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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/06/2023, 08/02/2023, 06/06/2024 have been considered by the examiner.
Election/Restrictions
Claim 14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/13/2025.
Applicant’s election without traverse of claims 1-13, 15-20 in the reply filed on 10/13/2025 is acknowledged.
Claim Rejections - 35 USC § 103
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 1, 3-7, 11-13, 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tomita et al (EP 3673992 B1) in view of Chang et al ("Effect of Ultra-Thin SnO2 Coating on Pt Catalyst for Energy Applications", cited in IDS 06/06/2024) .
Regarding claim 1, Tomita discloses a methane oxidation catalyst… in which platinum oxide is supported on a tin oxide carrier ([0019]), an iridium oxide may be further supported on the tin oxide in addition to the platinum oxide ([0035] meeting limitation “a methane combustion catalyst comprising platinum and iridium supported on a tin oxide carrier for combusting methane in a combustion exhaust gas”). Regarding the limitation “combustion exhaust gas containing sulfur oxide”, Tomita discloses various oxidation catalysts have been developed for oxidizing such unburnt methane and the like ([0005]). For example, Patent Document 1 proposes a catalyst…. and by use of the catalyst methane can be oxidized… and also since poisoning degradation due to sulfur oxides is suppressed, methane in the combustion exhaust gas can be oxidized and removed ([0006]). Thus, Tomita discloses combustion exhaust gas contains sulfur oxide.
Tomita further discloses in any of the production methods, the catalyst layer may be a single layer or a multilayer of 2 or more layers ([0057] meeting limitation “a first region… and a second region”).
Tomita does not disclose “in line analysis by electron probe microanalysis (EPMA) performed on an arbitrary cross-section of the methane combustion catalyst from a deepest catalyst portion toward a catalyst surface, a first region where all of platinum, iridium and tin are detected and a second region where tin is essentially detected but platinum is not detected are both observable”.
Chang discloses an ultra-thin SnO2 coating on Pt catalyst (title). Metal-based catalysts, especially noble metals such as Pt… play a key role in speeding up chemical reaction rates in reformers, fuel cells and electrolyzes (Pg. 691 top of left column). Even though noble metals have strong advantages, they and their environment may be affected by the undesirable effects of agglomeration during chemical reaction processes (Pg. 691 top of left column). To improve thermal stability of metal catalysts, we applied a coating of ultra-thin tin oxide to porous Pt (Pg. 692 left column par. 2). Fig. 3 (a) shows the images of uniform ultra-thin tin oxide-coated Pt which were captured by a transmission electron microscope (Pg. 692 right column par. 1).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for a first region where all of platinum, iridium and tin are detected and a second region where tin is essentially detected but platinum is not detected are both observable in the composition of Tomita in order to improve thermal stability and reduce agglomeration as taught by Chang.
Although there is no disclosure that the test method is electron probe microanalysis (EPMA), given that Chang discloses a SnO2 layer and absent evidence criticality how the “a first region where all of platinum, iridium and tin are detected and a second region where tin is essentially detected but platinum is not detected are both observable” is measured, it is an examiner's position that a SnO2 layer disclosed by Chang meets the claim limitation.
Regarding claim 3, 4 and 17, Tomita in view of Chang discloses all the limitations in the claims as set forth above and further discloses the content ratio of platinum element to tin element contained in the methane oxidation catalyst is preferably 0.3 to 40 mol % ([0032]), and when iridium oxide is further supported on tin oxide, the content ratio of iridium element to tin element contained in the methane oxidation catalyst is preferably 0.03 to 20 mol % ([0034]).
The following shows how the examiner converted the disclosed mol percentages to mass percentages with respect to the entire catalyst.
Molecular weight
Disclosed
Converted to mass
Calculation of percentage
Mass % with respect to entire catalyst
Platinum
195.08 g/mol
0.3 mol-40 mol
0.0015 g -0.205 g
0.0015 g/1.1515 g to 0.205 g/0.844 g
0.1777% to 24.29%
Iridium
192.22 g/mol
0.03 mol-20 mol
0.000156 g-0.104 g
0.000156 g/1.1515 g to 0.104 g/0.844 g
0.0135% to 12.33%
Tin
118.71 g/mol
100 mol
0.842 g
Total
0.844 g-1.1515g
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). In the instant case, the range taught by Tomita (0.1777%-24.29%) overlaps with the claim 3 range (0.5% or more and 15.0% or less). In the instant case, the range taught by Tomita (0.0135% to 12.33%) overlaps with the claim 4 range (0.1% or more and 5.0% or less). In the instant case, the range taught by Tomita (0.0135% to 12.33%) overlaps with the claim 17 range (0.1% or more and 5.0% or less). Therefore, the ranges in Tomita renders obvious the claimed ranges.
