DETAILED ACTION
Claims 1-14 were subjected to restriction requirement mailed on 12/31/2025.
Applicants filed a response, and elected Group I, claims 1-10 and 12-14, and withdrew claims 11, with traverse on 01/07/2026.
Applicants further elected species (a-ii), claim 6, and withdrew claim 5, over phone with traverse on 03/02/2026.
Claims 1-14 are pending, and claims 5 and 11 are withdrawn after consideration.
Claims 1-4, 6-10 and 12-14 are rejected.
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 .
Examiner’s Note
Upon further consideration, there are additional species within elected Group I. Therefore, a species election requirement is set forth below.
Election/Restrictions
Applicant's election with traverse of claims 1-10 and 12-14 in the reply filed on 01/07/2026 is acknowledged. This is not found persuasive because the reason set forth below.
Applicants primarily argue:
“Applicant traverses the restriction requirement because the present claims are novel and non-obvious over Cross, et al. (2016) ("Cross"), which was cited by the Office pursuant to the restriction requirement, i.e., the claims are all linked by an inventive technical feature. Cross discloses the use of pre-reforming catalysts in which a pre-reduced and passivated catalyst is heated under nitrogen until it reaches operating temperature "at which point hydrogen, steam and then process feed are added" (emphasis added). This disclosure therefore amounts to the conventional hydrogen pre-treatment of the heated catalyst bed with hydrogen to reduce the nickel oxide to its active from before exposing it to the process feed. The present method seeks to omit this hydrogen pre-reduction step pursuant to the surprising discovery that the hydrogen treatment before the process feed is not required to form a catalytically active surface on the catalyst. Claim 1 forms a catalytically active surface on the catalyst just by heating. Claim 1 and the dependent claims are novel and inventive over the disclosure of Cross that teaches the use of a reductant to activate the catalyst.”
Remarks, p. 4
The examiner respectively traverses as follows:
The present claim 1 recites “A method for activating a catalyst comprising the steps of”, (emphasis added), wherein “comprising” is an open transitional phrase, therefore, claim 1 does not restrict including additional steps in order to activate the catalyst.
Given that Cross meets the required steps of shared technique feature, as set forth on pages 3-4 of Office Action mailed 01/07/2026, therefore, the fact remains that the common feature between the groups does not provide a contribution over the prior art Cross.
Applicants further argue:
“Regarding claim 11, Applicant believes that the catalyst of the present invention has activity that arises from an interaction of the passivated layer of metal oxide with the nickel metal sub-layer. This is set out in the application as filed at page 1 lines 34-37. Applicant submits that this characteristic of the catalyst is novel over the disclosure of Cross, which would provide nickel metal crystallites activated by a surface reduction of the nickel oxide with hydrogen gas. Accordingly, claim 11 is novel and inventive over the disclosure of Cross.”
Remarks, p. 5
The examiner respectively traverses as follows:
Firstly, in order to establish the criticality of the process of making of the catalyst, applicant needs to provide data, i.e., a proper side-by-side comparison to show that an unobvious different between the claimed product and the prior art produced.
Secondly, the specification (page 1, lines 34-37) applicants referenced is merely conclusory statement, and does not provide data to support the position that the process of making is critical.
The requirement is still deemed proper and is therefore made FINAL.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/07/2026.
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Category A
Species (a-i) – wherein the activation step (ii) is performed under a vacuum of at least 98.7%.
Species (a-ii) – wherein the activation step (ii) is performed under an inert gas selected from nitrogen, helium and argon.
NOTE: If applicant elects Group I, applicant must also elect one of the species in Category A as set forth above.
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: claims 1-4, 6-14.
Species (a-i) and (a-ii) lack unity of invention because these species do not share common properties or are regarded as being of a similar nature.
During a telephone conversation with David B. Hoffman on 03/02/2026 a provisional election was made with traverse to prosecute the invention of species (a-ii), claims 1-4, 6-12 and 14. Affirmation of this election must be made by applicant in replying to this Office action. Claim 5 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Specification
The disclosure is objected to because of the following informalities:
It is noted that abstract filed 07/31/2023 recites “A method for activating a catalyst is described” (emphasis added).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Appropriate correction is required.
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 (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.
Claims 1-2, 4, 6-10 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cross et al., An introduction to pre-reforming catalysis, Pre-reforming in syngas plants, 2016 (Cross) (provided in IDS received on 07/31/2023), and taken in view of evidence by Li et al., Research progress and reaction mechanism of CO2 methanation over Ni-based catalysts at low temperature: A Review, Catalysts, 2022 (Li).
Regarding claims 1-2 and 6-7, Cross discloses pre-reforming catalysts are typically supplied and charged into the pre-reformer in a reduced and passivated (surface oxidized) form to enable easy in-situ activation and handling under air; after catalyst loading, start-up with a reduced and passivated catalyst will typically involve gradually heating the catalyst under a flow of nitrogen until it reaches operating temperature (Cross, page 42, middle column, 1st paragraph);
the operating temperature of pre-reforming is 400 to 550˚C (Cross, page 41, Table 1), therefore the reduced and passivated catalyst is heated under a flow of nitrogen to 400 to 550˚C;
nickel is almost always the metal of choice for pre-reforming because of its relative cost, high activity and stability (Cross, paragraph spanning pages 40-41);
scanning transmission electron microscope image showing a reduced passivated nickel crystallite (Cross, page 42, right column, 1st paragraph);
to prepare the reduced and passivated catalyst, the catalyst is partially reoxidized after reduction to give a thin film of inert nickel oxide over the active nickel surface (Cross, page 42, middle column, bottom paragraph).
