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 8/25/26.
Applicant's election of Group I, claims 1-6, and the species election of copper hydroxide, in the reply filed on 2/24/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP 818.03(a)). Claims 7-13 are withdrawn from consideration being drawn to the non-elected invention.
Applicant asserts that only claims 1, 3 and 6 read on the elected species. However, the examiner believes claim 2 should also be included in for examination.
Claims 4 and 5 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected species.
As a result, claims 1-3 and 6 are being examined in this Office Action. Claims 4-5 and 7-13 are withdrawn.
Priority
The applicant claims benefit as follows:
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Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention at the time the application was filed.
Reference to applicant’s specification refers to applicant’s PGPub throughout this office action: US 2024/0299913.
Claim 2 recites “a compound of metal M with multiple valences.” That recitation covers a genus that includes essentially every transition metal, every lanthanide, and many main group metals.
The specification, however, describes only cerium and manganese as metal M, and states that cerium is preferred. It further states that the compound of metal M is preferably an oxide of cerium or manganese, and particularly cerium(IV) oxide. Working examples are given for only cerium (Example 2, Cu2O@CeO2/CF) and manganese (Example 3, Cu2O@MnO2/CF). (specification, paragraphs [0054]-[0055], [0063], [0128]; Table 2)
The specification also identifies the operative property of metal M. It states that metal M in oxide form is preferably non-water soluble and stable in an alkali aqueous solution. It further states that the compound of metal M allows the catalyst to be stable even in a strong alkaline aqueous solution. That property is not shared by the genus of metals having multiple valences. Many multivalent metal oxides are amphoteric or soluble in the 2M aqueous sodium hydroxide in which the disclosed degradation reaction is run. The specification therefore does not describe a representative number of species of the claimed genus. Nor does it disclose a structure-function correlation from which one of ordinary skill in the art would recognize that applicant had possession of the full genus. (specification, paragraphs [0054], [0058], [0118]; MPEP §2163) Limiting claim 2 to cerium and/or manganese would obviate this rejection.
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.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 is indefinite because claim 1 recites that “the at least one metal compound is a copper compound,” while claim 2 recites that “the at least one metal compound contains a copper compound and a compound of metal M with multiple valences.” It is unclear whether claim 1 requires that every metal compound immobilized on the substrate be a copper compound, in which case claim 2 recites a metal compound that is not a copper compound and does not further limit claim 1, or whether claim 1 requires only that at least one of the metal compounds be a copper compound. The metes and bounds of claim 2 are therefore unclear.
Appropriate correction is required. (specification, paragraph [0051])
Claim Rejections – 35 USC 102
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 the appropriate paragraphs of the AIA 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.
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, 3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shi et al. (“Mesoporous Cu(OH)2 nanowire arrays for urea electrooxidation in alkaline medium,” Materials Chemistry and Physics, 2020, Vol. 242, Article 122517, available online December 4, 2019), as evidenced by Kuznetsov et al. (“Processes of catalytic oxidation for the production of chemicals from softwood biomass,” Catalysis Today, Vol. 375, pp. 132-144, available online May 20, 2020, in applicant’s IDS filed 7/6/23).