Regarding claim 5, Tomita discloses a methane oxidation catalyst… in which platinum oxide is supported on a tin oxide carrier ([0019]), an iridium oxide may be further supported on the tin oxide in addition to the platinum oxide ([0035] meeting limitation “a methane combustion catalyst comprising platinum and iridium supported on a tin oxide carrier for combusting methane in a combustion exhaust gas”). Regarding the limitation “combustion exhaust gas containing sulfur oxide”, Tomita discloses various oxidation catalysts have been developed for oxidizing such unburnt methane and the like ([0005]). For example, Patent Document 1 proposes a catalyst…. and by use of the catalyst methane can be oxidized… and also since poisoning degradation due to sulfur oxides is suppressed, methane in the combustion exhaust gas can be oxidized and removed ([0006]). Thus, Tomita discloses combustion exhaust gas contains sulfur oxide.
Tomita further discloses in any of the production methods, the catalyst layer may be a single layer or a multilayer of 2 or more layers ([0057] meeting limitation “a base catalyst layer comprising platinum and iridium supported on the tin oxide carrier; and an overcoat layer”).
Tomita does not disclose “an overcoat layer comprising tin oxide formed on the base catalyst layer”.
Chang discloses an ultra-thin SnO2 coating on Pt catalyst (title). Metal-based catalysts, especially noble metals such as Pt… play a key role in speeding up chemical reaction rates in reformers, fuel cells and electrolyzes (Pg. 691 top of left column). Even though noble metals have strong advantages, they and their environment may be affected by the undesirable effects of agglomeration during chemical reaction processes (Pg. 691 top of left column). To improve thermal stability of metal catalysts, we applied a coating of ultra-thin tin oxide to porous Pt (Pg. 692 left column par. 2). Fig. 3 (a) shows the images of uniform ultra-thin tin oxide-coated Pt which were captured by a transmission electron microscope (Pg. 692 right column par. 1).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for an overcoat layer to comprise tin oxide formed on the base catalyst layer in the composition of Tomita in order to improve thermal stability and reduce agglomeration as taught by Chang.
Regarding claim 6, 7 and 18, Tomita in view of Chang discloses all the limitations in the claims as set forth above and further discloses the content ratio of platinum element to tin element contained in the methane oxidation catalyst is preferably 0.3 to 40 mol % ([0032]), and when iridium oxide is further supported on tin oxide, the content ratio of iridium element to tin element contained in the methane oxidation catalyst is preferably 0.03 to 20 mol % ([0034]).
The following shows how the examiner converted the disclosed mol percentages to mass percentages with respect to the entire catalyst.
Molecular weight
Disclosed
Converted to mass
Calculation of percentage
Mass % with respect to entire catalyst
Platinum
195.08 g/mol
0.3 mol-40 mol
0.0015 g -0.205 g
0.0015 g/1.1515 g to 0.205 g/0.844 g
0.1777% to 24.29%
Iridium
192.22 g/mol
0.03 mol-20 mol
0.000156 g-0.104 g
0.000156 g/1.1515 g to 0.104 g/0.844 g
0.0135% to 12.33%
Tin
118.71 g/mol
100 mol
0.842 g
Total
0.844 g-1.1515g
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). In the instant case, the range taught by Tomita (0.1777%-24.29%) overlaps with the claim 6 range (0.5% or more and 15.0% or less). In the instant case, the range taught by Tomita (0.0135% to 12.33%) overlaps with the claim 7 range (0.1% or more and 5.0% or less). In the instant case, the range taught by Tomita (0.0135% to 12.33%) overlaps with the claim 18 range (0.1% or more and 5.0% or less). Therefore, the ranges in Tomita renders obvious the claimed ranges.
Regarding claim 11, Tomita in view of Chang discloses all the limitations in the claims as set forth above and further discloses using X-ray absorption fine structure spectroscopy to calculate a ratio of platinum oxide to platinum in the catalyst particles supported on the tin oxide, and that the ratio is preferably 7.0 or more ([0027]).
