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 without traverse of Group I, claims 1-9 in the reply filed on September 1st, 2026 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 September 1st, 2026.
Claim Objections
Claim 2 is objected to because of the following informalities:
In lines 1-2 of claim 2, “wherein the catalyst particles comprising nickel or nickel oxide” should be edited for grammatical correctness, e.g., to “wherein the catalyst particles comprise nickel or nickel oxide”.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (CN 109647495 A, 2019) (the machine translation of record is referenced below).
Regarding claim 1, Wang teaches a dry reforming catalyst (Wang, [0038]-[0040], [0026]) comprising:
silica having a three-dimensional network structure with pores formed therein (Wang, [0034]); and
catalyst particles for reforming methane (Wang, [0034], NiO particles), which are formed in the pores and have a smaller diameter than the pores (Wang, Fig. 1, [0026], “The above method for preparing a nickel-based methane dry reforming catalyst, wherein the smaller nickel nanoparticles in the obtained nickel-based catalyst are dispersed in a hydrothermally stable silicalite-2 molecular sieve structure, and the coating structure is limited”; [0034], “It can be seen from Fig. 1 that the sample after crystallization has a distinct pore structure and is flat at the edge of the catalyst, indicating that the NiO particles are uniformly dispersed inside the molecular sieve.”, i.e., the NiO particles are smaller than the pores and are inside the pores).
Regarding claim 2, Wang teaches the dry reforming catalyst of claim 1, as discussed above, wherein the catalyst particles comprise nickel oxide (Wang, [0039], NiO).
Regarding claim 3, Wang teaches the dry reforming catalyst of claim 2, as discussed above. While Wang does not explicitly teach that nickel atoms of the catalyst particles form covalent bonds with oxygen atoms of the silica, this would necessarily be the case, as Wang uses the same silica precursors as the instant invention (Wang, [0038], TEOS and APTES; instant Specification, [0060]), which would interact with Ni2+ in the same way. As the instant Specification details, “In addition, a silanol group Si-OH of the silane precursor or silane coupling agent produced in the hydrolysis of Reaction Equation 1 may bond to the nickel ions or nickel precursor in the first precursor solution to form a Si-O-Ni structure” (Specification, [0049]). Given the substantially similar conditions of Wang to the instant invention, there is no reason to expect that the same phenomenon would not occur in Wang’s dry reforming catalyst, despite Wang’s silence to this feature. See MPEP 2112.I, citing, e.g., Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (stating that “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”). See Also MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). In the instant case, recognizing the latent property of nickel atoms of the catalyst particles forming covalent bonds with oxygen atoms of the silica does distinguish the instant invention from the dry reforming catalyst taught by Wang, even though Wang is silent to this particular property.
Regarding claim 4, Wang teaches the dry reforming catalyst of claim 3, as discussed above. The claim limitation “wherein the catalyst particles are formed by precipitation using the nickel-oxygen covalent bonds as a seed for growth” is a product-by-process limitation. Insofar as the claim contains this product-by-process limitation, it is not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113.I, citing, e.g., In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In the instant case, there is no evidence of record to suggest that the catalyst particles being formed by precipitation using the nickel-oxygen covalent bonds as a seed for growth would impart distinctive structural characteristics to the claimed dry reforming catalyst when compared to those taught by Wang. While Wang is silent to the seeded growth, and there is no evidence that seeded growth imparts distinctive structural characteristics to the dry reforming catalyst, Wang’s preparation would be expected to nonetheless operate in the same manner as claimed.
Regarding claim 5, Wang teaches the dry reforming catalyst of claim 1, as discussed above, wherein the catalyst particles are characterized by having a particle size controlled by oleic acid (Wang, [0038], [0012], microemulsion).
Regarding claim 6, Wang teaches the dry reforming catalyst of claim 1, as discussed above, wherein the dry reforming catalyst has a conversion rate of 95% for CO2 and CH4 at 800°C (Wang, [0040]; subsequent example recite CO2 and CH4 conversion rates separately ([0044], [0048], [0050], [0052], [0054], [0056]), and the 95% value for Example 1 appears to apply to both CO2 and CH4). Also, Wang teaches that reactivity for the catalyst of Example 2 is “not as good as in Example 1”, where the conversion of CH4 and CO2 at 800°C in Example 2 are 90.1% and 92.3%, respectively (Wang, [0044]). The conversion of these species is therefore higher in Example 1. Moreover, it has been held that where claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because Wang’s catalyst has the same structure as presently claimed, it anticipates the claimed CO2 and CH4 conversion rates at 750°C or higher.
Regarding claim 7, Wang teaches the dry reforming catalyst of claim 6, as discussed above, wherein the dry reforming catalyst has a difference of 0% in conversion rate between CO2 and CH4 at 800°C (Wang, [0040]; subsequent example recite CO2 and CH4 conversion rates separately ([0044], [0048], [0050], [0052], [0054], [0056]), and the 95% value for Example 1 appears to apply to both CO2 and CH4). ). Also, Wang teaches that reactivity for the catalyst of Example 2 is “not as good as in Example 1”, where the conversion of CH4 and CO2 at 800°C in Example 2 are 90.1% and 92.3%, respectively (Wang, [0044]). The conversion of these species is therefore higher in Example 1, making it mathematically impossible for the difference in CO2 and CH4 conversion to be 10% or more. Moreover, it has been held that where claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because Wang’s catalyst has the same structure as presently claimed, it anticipates the claimed difference in conversion rate between CO2 and CH4 at 700°C or higher.
Regarding claim 8, Wang teaches the dry reforming catalyst of claim 1, as discussed above. While Wang does not explicitly teach that the dry reforming catalyst has a conversion rate of 90% or greater for up to 500 hours under the conditions that the feed gas is CO2 and CH4, the process temperature is 800°C, and the gas hourly space velocity of the feed gas is 250 L•gcat•h-1, Wang reports that similar conditions result in a 95% methane conversion rate (Wang, [0040], 240 L•gcat•h-1, 800°C). As it is highly unlikely that changing from 240 L•gcat•h-1 to 250 L•gcat•h-1 would alter the methane conversion from 95% to less than 90%, and Wang’s measurement was not performed for greater than 500 hours (the claim recites a conversion rate for up to 500 hours), Wang’s dry reforming catalyst anticipates the claimed conversion rate. Moreover, it has been held that where claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because Wang’s catalyst has the same structure as presently claimed, it anticipates the claimed conversion rate.
Regarding claim 9, Wang teaches the dry reforming catalyst of claim 8, as discussed above. For the same reason as discussed above with respect to claim 8, Wang’s catalyst, which has the same structure as instantly claimed, anticipates the claimed H2/CO ratio of 0.95 or greater for up to 500 hours.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
Prosecution Insights