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 declaration under 37 CFR 1.132 filed 2 July 2026 is insufficient to overcome the rejection of the claims based upon Benedek in view of Dey as applied under 35 U.S.C. §103 as set forth in the last Office action because: the showing fails to provide sufficient data to establish criticality of the recited aspect ratio range. The declaration attempts to show unexpected results of the recited aspect ratio range. However, the criticality of the claimed range was not shown as the Courts have held that to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP §716.02(d)II. As Applicant only showed tests which were slightly outside the claimed range and only one test within the claimed range, criticality of the claimed range has not been established due to insufficient data being provided.
Response to Arguments
Applicant's arguments filed 2 July 2026 have been fully considered but they are not persuasive.
Applicant argues that the declaration shows that the catalyst of claim 1 yields unexpected and critically superior results in both ethylene gas reduction and long-term ozone decomposition. The Examiner has fully considered the argument but has not found it to be persuasive. The Examiner notes the above discussion regarding the failure of the declaration to establish the criticality of the aspect ratio range. Additionally, the Examiner notes that Dey teaches that the “size and morphologies of primary particles are often crucial factors in determining the catalytic performance of manganese oxides in structure-sensitive reactions and small particles sizes as well as the resultant more exposed surfaces are generally desirable in the catalytic oxidation reactions because sufficient activity sites can be accessed by the reactants” (right column of page 3). Thus, it is clear from the teaching, and from the knowledge of one of ordinary skill in the art, that the specific surface area of a catalyst composition is critical to determine catalytic activity. While aspect ratio would also affect catalytic activity, the Examiner contends that two different catalyst compositions can have the same aspect ratio but greatly different specific surface areas. Therefore, the Office holds that aspect ratio, without being tied to a particle size or specific surface area, does not capture catalytic activity in a manner which would patentably distinguish the claimed invention over the prior art absent further data. Therefore, it would have been within the ambit of one of ordinary skill in the art to have determined an optimal or workable aspect ratio range without creating any new or unexpected results so as to provide catalytic particles with a desired specific surface area in order to create a desired catalytic activity.
Claim Rejections - 35 USC § 103
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, 3-4, 6-8, 11-13, 15-16 and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Benedek et al. (US 2018/0264160; hereinafter “Benedek”) in view of Dey et al. (“The performance of highly active manganese oxide catalysts for ambient conditions carbon monoxide oxidation,” Current Research in Green and Sustainable Chemistry 3 (2020) 100012; hereinafter “Dey”).
In regard to claims 1, 3-4, 13 and 15-16 Benedek discloses an air-cleaning device, system and method for reducing harmful ethylene-containing gases ([0020]) and harmful microorganisms ([0025]), the air-cleaning device comprising: an air inlet (proximal arrow 41 on left side of Figure 1) for intaking air from an outside; an ozone generating unit (in zone 44 for ozone generation) in which a corona discharge ozone generator (see [0068] and [0182]) is located; an ozone decomposition unit (in zone 48 for ozone removal) for removing ozone generated in the ozone generating unit, in which a support (“substrates”; [0037]) and an ozone decomposition catalyst structure including a manganese oxide (see [0035]) are located; and an air outlet (proximal arrow 41 on right side of Figure 1) for outflowing the internal air to the outside, wherein the manganese oxide is located on at least a portion of an inside and the surface of the support (in zone 48 on a substrate; [0192]). See Figure 1 and paragraphs [0178]. Thus, the device of Benedek functions by first reducing a harmful gas using the generated ozone and then by decomposing the generated ozone using a manganese oxide catalyst as recited in the method of claim 13.
Benedek is silent in regard to the crystalline structure and shape of the manganese oxide catalyst.
Dey discloses that nano manganese oxide catalysts are known to be used as oxidation catalysts for ambient condition reactions with gases such as carbon monoxide. Dey teaches that manganese dioxide has several crystalline structures, including α, β, γ and δ (see the right column of page 2; as recited in claims 2-4 and 14-16) and amorphous MnO2 (line 2 of the left column of page 10; recited in claim 4 and 16) which can be provided in a shape selected from a nanorod (Figure 5 on page 4; ; as recited in claims 2 and 14), nanofiber (“worm-like fibers”; right column of page 4; as recited in claims 2 and 14), nanoflower (Figure 5 on page 4; as recited in claims 3 and 15) or nanosheet (“nanobelt”; Figure 5 on page 4; as recited in claims 3 and 15). Dey teaches that the “size and morphologies of primary particles are often crucial factors in determining the catalytic performance of manganese oxides in structure-sensitive reactions and small particles sizes as well as the resultant more exposed surfaces are generally desirable in the catalytic oxidation reactions because sufficient activity sites can be accessed by the reactants” (right column of page 3) and that α and δ have the largest specific oxygen reduction reaction activity of the polymorphic forms (right column of page 5). Dey discloses that manganese nanoparticles can be provided in the 20-40 nm size (within the diameter range of 1 to 500 nm as recited in claims 4 and 16) with a specific surface area in the 30-50 m2/g range, and manganese nanorods with particles ranging from 10 to 120 nm with a specific surface area in the 30-70 m2/g range. See the left column of page 5. Dey discloses that nanorods can have an average length of 200-220 nm and a diameter of 17-23 nm, which would be an aspect ratio of approximately 1:10, which is within the recited range of claims 1 and 13. Dey further discloses nanobelt (viewed to be equivalent to the nanosheet shape) particles with a thickness of ~15 nm and nanoparticles. See the right column of page 4 to the first partial paragraph on the left column of page 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined an optimal or workable form(s) of the nano manganese oxide structures and shapes disclosed by Dey to have substituted for the manganese oxide catalyst the device, system and method of Benedek for the purpose of providing manganese oxide with increased surface area as to increase the performance of the catalyst in decomposing the ozone gas. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). It is noted that the instant application does not disclose the criticality of the aspect ratio of the nanorod or nanofiber shapes, the thickness of the nanoflower or nanosheet shapes, the diameter of the nanoparticle, or the combination of α and δ nano manganese oxide. Therefore, it would have been within the ambit of one of ordinary skill in the art to have determined the optimum or workable range to the above aspect ratio, thickness, diameter, and morphology makeup for a catalyst composition without creating any new or unexpected result in order to provide a desired specific surface area and morphology to provide a desired catalytic activity. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, F.). The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
In regard to claims 6 and 18, Benedek discloses wherein the manganese oxide catalyst further comprises a metal oxide (“corrugated metal oxide structure”) or activated carbon in combination as a catalytic decomposer. See [0192].
In regard to claims 7 and 19, Benedek discloses wherein the support is a ceramic material (“ceramic honeycomb monolith”), metal material (“metal honeycomb monolith”) in the form a monolith. See [0192].
In regard to claims 8 and 20, Benedek discloses that the catalyst can be configured as a metal honeycomb monolith, a ceramic honeycomb monolith, or a corrugated metal oxide structure and does not explicitly state that a binder is required. As Applicant does not disclose that any new or unexpected result is gained by the catalyst structure being binder-free, it is held that it would have been within the ambit of one of ordinary skill at the time of the invention to have formed the catalyst structure without a binder without creating any new or unexpected results.
In regard to claims 11-12 and 21-22, Benedek discloses wherein the harmful gas comprises ethylene ([0020]) and wherein the harmful microorganisms comprise fungi and viruses (see [0225]).
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 TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
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