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 .
Election/Restrictions
Applicant's election with traverse of group I invention (claim 1-7 and 11-15) in the reply filed on 12/01/2025 is acknowledged. The traversal is on the ground(s) that Schiodt not teaching the catalyst pore volume being 240 ml/kg or more. This is not found persuasive because Schoidt disclosed catalyst pellets sharing identical density as that of instant application, 1.8 cm3/g and such identical density catalyst pellets having identical pore volume as that of instant application in light of the instant specification (see the published application US2024/0001341 para. [0026]).
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-10 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/01/2025.
Claim interpretation
Instant claim 1 recites “the water gas shift catalyst is free of chromium (Cr) and iron (Fe)”, such limitation is interpreted as a catalyst containing a content of Cr being less than 0.02 wt. %, and a content of Fe is less than 0.05 wt. % in light of the instant specification (see the published application US2024/0001341 para. [0038]).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-4 and 11-14 are rejected under 35 U.S.C. 102((a) (1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Antoniak-Jurak et al. (Zn-Al Mixed Oxides Decorated with Potassium as Catalysts for HT-WGS: Preparation and Properties, Catalysts 2020, 10, 1094).
Antoniak-Jurak et al. teaches a water gas shift (WGS) catalyst (abstract, page 1 last para.-page 2 first para.) comprising ZnO/ZnAl2O4(ZnAl2O4 is a zinc aluminum spinel) promoted with alkali metal (Na, K, Cs), specifically promoted by K, wherein specific catalyst sample ZnAl_0.5_K has Zn/Al molar ratio of 0.52, K content of 3.5 wt.%, pore volume of 0.43 cm3/g ( i.e. 430 ml/kg), and another specific catalyst sample ZnAl_1.0_K 0.95 has Zn/Al molar ratio of 0.95, K content of 2.7 wt.%, and a pore volume of 0.37cm3/g ( i.e. 370 ml/kg) (page 2 2nd para.-last para., table 1).
Regarding claim 1, Antoniak-Jurak et al. disclosed catalyst sample does not include any chromium or iron based on elemental analysis (table 1), therefore, a catalyst being free of chromium or iron as that of instantly claimed is envisioned.
Alternatively, Antoniak-Jurak et al. teaches water shift catalyst contained iron and chromium is undesired due to cancerogenic chromium and phyrophoric FexOy, as well as leading to undesired byproduct of iron carbide formation etc. (page 1 last para.-page 2 first para.). It would have been obvious for one of ordinary skill in the art to remove such chromium and iron (i.e. no chromium, and no iron) in a water-gas shift catalyst thus minimizing undesired byproduct (e.g. iron carbide) formation as well as minimizing cancerogenic chromium and phyrophoric FexOy as suggested by Antoniak-Jurak et al.
As for the claimed “as determined by mercury intrusion”, it is noted that such limitation is just a measurement method used to obtain the claimed pore volume, i.e. a product by process limitation-- “[E]ven 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, Antoniak-Jurak et al. already teaches an identical pore volume as that of instantly claimed.
Regarding claim 2-4 and 11-14, such limitations are met as discussed above.
Claims 1-4, 6-7 and 11-15 are rejected under 35 U.S.C. 102((a) (1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Schiodt (2011/0101277).
Schiodt discloses a high temperature (water) shift reaction (HTS) catalyst consisting in its active form of a mixture of zinc alumina spinel and zinc oxide in combination with an alkali metal selected from the group consisting of Na, K, Rb, Cs and mixtures thereof, said catalyst having a Zn/Al molar ratio in the range 0.5 to 1.0 and a content of alkali metal in the range 0.4 to 8.0 wt. % based on the weight of oxidized catalyst(claim 7-8), wherein specifically the alkali metal being potassium whose content is 1.76 wt.%, 3.95 wt.% or 2.77 wt.% and there is no chromium or iron in such catalyst composition (table 1, example 1-4, example 28).
