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 .
Claim Status
Claims 1-9 were filed 7/21/2023 and are pending.
Priority
The application was filed on 7/21/2023 and claims the benefit of priority to:
PNG
media_image1.png
192
1084
media_image1.png
Greyscale
See filing receipt dated 11/15/2024. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 is objected to because the steps are recited as “SX.” with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). See MPEP 608.01(m).
In line 1 of claim 1, the word “comprising” should be inserted after the word “catalyst,”.
In line 1 of step S1 in claim 1, the word “comprising” should be inserted before the word “mixing”.
In line 4 of step S1 in claim 1, the phrase “a stirred solution” should be amended to recite “the stirred solution”.
In line 2 of step S3 of claim 1, the limitation “NaBH4” should be amended to recite “NaBH4”, where the number 4 is subscript.
At the end of line 6 of step S3 of claim 1, the word “and” should be inserted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-9 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.
Step S2 of claim 1 recites: “an ion-exchange: dispersing the hydrotalcite carrier MgAl-LDH obtained in S1 in a deionized water containing a metal salt to obtain a MgAl-LDH dispersed solution, after stirring and exchanging the MgAl-LDH dispersed solution, centrifuging a resulting MgAl-LDH dispersed solution to obtain a centrifuged precipitate, collect the centrifuged precipitate and washing the centrifuged precipitate with water to obtain a washed precipitate;”.
The step recites an “ion-exchange” which includes “exchanging” the MgAl-LDH dispersed solution with a “metal salt”. However, the product of the step is recited as “a resulting MgAl-LDH dispersed solution”. The only metal ions that are disclosed as being in the hydrotalcite carrier are Mg and Al in step S1 and they are still recited as being present in the product from step S2. Therefore, it is not clear what has been exchanged with the metal salt in the “ion-exchange” to produce an exchanged product.
Further complicating matters is that step S3, which follows step S2, includes reducing the precipitate of step 2 with NaBH4 to produce a “CoPd/LDH catalyst”. Similar to the issue with the product of step S2, it is not clear what the product of step S3 is. The Applicant has changed the nomenclature (X-LDH vs. X/LDH) and has appeared to introduce two new metals into the catalyst, Co (cobalt) and Pd (palladium). It is not clear how a reduction of “MgAl-LDH” would produce the claimed catalyst “CoPd/LDH”. Further, it is not clear if the catalyst “CoPd/LDH” refers to a catalyst wherein the MgAl have been replaced by CoPd (CoPd-LDH) or if the Co and Pd are supported on the MgAl-LDH (CoPd/MgAl-LDH).
Based on the example in [0026] of specification as filed, the Co and Pd are introduced as salts in step S2 and the resulting product is reduced in S3 to produce a catalyst “CoPd/LDH” wherein the Mg and Al ions appear to have been replaced with Co and Pd ions.
Additionally, if the Applicant is intending to limit the catalyst to one having Co and Pd ions, then step S2 should explicitly recite a Co salt and a Pd salt to provide antecedent basis for a CoPd/LDH product.
Claims 2-9 are rejected for depending from an indefinite claim and failing to cure the deficiency.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As discussed in the 35 USC 112(b) section above, the catalyst is limited in step S3 of claim 1 to “CoPd/LDH”. Though “palladium” and “cobalt” are not explicitly mentioned, their atomic symbols (Co and Pd) are included in the definition of the catalyst and interpreted to be required and limited to cobalt (Co) and palladium (Pd).
However, claims 4 and 7 recite that the metal salt of step S2, which presumably introduces the Co and Pd according to the specification as filed, can be platinum (Pt), specifically K2PtCl6. Further, claims 4-7 indicate that only one of a cobalt (Co) salt or a palladium (Pd) salt is required. Specifically, claim 4 recites “the metal salt is one or more of…” and claims 5-7 recite “the metal salt is the X salt”.
These limitations fail to further limit the catalyst of claim 1 as both Co and Pd are interpreted to be a required part of the catalyst and introduced as metal salts in step S2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Subject Matter free from the Prior Art
The claimed process appears to be free from the prior art. The closest prior art to the claimed invention includes:
Tu (“Insight into Acetic Acid Synthesis from the Reaction of CH4 and CO2” ACS Catal. 2021, p. 3384); and
Shao (“Revealing the active sites of the structure Ni-based catalysts for one-step CO2/CH4 conversion into oxygenates by plasma-catalysis” Journal of CO2 Utilization, 2021, p. 101675); and
Spivey (WO99/59952, published on 11/25/1999).
Tu is a 2021 review which summarizes known catalysis methods for reacting CH4 and CO2 to produce acetic acid in one-step, which corresponds to instant step S4 of claim 1. See abstract and “introduction” section. The bulk of the review is directed toward heterogeneous catalysis. In section 2 on p. 3385 to 3389, Tu provides Tables 1-3, summarizing the known heterogeneous catalyst systems for the claimed reaction. The Tables teach that Pt, Pd, or Co/Pd supported catalysts are known, as are fixed bed continuous reactors. Tu teaches that alternative feeding of CH4 and CO2 to a reactor at temperature between 170-300°C at atmospheric pressure (1 MPa) is also known. See last paragraph of p. 3385.
Tu is silent regarding the use of layer double hydroxide/LDH/hydrotalcite supports in any of the catalysts. Nor does Tu provide any motivation to modify any of the known catalyst systems in the review to include the claimed catalyst
Shao teaches nickel (Ni) supported LDH catalysts and their use in the one-step CO2/CH4 conversion into oxygenations by plasma-catalysis. See abstract. In section 2.2 on p. 2, Shao teaches the process for preparing said catalysts. The process appears to be analogous to that of instant step S1, wherein the claimed Mg salt is substituted for a Ni salt. Shao teaches the results of the catalysts in Fig. 6 on p. 7, some of which selectively produce acetic acid (CH3COOH), when CH4 and CO2 are added at the same time. See section 2.4 on p. 1-2.
Shao does not teach a CoPd/LDH catalyst prepared by instant steps S1-S3. Nor does Shao teach alternate feeding of CH4 and CO2 or provide motivation to arrive at the claimed catalyst based on the teachings of Shao.
Spivey is directed toward a method of producing alkyl carboxylic acids, such as acetic acid directly by carboxylation of alkanes, such as methane, which entails reacting carbon dioxide and the alkane in the presence of a heterogeneous catalyst at the same time to form the lower alkyl. See abstract and claim 1. Claims 7-8 teach that the heterogeneous catalyst is a transition metal catalyst which can comprise Co, Pd, or Pt. Claims 9-10 teach various catalyst supports, including hydrotalcites. Hydrotalcites are only generally mentioned and there is no experimental procedure for making said catalysts disclosed. Claim 11 indicates that the catalyst is preferably Pd/C, which would not lead the skilled artisan to the claimed catalyst.
Spivey does not teach a CoPd/LDH catalyst prepared by instant steps S1-S3. Nor does Spivey teach alternate feeding of CH4 and CO2. Nor does there appear to be motivation to arrive at the claimed catalyst based on the teachings of Spivey.
Therefore, the instantly claimed process appears to be free from the prior art. Additionally, the optimized examples 11 and 12 in the specification as filed show the significant selectivity of the reaction toward acetic acid (as opposed to methanol).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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, Scarlett Goon can be reached at 571-270-5241. 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.
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692