Shi et al. teaches Cu(OH)2 nanowire arrays directly supported on copper foam and grown in situ by an etching technique. Shi et al. teaches that a 2.0 × 3.0 cm2 copper foam was cleaned and then placed into 30 mL of deionized water containing 3.0 g of NaOH and 0.86 g of (NH4)2S2O8 for 20 minutes at room temperature. Shi et al. teaches that the reaction proceeds according to Cu + 4NaOH + (NH4)2S2O8 → Cu(OH)2 + 2Na2SO4 + 2NH3 + 2H2O. (Shi et al., page 1, abstract; page 2, section 2 and Scheme 1; page 4, equation (1))
With regard to claim 1, Shi et al. teaches a substrate, namely the copper foam. Shi et al. teaches at least one metal compound immobilized on the substrate, namely the Cu(OH)2 nanowire arrays. Shi et al. teaches that these nanowires are grown directly on the copper foam without any binder and are closely coated on the copper foam. Shi et al. teaches that the at least one metal compound is a copper compound, namely copper(II) hydroxide. (Shi et al., page 1, abstract; page 2, section 2; page 4, section 3 and Fig. 1b)
With regard to claim 3, Shi et al. teaches that the copper compound is copper hydroxide. Shi et al. teaches that the diffraction peaks at 16.7°, 23.8°, 34.1°, 35.9°, 38.1°, 39.7° and 53.3° are assigned to Cu(OH)2, and that the peaks at 43.4°, 50.6° and 74.3° are ascribed to Cu, indicating that the Cu(OH)2 was grown on the copper foam. Shi et al. further teaches Raman peaks at 286 and 486 cm-1 and an XPS Cu 2p3/2 peak at 934.7 eV that are attributed to Cu(OH)2. (Shi et al., page 4, section 3 and Figs. 1a, 2a and 3a)
With regard to claim 6, Shi et al. teaches that the substrate is a three-dimensional copper foam. A copper foam is a porous metallic substrate. Applicant’s own specification identifies a porous metal substrate, i.e., metal foam, and particularly copper foam, as the preferred embodiment of this limitation. (Shi et al., page 1, abstract; page 2, section 2; applicant’s specification, paragraph [0045])
The preamble recitation “a lignin degradation catalyst” is a statement of intended use. It does not impart any structural limitation to the claimed article. The body of claim 1 recites a structurally complete article, namely a substrate bearing an immobilized copper compound. The preamble merely states a purpose for which that article may be used. (MPEP §2111.02(II))
In the alternative, to the extent the preamble is treated as limiting, the article of Shi et al. is capable of the recited use. Shi et al. characterizes the material as a Cu(OH)2 catalyst having considerable exposed active sites for the catalytic reaction, and shows that the material is catalytically active and stable in strongly alkaline aqueous medium. The material of Shi et al. is also made by the same route applicant uses to make the claimed article. Applicant’s specification teaches that bringing a porous copper substrate into contact with a solution containing an oxidant yields a substrate having copper hydroxide immobilized on the surface of copper foam. (Shi et al., page 1, abstract; page 5, section 4; applicant’s specification, paragraph [0077])
Further, as evidenced by Kuznetsov et al., softwood is fractionated to vanillin and cellulose by oxidation with oxygen in a water-alkaline medium at 160-180 °C in the presence of the catalyst Cu(OH)2. Where the prior art teaches a product that appears to be substantially identical to the claimed product, the burden shifts to applicant to establish a patentable distinction. (Kuznetsov et al., page 132, abstract)
Claims 1, 2 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuranov et al. (“Metal grids with high-porous surface as structured catalysts: preparation, characterization and activity in propane total oxidation,” Applied Catalysis B: Environmental, Vol. 36, No. 3, pp. 183-191, March 1, 2002, in applicant’s IDS filed 8/25/26), as evidenced by Kuznetsov et al. (“Processes of catalytic oxidation for the production of chemicals from softwood biomass,” Catalysis Today, Vol. 375, pp. 132-144, available online May 20, 2020, in applicant’s IDS filed 7/6/23).
Yuranov et al. teaches structured oxidation catalysts built on commercially available metal grids made of nickel or copper. Yuranov et al. teaches that the grids are knitted from wires 100 µm in diameter, and that such wire grids have an open regular structure which provides a low pressure drop during the passage of gases through the catalytic bed. (Yuranov et al., page 183, section 1; page 184, section 2.1)
Yuranov et al. teaches that a thin Raney-type layer is formed on the wire surface by alloying the wire with aluminum and then leaching the aluminum out, which yields a skeletal metal layer and raises the specific surface area of the grids from about 10-3 m2/g to 20 m2/g. Yuranov et al. teaches that oxidation of that layer gives a highly porous oxide strongly attached to the metal surface, and that the wires are completely covered by the oxide layer. (Yuranov et al., page 184, sections 1 and 2.1 and Fig. 1; page 186, section 3.1)