The ratio disclosed by Tomita is considered to measure the relative amounts of platinum oxide and platinum metal, and therefore it is representative of the ratio claimed, RTO, and anticipates the claim limitation wherein a ratio RTO of platinum oxides to metal platinum is 10.00 or more.
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). In the instant case, the range taught by Tomita (7.0 or more) overlaps with the claimed range (10.0 or more). Therefore, the range in Tomita renders obvious the claimed range.
Regarding claim 12, Tomita in view of Chang discloses all the limitations in the claims as set forth above and Tomita further discloses examples of the form of the methane oxidation catalyst of the present invention include, but are not limited to, powder, particulate and granular (including spherical) forms ([0054]).
Regarding claim 13, Tomita in view of Chang discloses all the limitations in the claims as set forth above and Tomita further discloses the use of the tin oxide having an average particle size in the above range will allow the platinum oxide particles to be uniformly dispersed and supported on the surface of the tin oxide particles, with the strength to be increased when formed into a honeycomb shape or a pellet shape ([0040]).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is Tomita et al (EP 3673992 B1) in view of Chang et al ("Effect of Ultra-Thin SnO2 Coating on Pt Catalyst for Energy Applications", cited in IDS 06/06/2024) as discussed in the rejection of claim 1.
However, regarding claim 2, 15-16 Tomita does not disclose an X-ray intensity of tin in the first region or the second region. Chang does not disclose an X-ray intensity of tin in the first region or the second region.
Regarding claim 8, 19-20, Chang discloses an ultra-thin oxide layer 5 nm (Pg. 693 right col. par. 3), but does not disclose “wherein the overcoat layer having a mass of 10.0% by mass or more and 45.0% or less with respect to a total mass of the catalyst”.
Regarding claim 9 and 10, Chang does not disclose a layer containing iridium.
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 11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/923,205 in view of Chang et al ("Effect of Ultra-Thin SnO2 Coating on Pt Catalyst for Energy Applications", cited in IDS 06/06/2024).
Copending application No. 17/923,205 claims a methane combustion catalyst comprising platinum and iridium supported on a tin oxide carrier for combusting methane in a combustion exhaust gas containing sulfur oxide wherein, a ratio RTO of platinum oxides to metal platinum is 10.0 or more, the ratio RTO being based on state percentages of metal platinum (Pt) and platinum oxides (PtO and PtO2) obtained from a platinum 4f spectrum through measurement of the methane combustion catalyst by X-ray photoelectron spectroscopy (XPS) and calculated in accordance with the following expression:
RTO = (RPtO+RPtO2)/ RPt wherein RPt is an existence percentage of metal platinum (Pt), RPtO is an existence percentage of PtO and RPto2 is an existence percentage of PtO2 (claim 1).
Copending application No. 17/923, 205 does not disclose “wherein, in line analysis by electron probe microanalysis (EPMA) performed on an arbitrary cross-section of the methane combustion catalyst from a deepest catalyst portion toward a catalyst surface, a first region where all of platinum, iridium and tin are detected and a second region where tin is essentially detected but platinum is not detected are both observable”.
Chang discloses an ultra-thin SnO2 coating on Pt catalyst (title). Metal-based catalysts, especially noble metals such as Pt… play a key role in speeding up chemical reaction rates in reformers, fuel cells and electrolyzes (Pg. 691 top of left column). Even though noble metals have strong advantages, they and their environment may be affected by the undesirable effects of agglomeration during chemical reaction processes (Pg. 691 top of left column). To improve thermal stability of metal catalysts, we applied a coating of ultra-thin tin oxide to porous Pt (Pg. 692 left column par. 2). Fig. 3 (a) shows the images of uniform ultra-thin tin oxide-coated Pt which were captured by a transmission electron microscope (Pg. 692 right column par. 1).
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for a first region where all of platinum, iridium and tin are detected and a second region where tin is essentially detected but platinum is not detected are both observable in the composition of Copending application No. 17/923,205 in order to improve thermal stability and reduce agglomeration as taught by Chang.
Although there is no disclosure that the test method is electron probe microanalysis (EPMA), given that Chang discloses a SnO2 layer and absent evidence criticality how the “a first region where all of platinum, iridium and tin are detected and a second region where tin is essentially detected but platinum is not detected are both observable” is measured, it is an examiner's position that a SnO2 layer disclosed by Chang meets the claim limitation.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE L QUIST whose telephone number is (571)270-5803. The examiner can normally be reached Mon-Fri 8:30-5:00.
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/N.L.Q./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738