Regarding claim 1, Schiodt does not expressly teach the catalyst pore volume being 240 ml/kg or more.
However, Shiodt teaches the catalyst being pelletized to give cylindrical tablets and having a density of 1.8 g/cm3(example 1), wherein such catalyst being pellets and sharing same density as that of instant application disclosed catalyst, therefore, Shiodt disclosed such catalyst would have same pore volume based on the instant application’s disclosure about its catalyst pore volume being determined/calculated by its density (see the published application US2024/0001341 para. [0026]).
As for the claimed “as determined by mercury intrusion”, please see similar product by process limitations remarks as stated above.
Regarding claim 2-4 and 11-14, such limitations are met as discussed above.
Regarding claim 6 and 15, Shiodt already teaches such density as discussed above.
Regarding claim 7, Schiodt does not expressly teach the catalyst having the claimed mechanical strength. However, Schiodt already teaches the catalyst powder being compacted into catalyst pellets, which is same or substantially the same as that of instant application disclosed method of obtaining the catalyst pellets (see the published application US2024/0001341 para. [0082]), therefore, same or substantially the same mechanical strength as of instantly claimed is envisioned or expected.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schiodt (2011/0101277) as applied above, and in view of Li (CN105214671) (for applicant’s convenience, machine translation has been used for citations).
Regarding claim 5, Schiodt does not teach the catalyst containing 0.1-10 wt.% of copper.
Li teaches 10 to 40% by weight of copper can be deposited onto ZnAl2O4 forming a water gas shift catalyst (claim 1, page 2 4th last para., example 1-3).
It would have been obvious for one of ordinary skill in the art to adopt such well-known technique of depositing 10-40% by weight of copper onto ZnAl2O4 as shown by Li to modify a well-known water shift gas catalyst comprising zinc alumina spinel for improvement because by doing so would have predictable results (see MPEP §2143 KSR).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Schiodt (2011/0101277) as applied above, and in view of Garcia-Dieguez (WO2020212681) (for applicant’s convenience, equivalent US2022/0152597 has been used for citations).
In arguendo about Schiodt not teaching the claimed catalyst mechanical strength, Garcia-Dieguez teaches pelleted water-gas shift catalyst need having certain density to maintain desired crush strength (para. [0037]). It is noted that Schiodt disclosed catalyst pellets having density of 1.8 cm3/g.
It would have been obvious for one of ordinary skill in the art to adopt a same mechanical strength as that of instantly claimed via routine optimization (see MPEP § 2144. 05 II) for help obtaining a catalyst with desired crush strength for carbon oxide conversion as suggested by Garcia-Dieguez (para. [0037]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-4, 6-7 and 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of U.S. Patent No. US7998897 in view of Schiodt (2011/0101277). US’897 teaches a substantially the same catalyst composition except the catalyst being chromium or iron free, having a pore volume of 240 ml/kg or higher, but such limitation have been taught by Schiodt. It would have been obvious for one of ordinary skill in the art to adopt a chromium or iron free catalyst, a pore volume of 240 ml/kg or higher as shown by Schiodt. for help obtaining a water shift gas catalyst for improvement would have predictable results. As for the claimed mechanical strength in claim 7. However, US’897 already teaches the catalyst powder being compacted into catalyst pellets, which is same or substantially the same as that of instant application (see the published application US2024/0001341 para. [0082]), therefore, same or substantially the same mechanical strength as of instantly claimed is envisioned or expected.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of U.S. Patent No. US7998897 in view of Schiodt (2011/0101277) as applied above, and further in view of Li (CN105214671). US’897 in view of Schiodt does not teach the catalyst containing 0.1-10 wt.% of copper. Li has been described as above. It would have been obvious for one of ordinary skill in the art to adopt such well-known technique of depositing 10-40% by weight of copper onto ZnAl2O4 as shown by Li to modify a well-known water shift gas catalyst comprising zinc alumina spinel of US’897 for improvement because by doing so would have predictable results (see MPEP §2143 KSR).
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732