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 .
Claims 1-15 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was filed on October 5, 2023.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, in the reply filed on March 17, 2026, is acknowledged.
Claims 9-15 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of manufacturing a metal composite catalyst, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 17, 2026.
Applicants’ request for rejoinder of Group II upon the indication of allowable subject matter in elected Group I is duly noted.
Claims 1-8 are presently under consideration by the Examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 9 of claim 1, “Ni metal particle” should be amended to recite “Ni metal particles”.
Appropriate correction is required.
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.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 6-8 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP 2018 023938) in view of Masuda et al. (EP 3 632 543).
Regarding claims 1 and 6, Mori et al. teach an ammonia decomposition catalyst comprising a carrier and metal particles supported thereon, wherein nickel is an exemplary metal. The carrier is described as a substance that stably and highly disperses metal particles that exhibit catalytic activity in the ammonia decomposition reaction, wherein "highly dispersedly loaded" means that the density of the metal particles loaded on the surface of the carrier is uniform or nearly uniform over the entire surface of the carrier. Examples of the carrier include at least one metal oxide selected from the group consisting of aluminum oxide, magnesium oxide, zirconium oxide, yttria-stabilized zirconia, NaY-type zeolite, ultra-stable Y-type zeolite, rutile-type titanium oxide, anatase-type titanium oxide, and rutile-anatase mixed crystal-type titanium oxide (claim 6). See paragraphs [0007], [0009], [0018], [0019] [0023], and [0024] of Mori et al., the last of which teaches that the metal particles have a particle size smaller than that of the support and are supported on the surface of the support (“dispersed on a surface of the carrier”, as recited in claim 1).
Further regarding claim 1, Mori et al. teach that the amount of metal particles supported on the carrier ranges from 1 to 20% by mass relative to 100% by mass of the total of the carrier and metal particles. See paragraph [0027] of Mori et al. This amount is considered to read upon Applicants’ claim limitation “content of the Ni metal particle is 15 to 70 parts by weight with reference to 100 parts by weight of the metal composite catalyst”; as the range disclosed in Mori et al. overlaps that recited in Applicants’ claim 1, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549; see also MPEP 2144.05(I).
Mori et al. do not teach or suggest that the metal particles exhibit a diameter of 60 nm or less, as recited in claim 1.
Regarding claim 1, Masuda et al. teach a structured catalyst for ammonia decomposition comprising a support constituted of a zeolite-type compound and at least one catalytic substance present inside at least in the channels of the support. Examples of the catalytic substance, defined as metal nanoparticles, include nickel; the metal nanoparticles exhibit a mean particle size ranging from 0.08 to 30 nm (“diameter of the Ni metal particle is 60 nm or less”). See paragraphs [0010] and [0031] of Masuda et al.
Motivated by these references’ common teachings regarding ammonia decomposition catalysts, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention by modifying the catalyst of Mori et al. by incorporating therein nickel metal nanoparticles having a mean particle size of 0.08 to 30 nm, as suggested by Masuda et al., as it has been held that combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069. See also MPEP 2144.06(I).
Regarding claims 7 and 8, it is noted that these claims recite product-by-process limitations (“Ni metal particles are dispersed on the surface… by applying ultrasonics”). Because the combined teachings of Mori et al. and Masuda et al. teach the limitations of claim 1, from which claims 7 and 8 depend, said combined teachings are considered to additionally read on these claims in their present form. Further, it has been held that:
"Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show that the same is a process of making." In re Brown, 173 U.S.P.Q. 685 and In re Fessmann, 180 U.S.P.Q. 324.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP 2018 023938) in view of Masuda et al. (EP 3 632 543) as applied to claim 1 above, and further in view of Yoshimune et al. (JP 2011 224555).
The combined teachings of Mori et al. and Masuda et al., as stated above, are relied upon with respect to claim 1. However, these references do not teach or suggest the limitations of Applicants’ claims regarding (a) the surface area of the catalyst, as recited in claim 3, and (b) the metal surface area of the metal in the catalyst, as recited in claim 5.
Regarding claims 3 and 5, Yoshimune et al. teach a catalyst for decomposing ammonia comprising nickel and additives, wherein the catalyst exhibits a ratio of (i) the calculated specific surface area of nickel to (ii) the specific surface area of the catalyst is from 0.50 to 0.85. See paragraph [0006], [0010], and [0011] of Yoshimune et al., which additionally teaches that the additive is selected from, inter alia, alumina, silica, zirconia, and alkaline earth metal oxides; note that these additives are among those also disclosed in Mori et al. as exemplary carriers, and that nickel is present in said catalyst preferably in the metallic state.
Yoshimune et al. further teach that the ammonia decomposition catalyst has a calculated specific surface area of nickel of 20 m2/g or more, and that the specific surface area of the catalyst ranges from 10 to 500 m2/g, and may also range from 25 to 400 m2/g, or from 30 to 350 m2/g. See paragraphs [0014] and [0015] of Yoshimune et al.
With respect to claim 3, it is noted that the specific surface areas of the catalyst disclosed in Yoshimune et at al. overlap Applicants’ claimed surface area range. Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549; see also MPEP 2144.05(I).
With respect to claim 5, it is noted that the specific surface area of nickel disclosed in Yoshimune et al. shares a common endpoint with the metal surface area of the catalyst recited therein.
It is considered that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer.v.Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985); see also MPEP 2144.05(I).
Allowable Subject Matter
Claims 2 and 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Neither Mori et al., Masuda et al. nor Yoshimune et al. teach or suggest, neither alone nor in combination, the limitations of these claims regarding the percentage of metal dispersion of Ni metal particle in the metal composite catalyst, or of the total pore volume of the metal composite catalyst.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 April 3, 2026
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