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.
Status of Claims
Claims 1-2, 4-5, 7, 10-11, 13, 15, 25-26 and 44-51 are currently under examination. Claims 3, 6, 8-9, 12, 14, 16-24 and 27-43 have been cancelled. Claims 44-51 are newly added. Claims 1, 5, 7, 15 and 25-26 are amended.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 5, 7, 15 and 25-26 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Hu et al. (US 5,990, 040) with respect to claims 1-2, 4, 10 and 25 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Hu et al., and further evidenced by et al. (GB 1,131, 631, entirely incorporated by reference through Hu et al.) with respect to claims 5, 7, 11, 13 and 15 is withdrawn.
In the light of the amendments, the rejection 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.) with respect to claim 26 is withdrawn.
New grounds of rejections are set forth below.
New Grounds of Rejections
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 26 and 44-46 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.
The limitations of “a unit cell dimension of at least..” recited in claims 26 and 44-46 are indefinite (emphasis added). 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, 7, 10-11, 13, 15, 25-26 and 44-51 are rejected under 35 U.S.C. 103 as being unpatentable over Bazer-Bachi et al. (US 2011/0092730 A1).
Regarding claim 1, Bazer-Bachi et al. teach a catalyst with a mixed zinc and aluminum oxide having a spinel crystalline spinel material in which the structure of the direct spinels (or true spinels) consists of a compact cubic arrangement in lattices with centered faces of oxygen. The bivalent cations (Zn 2+) occupy the tetrahedral coordination sites and the trivalent cations (Al 3+) the octahedral coordination sites. The catalyst comprise about 37%Zn, 5% of Co (Table 1) or alternative Mg ([0012]-[0015}) (the instant claimed promoter). As such, the oxygen is about 30% as the instant claim ([0012]-[0098]).
The phrase of "A water-gas shift reaction catalyst” recites in claim 1 is interpreted as intended use. Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Bazer-Bachi et al. teach the same composition as the instant claim, the catalyst would expect to be capable of performing these specific chemical reactions for catalyzing a water-gas shift reaction as per applicant claim 1. Therefore it meets the claim limitations.
Regarding claims 2, 4 and 10, as discussed above, Bazer-Bachi et al. teach an amount of 37%wt atom of Zn) and 28.6% Al which are encompassed by the instant claimed ranges ([0082]). Therefore, the atomic molar ratio of Zn :Al is 0.54 which is encompassed by the instant claimed ranges ([0045]).
Regarding claim 7, as discussed above, Bazer-Bachi et al. teach an amount of 5% cobalt (Table 1) which corresponds to the instant claimed promoter. Bazer -Bachi et al. also mentions other metal such as magnesium ([0012]-[0015]).
Alternative, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select 5% Mg taught by Bazer-Bachi et al. to obtain the invention as specified in the claim 7 as an alternative metal of cobalt, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary ([0012]-[0015]).
Regarding claim 11, as discussed above, Bazer-Bachi et al. teach an amount of 37%wt atom of Zn) and 5% Co which are encompassed by the instant claimed ranges ([0045], [0082] and FIG.2). Therefore, the atomic molar ratio of Co: Zn is 0.14:1 which is encompassed by the instant claimed ranges.
Regarding claims 13 and 15 , as discussed above, the catalyst taught by Bazer-Bachi et al. only contains crystalline spinel and zinc oxide phase.
The precursors of zinc and aluminum taught by Bazer-Bachi et al. may also be introduced in the form of sodium (an alkali metal). The pH may be adjusted by a basic precursor containing an alkali metal or alkaline earth metal ([0029]). They are not part of a crystalline spinel and would expect present in the composition in an amount of <5% as the instant claim.
Regarding claim 25, as discussed above, the total amounts of Zn, Al and Co in the catalyst taught by Bazer-Bachi et al. is about 70%.
The differences in concentration will not support the patentability of subject matter, this is a case of prima facie obviousness, as one having ordinary skill in the art at the time the invention was made, given the general conditions taught by Bazer-Bachi et al.
Regarding claims 26 and 44 , as discussed above, the total amounts of oxygen, Zn, Al and Co in the catalyst taught by Bazer-Bachi et al. is 100%, the structure of the direct spinels (or true spinels) consists of a compact cubic arrangement in lattices with centered faces of oxygen. The bivalent cations (Zn 2+) occupy the tetrahedral coordination sites and the trivalent cations (Al 3+) the octahedral coordination sites. The crystalline spinel material has a unit about 8.1 Ẳ as the instant claim ([0086]-[0096]).
Regarding claims 45-46, although Bazer-Bachi et al.do not specifically disclose a unit cell dimension of at least 8.15 Ẳ or 8.2 Ẳ as per applicant claims 45-46, the size of unit cell dimension is considered as optimization of variables.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to adjust the reaction condition for preparation the catalyst taught by Bazer-Bachi et al. to obtain the desired size including the invention as specified in the claims 45-46. If optimization based on result effective variable:
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 47-48, although Bazer-Bachi et al.do not specifically disclose a major dimension <500 nm or <100 nm as per applicant claims 47-48, the size of unit cell dimension is considered as optimization of variables.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to adjust the reaction condition for preparation the catalyst taught by Bazer-Bachi et al. to obtain the desired crystalline spinel size including the invention as specified in the claims 47-48. If optimization based on result effective variable:
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 49, as discussed above, the catalyst taught by Bazer-Bachi et al. is a single crystalline phase, there is no any other crystalline present. It reads on the claimed limitations.
Regarding claim 50, the catalyst taught by Bazer-Bachi et al .has a surface are 45-155 m2/g which read on the claimed limitations ([0045]).
Regarding claim 51, Bazer-Bachi et al .does not teach or suggest chromium in the catalyst composition as the instant claim.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bazer-Bachi et al. as applied to claim 1 above, and further in view of Takatsu et al. (WO 2008/044707 A1).
Regarding claim 5, although Bazer-Bachi et al. do not specifically disclose copper present in the catalyst composition as per applicant claim 5, Takatsu et al. teach a catalyst for water-shift reaction comprising 10% copper oxide, 5-50% zinc oxide, 10-30% aluminum oxide (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine copper taught by Takatsu et al. in the catalyst taught by Bazer-Bachi et al. to obtain the invention as specified in the claim 5 , motivated by the fact that copper-zinc-aluminum catalyst improve the catalyst activity and durability ([0010]).
Since both of Bazer-Bachi et al and Takatsu et al teach catalysts comprising zinc oxide and aluminum oxide, one would have a reasonable expectation of success.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 03/19/2026 have been considered but are moot in view of the new grounds of rejections.
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 YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1738
/YUN QIAN/ Primary Examiner, Art Unit 1738
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