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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025 has been entered.
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.
Claim 1 and 3-4, 9 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. In this case, claim 1 first recites “a Fe-Ga-Zr composite oxide formed by the Fe, Zr and Ga”, then also recites “Fe-Ga-Zr composite oxide is formed by coprecipitation of Fe, Zr and Ga nitrates followed by calcination”, one of ordinary skill in the art is uncertain whether the first recited “formed by the Fe, Zr and Ga” and later-on recited “formed by coprecipitation of Fe, Zr and Ga nitrates followed by calcination” referring to the same process/step limitation(s), or referring to different process/steps for forming the claimed Fe-Ga-Zr composite oxide. therefore, such confusion renders claim indefiniteness and all claim 1’s depending claims are rejected for similar reasons.
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.
Claim(s) 1, 4 and 9 are rejected under 35 U.S.C. 103 as obvious over Gang et al. (CN108160104) (for applicant’s convenience, Machine translation has been used for citations hereof).
Gang et al. teaches a carbon dioxide hydrogenation catalyst comprising nano-metal oxide comprising Fe2O3 and metal auxiliary agent which is one or more selected from the group consisting of ZnO, Cr2O3, Y2O3, Ga2O3, MnO2, CuO, ZrO2 and CeO2, wherein molar ratio of metal element Fe and the auxiliary agent metal is 1:1 to 10:1 (claim 1-3, para. [0007], [0010]-[0012]). Gang et al. also expressly teaches the auxiliary agent can include Zr or Ga (example 1 and 8). It would have been obvious for one of ordinary skill in the art to combine Zr and Ga as auxiliary metal in the catalyst composition because combining such known auxiliary metal element into a known method of forming nanometal iron oxide containing catalyst containing both Ga and Zr for CO2 hydrogenation would have predictable results (see MPEP §2143 KSR).
As for the claimed Fe content in the catalytic metals is within a range of 55 to 90% by mass in terms of metal atoms, Gang et al. molar ratio of metal element Fe and the auxiliary agent metal is 1:1 to 10:1 (claim 1-3, para. [0007], [0010]-[0012]) suggesting a Fe mass ratio (based on the total catalytic metals of Fe, Ga and Zr) overlapping or being within that of instantly claimed thus renders a prima facie case of obviousness (see MPEP § 2144. 05 I).
Regarding claim 1, Gang et al does not expressly teach a Fe-Ga-Zr composited oxide formed by the Fe, the Zr and the Ga. However, Gang et al. teaches mixing such Fe, Ga and Zr containing precursor together, then co-precipitating, drying and calcining to form the nano metal oxide comprising Fe2O3 and metal auxiliary agent of Ga and Zr (claim 5, para. [0015]-[0033]), wherein such process is same or substantially the same as that of instant application forming the catalyst (see filed specification para. [0014], [0016], [0032], example 1-3), therefore, same or substantially the same Fe-Ga-Zr composite oxide formed by the Fe, Ga and Zr as that of instant application is expected.
As for the claimed “formed by coprecipitation of Fe, Zr and Ga nitrates followed by calcination”, this is a product by process limitation, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See § MPEP 2113). In this case, Gang et al. already teaches a same or substantially the same catalyst comprising Fe-Zr-Ga composite oxide as that of instantly claimed as discussed above.
Regarding claim 4, Gang et al. already teaches Zr metal molar ratio to Fe metal being 1:1 to 1:10, therefore, Gang et al. suggesting a Zr mass ratio overlapping or being within that of instantly claimed thus renders a prima facie case of obviousness (see MPEP § 2144. 05 I).
Regarding claim 9, Gang et al. already suggests Ga metal molar ratio to Fe metal being 1:1 to 1:10, therefore, Gang et al. suggesting a Ga mass ratio overlapping or being within that of instantly claimed thus renders a prima facie case of obviousness (see MPEP § 2144. 05 I).
Claim(s) 3 is rejected under 35 U.S.C. 103 as obvious over Gang et al. (CN108160104) (for applicant’s convenience, Machine translation has been used for citations hereof) as applied above, and in view of Dorner (US2011/0105630).
Regarding claim 3, Gang et al. does not expressly teach the catalytic metal including Na.
Dorner teaches a CO2 hydrogenation catalyst comprising iron and sodium (Na) etc. metals (para. [0024], [0050]) wherein such catalyst comprises at least one alkali or alkaline earth metal selected from the group consisting of Li, Na, K, Cs and Sr for desired catalyst selectivity and yield (para. [0053]).
It would have been obvious for one of ordinary skill in the art “obvious to try” sodium (Na) as alkali metal to modify the catalyst composition of Gang et al. because choosing sodium from a finite number of identified, predictable alkali metals for help providing a CO2 hydrogenation catalyst with increased surface basicity thus improving the catalyst yield and selectivity as suggested by Dorner (para. [0053]) would have a reasonable expectation of success (see MPEP § 2143 KSR).
Response to Arguments
Applicant's arguments filed on 12/23/2025 have been fully considered but they are not persuasive. In response to applicant’s arguments about Gang not teaching forming a ternary Fe-Ga-Zr composite oxide by co-precipitation Fe, Zr and Ga nitrates together, this is a product by process limitation, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See § MPEP 2113). In this case, Gang et al. already teaches a same or substantially the same method of forming a same or substantially the same catalyst comprising Fe-Zr-Ga composite oxide as that of instantly claimed as set forth in the rejections. Since the office has established Gang et al. teaches or suggests a same or substantially the same catalyst comprising Fe-Zr-Ga composite oxide, the burden has been shifted to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product.
In response to applicant’s arguments about Gang et al. disclosed example 1 using Fe nitrates with Zr but no Ga while example 8 uses Fe nitrate with Ga nitrate but no Zr, as established in the office action, combining both precursor of Zr and Ga together with iron oxide into a known method of forming nanometal iron oxide containing catalyst containing both Ga and Zr for CO2 hydrogenation would have predictable results (see MPEP §2143 KSR). Therefore, such arguments are not found convincing.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
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