DETAILED ACTION
Claim(s) 1-4, 6-10 and 12-14 were rejected in Office Action mailed on 03/09/2026.
Applicant filed a response, amended claim(s) 1, on 05/28/2026.
Claim(s) 1-4 and 6-14 are pending, and claim 11 is withdrawn.
Claim(s) 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
It is noted that in Office Action mailed 03/09/2026, page 5, item 6, there is a typo, as “Claim 13” should read “Claim 11” instead.
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).
Response to Arguments
Applicant primarily argues:
“However, the cited reference does not anticipate a claimed invention. 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 is tantamount to the conventional hydrogen pre-treatment of the heated catalyst bed to reduce the nickel oxide to its active from before exposing it to the process feed. In other words, Cross discloses the sequence of: (1) heating, (2) adding H2 to reduce the catalyst to active form, and then (3) adding process gas. The present method omits the necessity for this hydrogen reduction step by the surprising discovery that Cross's step of hydrogen treatment prior to the process feed is not required in order to form a catalytically active surface on the catalyst.
Applicant acknowledges the Office's argument that the open-ended "comprising" language in claim 1 allegedly means that the claim does not exclude the hydrogen treatment step of Cross. Applicant respectfully traverses this argument because step (ii) of claim 1 specifically requires that it is the "reduced and passivated catalyst" of step (i) that is heated, whereas in the process of Cross, it is a fully reduced catalyst that is exposed to the process gas. A passivated catalyst is one that has been re-oxidised on its surface to prevent unwanted self-heating.
Consequently, claim 1 is distinguishable from Cross because the claim involves forming a catalytically active surface on the catalyst just by heating. Unlike previous activation methods, the heating step (ii) is performed under an inert gas, i.e., in the absence of a reducing agent. Claim 1 is therefore distinguishable from the process of Cross, which requires the use of a reductant to activate the catalyst. Withdrawal of the rejection under § 102 is respectfully requested. See, e.g., Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997) (for a prior art reference to anticipate a claimed invention, every element of a claim must identically appear in a single prior art reference); Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) ("A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference").”
Remarks, p. 6-7
The Examiner respectfully traverses as follows:
Firstly, the fact remains that Cross meets the requires steps of claim 1, as set forth on pages 7-9 of Office Action mailed 03/09/2026.
Secondly, while applicants point out that
“The present method omits the necessity for this hydrogen reduction step by the surprising discovery that Cross's step of hydrogen treatment prior to the process feed is not required in order to form a catalytically active surface on the catalyst”,
this is not required in the present claims.
Applicant further argues:
“Claim 13 has been rejected for alleged anticipation by, or alternatively, for alleged obviousness over Cross. The separate rejection of claim 13 is on the ground that the use of nitrogen in Cross does not require any oxygen. However, this does not remedy the above- described shortcomings of Cross with respect to Applicant's claims. Accordingly, for at least the reasons described supra in connection with the rejection under § 102, Applicant's claim 1, and therefore claim 13 that depends from it, is not anticipated or obvious over the cited prior art.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
The present claim 1 is met by Cross, as set forth above, absent evidence to the contrary.
Applicant further argues:
“Claims 3 and 12 have been rejected for alleged obviousness over Cross in view of WO 2020/234561 ("Carlsson"). However, the cited references do not present a prima facie case of obviousness. Carlsson has been cited for the proposition that it would have allegedly been obvious to use a claimed concentration of nickel, and does not remedy the above-described shortcomings of Cross. Withdrawal of the rejections under § 103 is therefore appropriate. In re Royka, 490 F.2d 981 (C.C.P.A. 1974) (all limitations set forth in a patent claim must be taught or suggested in the prior art to establish a prima facie case of obviousness).”
Remarks, p. 7-8
The Examiner respectfully traverses as follows:
Firstly, the present claim 1 is met by Cross, as set forth above, absent evidence to the contrary.
Secondly, it is noted that while Carlsson does not disclose all the features of the present claimed invention, Carlsson is used as teaching reference, namely the catalytic metal oxide content of the calcined catalyst is preferably in the range 1-25 wt% (Carlsson, page 8, 4th paragraph), in order to achieve improved catalytic activity with reduced metal loadings, which has clear commercial benefits, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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