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 .
Detailed Action
This office action is in response to applicant’s communication filed on 2/19/26.
Claims 15-34 are pending in this application.
Applicant's election of Group 1, claims 15-22, in the reply filed on 2/19/26 is acknowledged. The traversal is on the ground(s) that the elected invention is not obvious over Hugo. However, the examiner has included another 103 rejection utilizing Ren et al. in view of Wu et al. (see the 103 rejection below). Thus the claims of the various groups do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, because they lack the same or corresponding special technical feature due to the art found on applicant' s claims, as discussed within this Office Action.
Thus 23-34 are withdrawn from consideration being drawn to the non-elected invention.
Applicant's election of the following compound and its components is acknowledged herewith: Catalyst with NiO and CO supported on alumina
As a result, claims 15-22 are being examined in this Office Action and claims 23-34 are withdrawn.
Priority
The applicant claims benefit as follows:
PNG
media_image1.png
170
474
media_image1.png
Greyscale
Claim Rejections – 35 USC 112.2
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 15-22 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 is indefinite because of the claim language “relative content of α -NiO in the catalyst is less than or equal to 1.5 a.u., when said catalyst is in its fully oxidized state; the relative content of α -NiO in the catalyst is determined by using 50 mg of the catalyst in a fully oxidized state; using an H2-TPR diagram of the catalyst to perform the area integration of the H2-TPR curve, wherein the ordinate is %TCD, and the abscissa is temperature; and calculating the relative content of different types of NiO based on the hydrogen consumption of the sample, wherein the unit is a.u. (arbitrary unit)” and in particular applicant’s “relative content of α-NiO” language.
Also, claims 16, 20 and 22 are also indefinite because of applicant’s “relative content of α-NiO” language.
Applicant’s PGPub US 20230390743, paragraph 111, recites the following:
“For the supported nickel-based catalyst, there are usually three forms of NiO: free amorphous α-NiO, β1-NiO weakly interacting with the support, and β2-NiO strongly interacting with the support. Too much free amorphous α-NiO in the catalyst will lead to more excessive hydrogenation side reactions to generate hydrogenolysis by-products such as 3-methylbenzylamine and m-xylene.”
Applicant’s specification doesn’t define the metes and bounds of “relative content of α-NiO”, which applicant describes as “free and amorphous”, such that one would know what is included and what is excluded in a “relative content” and a free and amorphous α-NiO versus “β1-NiO weakly interacting with the support, and β2-NiO strongly interacting with the support”. What is the criteria that would clearly distinguish the metes and bounds of a relative content of free and amorphous NiO versus weakly interacting NiO? The “α-NiO” criteria for measurement of “free and amorphous” versus weakly interacting needs to be defined by objective criteria.
Furthermore, although applicant’s specification associates “α-NiO” with a 300-400 degree C feature, there is not a clear definition of how the “α-NiO” peak area is determined, especially when peak areas might shift or overlap between “α-NiO” and “β1-NiO”. Thus there is an absence of a clear definition and criteria for calculating “α-NiO”.
Also, applicant’s PGPUB US 20230390743, paragraphs 17 and 118, recites the following:
“The content in “relative content” of the present invention is not an absolute concept of content, but refers to a relative content of a substance determined by comparison of the integral areas of the peaks in the same graph in the same coordinate system, where the size of the integral area of the peak represents the content of the substance in the catalyst. Specifically, for the relative content of α-NiO of the present invention (using a.u. as the unit), the same graph in the same coordinate system refers to the H.sub.2-TPR diagram of the catalyst, where the abscissa is the temperature in degrees Celsius (° C.), and the ordinate is the signal value of the TCD (thermal conductivity detector) (it is a quantitative value, for example expressed in the form of a percentage or a decimal). For the relative content of α-NiO of the present invention, when measuring H.sub.2-TPR, a catalyst in a fully oxidized state is used, and the amount of the catalyst is 50 mg.”
“The test method for the relative content of different types of NiO: the area integration of the H.sub.2-TPR curve (the ordinate is % TCD, and the abscissa is temperature) is performed, and the relative content of different types of NiO is calculated based on the hydrogen consumption of the sample, and the unit is a.u. (arbitrary unit). The size of the peak area actually represents the relative content of different types of NiO, and is used for the mutual comparison of NiO between different samples.”
Thus, applicant’s claim language that recites that the relative content of α -NiO in the catalyst is less than 1.5 a.u. or 0.2 a.u., or greater than 0.1 a.u. or 0.0001 a.u., when determined by H2-TPR area integration is also indefinite. As included above, applicant’s specification defines “a.u.” only as an arbitrary, dimensionless relative value and does not provide an objective formula or calibration for converting the TCD signal to the claimed value. Applicant’s specification further states that the TCD ordinate may be expressed as percentage or decimal, which would alter the peak area absent a defined conversion. The specification also fails to define the components needed to obtain the claimed value. Because different reasonable measurement choices could produce different values relative to the claimed values, the metes and bounds of the a.u. values are indefinite and unclear. (see applicant’s PGPUB US 20230390743, paragraphs 17 and 118, shown above)
Thus applicant’s claim language for the a.u. content of “α-NiO” is unclear and indefinite and well as the metes and bounds of “relative content of α-NiO in the catalyst”. Applicant’s specification does not sufficiently define the parameters or measurement conditions to determine whether a catalyst satisfies the claimed amounts. Though applicant’s specification stated the determination is from the integral areas of peaks in a H2-TPR diagram, it does not sufficiently define the conditions, such as gas composition, flow rate, heating rate, calibration, etc. so that one could reproduce the arbitrary unit values. Thus the metes and bounds of “relative content of α-NiO in the catalyst” is unclear and indefinitie.
