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 .
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.
Response to Election/Restrictions
Applicant’s election without traverse of Group I and species in the reply filed on 11/19/2025 is acknowledged.
Claims 1-2, 4-5, 7, 10-11, 13, 15 and 25-26 read on elected Group and species.
Claims 3, 6, 8-9, 12, 14, 16-24 and 27-48 are withdrawn from consideration as non-elected Group and species.
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 5 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.
Claims 5, 7, 15 and 25-26 recite the term “e.g.,”. The term render the claims indefinite because it is unclear whether the limitations following the phrase (or in the parenthetical) are part of the claimed invention. See MPEP2173.05(d).
Appropriated corrections are required.
The limitations of “…other than the crystalline spinel and a zinc oxide phase is a phase…” recited in claim 15 are unclear and confused. It is unclear what the crystal spinel refers to. What is the zinc oxide phase? Appropriated corrections are required.
The limitations of “at least 80 wt.% …of the catalyst composition is made up of a crystalline spinel material having a structure in which one or more promoters, aluminum, and/or zinc occupy tetrahedral and/or octahedral sites of a face-centered cubic array of oxygen; and zinc oxide.” (emphasis added) recited in claim 26 are unclear and confused. Is zinc oxide is a part of “a crystalline spinet material”? Are both of “a crystalline spinel material” and zinc oxide together made up of the catalyst composition? They are separated by a semicolon (;). Appropriated corrections are required.
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 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.
Claims 1-2, 4, 10 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (US 5,990, 040),
Regarding claim 1, Hu et al. teach a catalyst for water shift reaction comprising amount of
30-70%wt of CuO (col. 5, lines 5-10), when selected as 30%wt CuO which is about 24% calculated as elemental of copper and 6% as elemental oxygen) (col. 2, lines 33-34),
20-90%wt of ZnO(col. 5, lines 5-10), alternative selected as 33%wt ZnO which is 26.5% atom Zn, 6.5% atom Oxygen) (Table 1, Ex. 6)., and
5-40%wt of Al2O3 (col. 5, lines 5-10), alternative selected as 30%wt of Al2O3 which is about 16% atom of Al, 14% atom Oxygen).
As such, a total amount of oxygen atom% is about 26.5% wt. The amounts of each metal oxide is encompassed by the instant claimed ranges.
Regarding claim 2, as discussed above, Hu et al. teach an amount of 26.5%wt atom of Zn) which is encompassed by the instant claimed ranges (Table 1).
Regarding claim 4, as discussed above, Hu et al. teach an amount of 16% atom of Al which is encompassed by the instant claimed ranges (Table 1).
Regarding claim 10, as discussed above, Hu et al. teach an amount of 26.5% atom of Zn) and 16% atom of Al. Therefore, the atomic molar ratio of Zn :Al is 3.31 :2 which is encompassed by the instant claimed ranges.
Regarding claim 25, the catalyst taught by Hu et al. comprise 24%wt of CuO (24% atom of Cu), alternative select an amount of 60%wt. of ZnO (48% atom of Zn), 16% atom of Al, and 1.8%wt of Mg. So the total amount of Cu, Zn, Al and Mg is 90% atoms as the instant claim.
Claims 5, 7, 11, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. as applied to claim 1 above, and further evidenced by et al. (GB 1,131, 631, entirely incorporated by reference through Hu et al.).
Although Hu et al. do not specifically disclose the amount of MgO as per applicant claims 5 and 7, Davies et al. teach a catalyst for water shift reaction comprising 3% MgO (1.8% of atom of Mg, 1.2% atom of Oxygen).
Since the reference of Davies et al. is entirely incorporated by Hu et al (col. 3, lines 49-55), it would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine amount of 1.8% Mg taught by Davies et al. in the catalyst composition of Hu et al. to obtain the invention as specified in the claims 5 and 7.
Regarding claim 11, as discussed above, Hu et al. teach an amount of 24% atom of Cu (0.38 % mol of Cu), and 1.8% atom of Mg (0.08%mol). The total of copper and magnesium (the instant claimed promoters) is 0.46 mol of Cu and Mg.
An amount of ZnO taught by Hu et al. is alternatively selected as 90%wt (about 72.3%wt. atom of Zn, 1.11 % mol of Zn) (col. 5, line 8). Therefore, the atomic molar ratio of (Cu+ Mg) :Zn is 0.41 which is encompassed by the instant claimed ranges.
Regarding claims 13 and 15, neither Hu et al. nor Davies et al. discloses MgO that is part of a crystalline spinel as the instant claims.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. as applied to claim 1 above, and further evidenced by Kristiansen et al. (US 4, 308, 176, entirely incorporated by reference through Hu et al.).
Regarding claim 26, although Hu et al. do not specifically disclose at least 80% of the catalyst composition is made up of a crystalline spinel material as per applicant claim 26, Kristiansen et al. teach a catalyst for water shift reaction consists of copper oxide, aluminum oxide-spinel and 60-100 percent of the copper present is bound to aluminum oxide as copper oxide, aluminum oxide-spinel, where the molar ratio Cu: Al=0.25-0.50. The catalyst itself contains 1-20 percent by weight of zinc oxide which is present in the pores of the spinel (Abstract).
Since the reference of Kristiansen et al. is entirely incorporated by Hu et al (col. 3, lines 22-26), it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate of zinc oxide into the pores of the spinel structure taught by Kristiansen et al. in the catalyst composition of Hu et al. to obtain the invention as specified in the claim 26, motived by the fact that catalyst is stated to have a high activity, and to be more stable than a catalyst with comparable composition, but without a spinel structure (col. 2, lines 6-8).
Since both of Hu et al. and Kristiansen et al. teach catalysts for water-shift reactions comprising CuO, Al2O3 and ZnO, one would have a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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, Sally A Merkling can be reached at 571-272-6297. 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.
YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738