lines 11-12 meeting limitation “nickel”).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to select Ni as disclosed by Milanov, in order to provide a composition according to claim 1 and because the number of choices is small.
Regarding claim 2, Milanov discloses all the limitations in the claims as set forth above including for doping the zirconium dioxide support, preference is given to selecting elements form the group of the rare earths (i.e. from the group consisting of… Y…Gd) … and oxides thereof (Pg. 4 lines 7-13).
Regarding claim 3, Milanov discloses all the limitations in the claims as set forth above and further discloses the yttrium oxide content based on ZrO2 is preferably in the range from 0.01-80% by weight… even more preferably 1.0-30% by weight (Pg. 5 lines 3-5). In an example disclosed by Milanov, the yttrium-stabilized zirconium dioxide had an yttrium oxide content (Y2O3) of 8% by weight (Pg. 13 lines 30-31). 8% by weight is within the claimed range of from 0.1% to 20% by weight.
Regarding claim 4, Milanov discloses all the limitations in the claims as set forth above and further discloses in a further and preferred embodiment, the active composition according to the invention comprises not only iridium and zirconium dioxide but additionally two elements from the group of rare earths as doping elements (Pg. 5 lines 8-10). Particular preference is given to using… cerium (Ce) as doping elements (Pg. 5 lines 13-14). Doping with… cerium leads to stabilization of the cubic or tetragonal phase of ZrO2 resembling the stabilization by yttrium, with … Ce-Zr oxide… phase being able to be partially formed (Pg. 5 lines 15-17).
Regarding claim 6, Milanov discloses all the limitations in the claims as set forth above and further discloses in a further preferred embodiment, the catalyst comprises at least one base metal-comprising promoter from the group consisting of Ni… where the proportion of base metal-comprising promoters based on the weight of the catalyst is in the range 0.1-50% by weight… more preferably in the range 1-20% by weight (Pg. 6 lines 11-15).
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). In the instant case, the range taught by Milanov (1-20% by weight) overlaps with the claimed range (from 3 to 30%). Therefore, the range in Milanov renders obvious the claimed range.
Regarding claim 7, Milanov discloses all the limitations in the claims as set forth above and further discloses as process for applying the active components to the support material, it is possible to use all processes which are known to a person skilled in the art in the field of catalyst production (Pg. 9 lines 1-3). Mention may be made here by way of example of impregnation with an impregnation solution, impregnation to pore volume, spraying-on of the impregnation solution, washcoating and precipitation (Pg. 9 lines 3-5). The instant specification discloses the catalytic systems with nickel doped by the promoter metal M were prepared by the process of wet co-impregnation (Pg. 25 lines 1-3). Therefore, absent further evidence Milanov discloses the support, the nickel and the promoter form a homogenous mixture since impregnation with an impregnation solution is disclosed by Milanov.
Regarding claim 16, Milanov discloses the invention relates to a catalytic high-pressure process for the CO2 reforming of hydrocarbons (abstract meeting limitation “for converting a gas comprising CO2 and/or CO”).
Regarding claim 17 and 18, the recitation in the claims that the catalytic system is “for converting a gas comprising CO2 and/or CO in the presence of a cold plasma” (claim 17) and “for converting a gas comprising CO2 and/or CO in the presences of a plasma generated by dielectric barrier discharge (DBD)” (claim 18) 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 Milanov disclose a catalytic system as presently claimed, it is clear that the catalyst of Milanov would be capable of performing the intended use, i.e. converting a gas comprising CO2 and/or CO in the presence of a cold plasma and converting a gas comprising CO2 and/or CO in the presences of a plasma generated by dielectric barrier discharge (DBD), presently claimed as required in the above cited portion of the MPEP.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Milanov et al (CA 2877956) in view of Yao et al ("Synthesis Gas Production via Dry Reforming of Methane over Manganese Promoted Nickel/Cerium- Zirconium Oxide Catalyst").
Regarding claim 5, Milanov discloses all the limitations in the claims as set forth above but does not disclose “characterized in that the cerium/zirconium molar ratio is within a range from 90/10 to 40/60”.
Yao discloses Nickel/cerium-zirconium oxide (Ni/Ce50-Zr50) and manganese promoted Ni/Ce50-Zr50 (Ni-Mn/Ce50-Zr50) catalysts were prepared using an impregnation method and used in the dry reforming of methane (abstract). Commercial Ce50-Zr50 (Rhodia) was used as a support (Pg. 16646 left column paragraph 2.1). 50/50 is within the claimed range of from 90/10 to 40/60.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the cerium/zirconium molar ratio to be within a range from 90/10 to 40/60 in the catalyst of Milanov since Ce50-Zr50 (Rhodia) is commercially available as taught by Yao.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICOLE L QUIST whose telephone number is (571)270-5803. The examiner can normally be reached Mon-Fri 8:30-5:00.
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/N.L.Q./Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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