According to Li, the Tammann temperature of nickel is about 590˚C (Li, page 2, bottom paragraph). Therefore, the 400 to 550˚C of Cross is within the range of (590 ˚C-400 ˚C) to (590˚C +200 ˚C) (i.e., 190 ˚C to 790 ˚C).
Furthermore, the recitation in the claims that the method is for activating a catalyst is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Cross discloses the method as presently claimed, it is clear that the method of Cross would be capable of performing the intended use, i.e. for activating a catalyst, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Furthermore, given that Cross teaches an identical or substantially identical method, i.e., charging into the pre-reformer a reduced and passivated nickel catalyst; after catalyst loading, heating the catalyst under a flow of nitrogen until it reaches 400 to 550˚C (Cross, page 42, middle column, 1st paragraph), with that of the presently claimed (claim 1; specification, Table 5), therefore, it is clear that Cross would necessarily and inherently meet the claimed limitation of to form a catalytically active surface on the catalyst.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 4, as applied to claim 1, Cross further discloses in this sample of reduced and passivated catalyst ~30% of the reduced nickel is reoxidized (i.e., a degree of reduction of 70%) (Cross, page 43, middle column).
Regarding claim 8, as applied to claim 1, Cross further discloses key pre-reforming reactions include steam reforming, methanation (Cross, page 41, middle column); therefore the pre-reformer (Cross, page 42, middle column) would be a methanation reactor or a steam reforming reactor.
Regarding claims 9 and 14, as applied to claim 2, Cross further discloses key pre-reforming reactions include steam reforming, methanation (Cross, page 41, middle column); therefore the pre-reformer (Cross, page 42, middle column) would be a methanation reactor or a steam reforming reactor.
Regarding claim 10, as applied to claim 1, Cross further discloses after catalyst loading, start-up with a reduced and passivated catalyst will typically involve gradually heating the catalyst under a flow of nitrogen until it reaches operating temperature at which point hydrogen, steam and the process feed are added in order to bring the process online (reading upon passing a reactant gas mixture over the catalytically active surface to form a product mixture) (Cross, page 42, middle column).
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.
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.
Claim 13 is rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cross.
Regarding claim 13, as applied to claim 1, Cross discloses after catalyst loading, start-up with a reduced and passivated catalyst will typically involve gradually heating the catalyst under a flow of nitrogen until it reaches operating temperature (Cross, page 42, middle column).
Given that Cross does not require the use of oxygen along with nitrogen, therefore, the nitrogen of Cross meets that claimed limitation of nitrogen containing less than 0.010% by volume of oxygen.
Alternatively, given that Cross discloses heating the catalyst under a flow of nitrogen, and the passivated catalyst needs to be reduced to be activated (Cross, page 42, middle column, 1st-2nd paragraphs), it therefore would have been obvious to a person of ordinary skill in the art to use nitrogen without any oxygen when heating the catalyst, in order to avoid oxidation of catalyst, and thereby arrive at the claimed limitation.
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 (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 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 3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Cross as applied to claim 2 above, and further in view of Carlsson et al., WO 2020/234561 A1 (Carlsson) (provided in IDS received on 07/31/2023).
Regarding claims 3 and 12, as applied to claim 2, Cross does not explicitly disclose wherein the nickel content of the reduced and passivated catalyst is in the range 1 to 95% by weight; or wherein the nickel content of the reduced and passivated catalyst is in the range 10 to 60% by weight.
With respect to the difference, Carlsson teaches egg-shell nickel catalyst for methanation and steam reforming processes (Carlsson, page 3, 2nd paragraph). Carlsson specifically teaches the catalytic metal oxide content of the calcined catalyst is preferably in the range 1-25 wt% (Carlsson, page 8, 4th paragraph).
As Carlsson expressly teaches, because the catalytic metal oxide is concentrated at the surface of the support, it is possible to achieve improved catalytic activity with reduced metal loadings, which has clear commercial benefits (Carlsson, page 8, 4th paragraph).
Carlsson is analogous art as Carlsson is drawn to nickel catalyst for methanation and steam reforming processes.
In light of the motivation of using an egg-shell nickel catalyst wherein the catalytic metal is concentrated at the surface of a support, as taught by Carlsson, it therefore would have been obvious to a person of ordinary skill in the art to produce the pre-reforming catalyst of Cross with an egg-shell structure, and a nickel oxide content of 1-25 wt% (i.e., corresponding to 0.8wt% - 19.7 wt% of Ni, given Ni: 59 g/mol; NiO: 75g/mol), in order to achieve improved catalytic activity with reduced metal loadings, which has clear commercial benefits, and thereby arrive at a range that overlaps those of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732