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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-5 and 9-13 in the reply filed on 30 June 2026 is acknowledged. The traversal is on the ground(s) that the cited references do not describe the first coating layer comprising SrTiO. This is not found persuasive because it appears that Ham (KR 20180136701) in view of Sekido (JPS6118434) teaches the corresponding technical feature. See rejection below. Therefore, the restriction requirement is maintained.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-8 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 30 June 2026.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in KR on 18 November 2021. It is noted, however, that applicant has not filed a certified copy of the English Translation of KR10-2021-0159456 or PCT/KR2022/011327 application as required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements filed 07/25/2023, 07/22/2024, 09/10/2024, and 04/21/2025 have been considered.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2, line 7, "Chemical Formulae" should read "Chemical Formula".
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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 3 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3, lines 1-2, recite "the porous metal support is a metal foam comprising…SiC or α-Al2O3". However, SiC does not contain a metal, and therefore is not a metal support or a metal foam, and α-Al2O3 is not a metal foam. This limitation is interpreted as requiring a porous support, wherein the porous support comprises SiC, α-Al2O3, NiFeCrAl metal foam, or NiCrAl metal foam.
Claim 5, lines 1-2, recite “the catalyst is applied to a steam reforming process…”. It is unclear how the catalyst is applied to these processes.
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.
Claims 1-10 and 13-14 and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4, 6-7, 9-11, 13-14 and 17-18 of copending Application No. 18/273,108 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application no. 18/273,108 discloses a catalyst for methane reformation, comprising: a porous metal support; a first coating layer provided on the porous metal support and comprising an inorganic oxide and a perovskite-based compound represented by SrTiO3; and a second coating layer provided on the first coating layer and comprising a perovskite- based compound represented by Chemical Formula 2: Sr1-xAxTiαByO3-δ wherein, in Chemical Formula 2, A is selected from Y, Sc, La or lanthanide series elements, B is Ni, Co, Fe, Mn, Cr, Mo, Ru or Rh, x is a real number of 0 or more and less than 1, y is a real number of 0 or more and less than 0.3, δ is a real number of 0 or more and less than 1, α is a real number of more than 0.7 and 1 or less, and (x + y) > 0 is satisfied (claims 1-2). Co-pending application no. 18/273,108 further discloses a method for producing a catalyst for methane reformation, the method comprising: preparing a first solution comprising an inorganic oxide or an inorganic oxide precursor and a perovskite-based compound represented by Chemical Formula 1: SrTiO3; and a second solution comprising a precursor of a perovskite-based compound represented by Chemical Formula 2; coating a porous metal support with the first solution, and then performing a first heat treatment process to produce a catalyst precursor coated with a first coating layer; and coating the catalyst precursor coated with the first coating layer with the second solution, and then performing a second heat treatment process to produce a catalyst coated with a second coating layer: [Chemical Formula 2] Sr1-xAxTiαByO3-δ wherein, in Chemical Formula 2, A is selected from Y, Sc, La or lanthanide series elements, B is Ni, Co, Fe, Mn, Cr, Mo, Ru or Rh, x is a real number of 0 or more and less than 1, y is a real number of 0 or more and less than 0.3, δ is a real number of 0 or more and less than 1, α is a real number of more than 0.7 and 1 or less, and (x + y) > 0 is satisfied (claims 8-9).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-2, 4-5, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ham (KR 20180136701) in view of Sekido (JPS6118434).
Regarding Claim 1, Ham discloses a methane reforming catalyst [0006], comprising a monolithic support having a porous structure and including metal (monolithic support having a porous structure and including metal meets the limitation of a porous metal support; [0007], [0041]). Ham further discloses the catalyst comprises a coating on the monolithic support, wherein the coating is represented by Chemical Formula 1 [0018]: Sr1-yYyTi1-xRuxO3-δ (Sr1-yYyTi1-xRuxO3-δ meets the limitation of a perovskite-based compound), where x is greater than 0 and less than 1, y is greater than 0 and less than 0.1, and δ is between 0 and 1 inclusive [008]-[010], which overlaps the claimed ranges for Chemical Formula 2, Sr1-xAxTiαByO3-δ, of x is a real number of 0 or more and less than 1, y is a real number of 0 or more and less than 0.3, δ is a real number of 0 or more and less than 1, α is a real number of more than 0.7 and 1 or less, and (x + y) > 0 is satisfied, such that the range taught by Ham obviates the claimed range. See MPEP 2144.05 (I).
Ham is silent to providing a coating layer comprising a perovskite-based compound represented by: SrTiO3 between the porous metal support and the coating comprising a perovskite-based compound represented by: Sr1-yYyTi1-xRuxO3-δ.
Ham, however, discloses a metal-based support [0041].
Sekido discloses a supported catalyst (bottom of pg. 2). Sekido further discloses SrTiO3 is provided between the catalyst layer and the support, thereby suppressing the degradation of the metal-based support and achieving stable improvement of activity (claim 1; top of pg. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ham to incorporate the teachings of Sekido wherein the catalyst has a coating layer comprising a perovskite-based compound represented by: SrTiO3 between the porous metal support and the coating comprising a perovskite-based compound represented by: Sr1-yYyTi1-xRuxO3-δ in order to suppress degradation of the metal-based support, as recognized by Sekdio (claim 1; top of pg. 3).
Regarding Claim 2, Ham discloses the coating is represented by Chemical Formula 1 [0018]: Sr1-yYyTi1-xRuxO3-δ (Sr1-yYyTi1-xRuxO3-δ meets the limitation of a perovskite-based compound), where x is greater than 0 and less than 1, y is greater than 0 and less than 0.1, and δ is between 0 and 1 inclusive [008]-[010], which overlaps the claimed ranges for Chemical Formula 4, Sr1-xYxTiαByO3-δ, where B is Ru, of x is a real number of more than 0 and less than 1, y is a real number more than 0 and less than 0.3, δ is a real number of more than 0 and less than 1, α is a real number of more than 0.7 and 1 or less, such that the range taught by Ham obviates the claimed range. See MPEP 2144.05 (I).