Furthermore, for the purposes of examination, the examiner interprets the a.u. content amounts of “α-NiO” as generally reading on any free NiO in the catalyst.
Claims 17 and 21 are also rejected as being indefinite because of the recitation “based on the parts by weight” for each of the catalyst components. The claim fails to identify the reference basis for the recited “parts”. Typically, one would recite “parts per…” something, like “parts per 100 total catalyst”. It is therefore unclear if the recited parts are based on the total catalyst, the support, the active components, relative component ratios, etc. Furthermore, the total for the contents of the catalyst total over 100, which is additionally confusing. Because the metes and bounds of the claimed catalyst composition vary depending on the selected basis, applicant’s claim language is considered indefinite. For the purposes of examination, the examiner interprets the contents of the catalyst, to generally read on any active component, auxiliary and support present in the catalyst.
Claims 19 and 21 are indefinite because of applicant’s recitation of the proportions of alumina, which is based on the weight of the alumina support. However, if the proportions of each of these five listed alumina polymorphs are all “based on the weight of the alumina”, then they appear to be fractions of the same whole. But the ranges allow totals of over 100%, even up to 495%. Thus the claims allow the alumina to total over 100%, which makes it unclear how the claimed proportions are determined and whether the ranges are mutually exclusive or overlap. For the purposes of examination, the examiner interprets the claimed proportions of each of the alumina phases, to read collectively on just alumina generally.
The dependent claims are rejected as being dependent on a rejected claim. Appropriate correction is 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 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 of this title, 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 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ren et al. (CN 102513116, pub date 6/27/2012), the English translation is used herein, unless otherwise stated, in view of Wu et al. (RSC Adv., 2020, 10, 4166) (pub date 1/27/2020).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Ren et al. teaches the following methanation catalyst which contains nickel oxide (NiO) as the main active component, cobalt oxide (CoO) as the second active auxiliary component, lanthanum oxide (La2O3), as another auxiliary component, and alumina (Al2O3) as the support, prepared from the following metals: sodium aluminate (7.24 g), nickel nitrate (15.57 g), cobalt nitrate (3.11 g), lanthanum nitrate (1.86 g). The methanation catalyst precursors were then treated with high temperature that increased from 25 degree C to 500 degree C (calcination step) to decompose the catalyst precursors to the oxidized metal form as shown in the reaction scheme below. Furthermore, the catalyst can withstand temperatures of 500 to 700 degree C. (see claims, page 3, step (8) third paragraph to page 4, second paragraph; page 11, step (3); page 12, last paragraph)
Also see Ren et al.’s reaction scheme showing the preparation of the methanation catalyst. (From the Chinese Patent on page 3 and 7):
PNG
media_image2.png
68
546
media_image2.png
Greyscale
With regard to applicant’s label of cobalt oxide as an auxiliary component, since Ren et al. teaches cobalt oxide as a second active component, it would be reasonable to interpret Ren et al.’s cobalt oxide as also reading on an auxiliary component, since nickel oxide is the main active component and lanthanum oxide is considered an additional auxiliary agent.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Ren et al. is deficient in the sense that it does not teach the amount of α-NiO in the methanation catalyst.
Wu et al. teaches a NiO alumina support methanation catalyst. The calcination temperature (or heat treatment) of the catalyst deeply affects and influences the types of NiO in the catalyst as shown in the examples below. Furthermore, when the calcination temperature increased from 350 to 500 degree C, the relative content of α-NiO decreased from 39.0% to 0. (abstract; page 4169, first column, last paragraph to second column, last paragraph):
α-NiO (300 – 500 degree C)
β-NiO (500 – 800 degree C)
ϒ-NiO (800 – 1000 degree C)
Wu et al. teaches that the calcination temperature (or heat treatment) can determine the physiochemical properties of a catalyst and the catalytic performance for methanation. The catalyst calcined at 400 degree C showed the highest catalytic activity, because when the temperature increased from 350 to 700 degree C, the relative content of free state α-NiO decreased. (abstract; page 4173, second column, first paragraph)
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Therefore, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to optimize the amount of free state α-NiO in Ren et al.’s NiO alumina supported methanation catalyst, in order to maximize the catalytic activity, especially since Wu et al. teaches that increasing the calcination temperature decreases the amount of free state α-NiO.
Thus since both Ren et al. and Wu et al. both teach NiO alumina support methanation catalysts and because Wu et al. recognizes that the amount of free state α-NiO in the catalyst can change the catalytic activity, it would be reasonable to expect that changing the calcination temperature (heat treatment) would change the amount of free state α-NiO in the catalyst, and thus change the catalytic activity.
Furthermore, since Ren et al.’s catalyst was heat treated from 25 degree C to 500 degree C (the calcination step), it would be reasonable to expect that Ren et al.’s catalyst would have low or minimal amounts of free state α-NiO.
Additionally, with regard to applicant's limitations regarding the relative content of α-NiO, catalyst components and alumina support, it is the position of the examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the result desired. Because the art teaches the relative content of α-NiO, catalyst components and alumina support, the examiner asserts that these are art recognized result-effective variables. Thus it would be obvious in the optimization process to optimize the relative content of α-NiO, catalyst components and alumina support. The applicant does not show any unusual and/or unexpected results for the limitations stated. Note that the prior art provides the same effect desired by the applicant, the formation of a NiO alumina supported calcined catalyst for the chemical industry.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
Prosecution Insights