Yuranov et al. teaches that a layer of copper oxide is formed on a nickel grid by treating the skeletal nickel grid with an aqueous ammonia solution of Cu(II) acetate and then calcining the grid in air at 773 K. Yuranov et al. teaches that the resulting support consists of a metallic core of Ni or Cu with an oxide of NiO or CuO as an outer layer. Yuranov et al. denotes these metallic supports with the porous oxide outer layer as NiO/Ni, CuO/Cu and CuO/Ni. (Yuranov et al., page 184, section 2.1; page 185, section 2.1)
Yuranov et al. further teaches that oxides of Co, Cu, Mn and Cr are deposited on the metal grid supports by wet impregnation from aqueous solutions of cobalt, copper and manganese acetates, and that the impregnated grids are then dried at 373 K and calcined in air at 923 K. Yuranov et al. explains its catalyst notation, teaching for example that 1(Co3O4 + CuO)/CuO/Ni is 1 wt.% of mixed oxide Co3O4:CuO = 1:1 deposited on nickel wire with a porous outer layer consisting of copper oxide. (Yuranov et al., page 184, section 2.1; page 185, section 2.1)
Yuranov et al. teaches the specific catalyst 1Mn3O4/CuO/Ni in Table 1. That catalyst is a nickel wire grid carrying a porous copper oxide outer layer, on which 1 wt.% of Mn3O4 is deposited. Table 1 also lists 1.5(2Mn3O4 + CuO)/CuO/Ni, in which the deposited layer is itself a mixed oxide of Mn3O4 and CuO, and 1(Co3O4 + CuO)/CuO/Ni. (Yuranov et al., page 185, Table 1 and section 2.1)
With regard to claim 1, Yuranov et al. teaches a substrate, namely the metallic nickel wire grid. Yuranov et al. teaches at least one metal compound immobilized on the substrate, namely the porous copper oxide layer, which is formed on and strongly attached to the metal surface of the grid and completely covers the wires. Yuranov et al. teaches that the at least one metal compound so immobilized is a copper compound, namely copper oxide. (Yuranov et al., page 184, sections 1 and 2.1; page 185, section 2.1 and Table 1; page 186, section 3.1)
With regard to claim 2, Yuranov et al. teaches that the at least one metal compound immobilized on the substrate contains a copper compound, namely the copper oxide layer, and a compound of metal M with multiple valences, namely the Mn3O4 deposited on that layer. Manganese is a metal having multiple valences, and Mn3O4 is a mixed valence oxide of manganese(II) and manganese(III). Applicant’s specification identifies manganese as metal M and manganese oxide as the compound of metal M. Applicant’s specification also states that layers of two or more metal compounds may be sequentially stacked on the substrate to form a laminate, and describes an embodiment in which the compound of metal M coats the copper compound and forms the topmost layer of the catalyst. (Yuranov et al., page 185, Table 1; applicant’s specification, paragraphs [0054]-[0055], [0060], [0063])
With regard to claim 6, Yuranov et al. teaches that the substrate is a metal grid knitted from nickel wires. That grid is metallic, and the openings between the knitted wires make it porous, as shown by the teaching of Yuranov et al. that gases pass through the wire grid bed at low pressure drop. The grid is therefore a porous metallic substrate. Yuranov et al. further teaches that the wire surface itself is made porous by the skeletal Raney-type layer, which raises the specific surface area of the grid by four orders of magnitude. (Yuranov et al., page 183, section 1; page 184, sections 1 and 2.1)
The preamble recitation “a lignin degradation catalyst” is a statement of intended use. It does not impart any structural limitation to the claimed article. The body of claim 1 recites a structurally complete article, namely a substrate bearing an immobilized copper compound. The preamble merely states a purpose for which that article may be used. (MPEP §2111.02(II))
In the alternative, to the extent the preamble is treated as limiting, the article of Yuranov et al. is capable of the recited use. Yuranov et al. characterizes its materials as structured oxidation catalysts and shows that they are catalytically active in the total oxidation of propane. (Yuranov et al., page 183, abstract; page 187, section 3.2)
Further, as evidenced by Kuznetsov et al., the catalysts that increase the yield of aromatic aldehydes in the oxidation of lignins by oxygen are the oxides and hydroxides of Cu(II), Co(III), Ag(I) and Mn(IV), and the most active of these are based on Cu(II). The copper oxide and manganese oxide of Yuranov et al. are within that group. Where the prior art teaches a product that appears to be substantially identical to the claimed product, the burden shifts to applicant to establish a patentable distinction. (Kuznetsov et al., page 139, section 3.2.1)
Conclusion
No claim is 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.
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/JENNIFER C SAWYER/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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