Regarding Claim 4, Ham discloses the compound represented by [Chemical Formula 1] may be supported in an amount of 10 to 50 parts by weight per 100 parts by weight of the monolith support [0015], which overlaps the claimed range of 3 wt% to 40 wt% such that the range taught by Ham obviates the claimed range. See MPEP 2144.05 (I).
Regarding Claim 5, Ham discloses a carbon dioxide reforming process [0002].
Regarding Claim 11, Ham is silent to a content of the perovskite-based compound represented by Chemical Formula 1 being 1 wt% to 20 wt%, based on a total weight of the porous metal support.
Sekido discloses the amount of SrTiO3 is sufficient to prevent direct contact between the metal support and the catalyst (bottom of pg. 5). Sekido further discloses SrTiO3 is provided between the catalyst layer and the support, thereby suppressing the degradation of the metal-based support (claim 1; top of pg. 3).
As the degradation of the metal-based support is a variable that can be modified, among others, by adjusting the amount of SrTiO3, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of SrTiO3, by weight, in the catalyst to obtain the desired separation between the metal support and the catalyst to prevent degradation of the metal-based support, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 12, Ham is silent to a weight ratio of the perovskite-based compound represented by Chemical Formula 1 to the perovskite-based compound represented by Chemical Formula 2 is 1:1 to 1:20.
Sekido discloses the amount of SrTiO3 is sufficient to prevent direct contact between the metal support and the catalyst (bottom of pg. 5). Sekido further discloses SrTiO3 is provided between the catalyst layer and the support, thereby suppressing the degradation of the metal-based support (claim 1; top of pg. 3).
As the degradation of the metal-based support is a variable that can be modified, among others, by adjusting the amount of SrTiO3, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the weight ratio of Chemical Formula 1 to Chemical Formula 2 in the catalyst to obtain the desired separation between the metal support and the catalyst to prevent degradation of the metal-based support, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 13, Ham illustrates the coating layer is present in a form of protrusions on the monolith support (Figures on pg. 15-16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ham to incorporate the teachings of Sekido wherein the second coating layer is present in a form of protrusions on the first coating layer as Ham in view of Sekido teaches the catalyst comprising the support, the first coating layer, and the second coating layer.
Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ham (KR 20180136701) in view of Sekido (JPS6118434) and Kyo (JP 2019034256).
Regarding Claim 3, Ham and Sekido teach the elements as described above with regards to claim 1.
Ham discloses the monolith support is porous [0044] and may include, but is not limited to, ceramic, metal, alumina (aka Al2O3), silica, alumina titanate, cordierite, etc. [0041].
Ham is silent to the porous metal support comprising NiFeCrAl metal foam, NiCrAl metal foam, SiC, or α-Al2O3.
Kyo discloses a catalyst for steam methane reforming [0013], [0002]. Kyo further discloses the support is a NiCrAl foam [0009]. Kyo further discloses porous metal foams possess characteristics such as high thermal conductivity, high gaseous fluid permeability, high specific surface area, mechanical impact resistance, durability, and heat resistance [0003].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ham to incorporate the teachings of Kyo wherein the porous metal support comprises a NiCrAl metal foam, because porous metal foams possess characteristics such as high thermal conductivity, high gaseous fluid permeability, high specific surface area, mechanical impact resistance, durability, and heat resistance, as recognized by Kyo [0003].
Regarding Claim 10, Ham discloses a porous structure that simultaneously includes two or more pores of different sizes among micropores (<2 nm), mesopores (2-50 nm), and macropores (>50 nm) [0039], which is equivalent to <0.002 µm to >0.05 µm.
Ham is silent to the porous metal support having an average pore size of 400 µm to 2,000 µm.
Kyo further discloses the support is a NiCrAl foam [0009]. Kyo further discloses porous metal foams possess characteristics such as high thermal conductivity, high gaseous fluid permeability, high specific surface area, mechanical impact resistance, durability, and heat resistance [0003]. Kyo discloses the porous metal support has pore size in the range of 300 µm to 600 µm [0014], which overlaps the claimed range of 400 µm to 2,000 µm such that the range taught by Kyo obviates the claimed range. See MPEP 2144.05 (I). Kyo further discloses within this pore size range, the catalytic activity of the metal active layer can be improved [0014].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ham to incorporate the teachings of Kyo wherein the porous metal support has an average pore size of 400 µm to 2,000 µm, because within this pore size range, the catalytic activity of the metal active layer can be improved, as recognized by Kyo [0014].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ham (KR 20180136701) in view of Sekido (JPS6118434) and Akama (JP 2008144668).
Regarding Claim 9, Ham and Sekido teach the elements as described above with regards to claim 1.
Ham discloses a methane reforming catalyst [0006], comprising a monolithic support having a porous structure [0007].
Ham is silent to the support having a porosity of 10% to 99%.
Akama discloses a metal foam monolithic support having a porosity of 809% or more [0044], which overlaps the claimed range of 10% to 99% such that the range taught by Akama obviates the claimed range. See MPEP 2144.05 (I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ham to incorporate the teachings of Akama, wherein the porous monolithic metal support has a porosity of 10% to 99%, because a porosity in this range is well-known in the art of porous monolithic metal catalyst supports, as recognized by Akama.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SLONE ELZABETH SIMKINS whose telephone number is (571)272-3214. The examiner can normally be reached Monday - Friday 8:30AM-4:30PM.
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/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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