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 .
Applicants’ Preliminary Amendment, filed on April 30, 2024, has been made of record and entered. In this amendment, a Substitute Specification has been filed, in which there is no new matter introduced.
No claims have been canceled or added; claims 1-12 are presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was electronically filed on May 31, 2024.
Specification
The abstract of the disclosure is objected to because it contains 189 words, and is therefore of undue length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claim Objections
Claims 5 and 6 are objected to because of the following informalities:
In line 1 of claim 5, “catalyst comprising” should be amended to recite “catalyst comprises”.
In line 4 of claim 6, “catalyst under with” should be amended to recite ”catalyst with”.
In line 15 of claim 6, “shaped final catalyst” should be amended to recite “final catalyst”, to ensure claim continuity.
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 2-4 and 6-12 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.
Claims 2-4 and 9-11 are indefinite for reciting the phrase “combination thereof”. In these claims, because it cannot be determined what combination of, for example, the metal and their oxides, as recited in claim 2, is encompassed or intended, e.g., copper and cobalt, copper and zinc oxide, etc. Because “metal and their oxides” is exemplified by numerous metals and metal oxides, any pairing of these metals and metal oxides may not be within the scope of Applicants’ claim limitation “combination thereof”.
Additionally, claim 4 is indefinite for reciting the claim limitation “ludox silica”, which appears to be a trademark. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a form of silica, and, accordingly, the identification/description is indefinite.
Claim 6 lacks antecedent basis for the limitation “90-95 % w/w mixed metal oxides” in step (c) therein. While preceding step (b) in claim 6 recites the limitation “to form a mixed metal oxide”, no percentage range of said mixed metal oxide is recited.
Claim 8 is indefinite for reciting “preferably”. The term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention or not, and the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.
As claims 7 and 12 depend from claim 6, these claims do not cure the aforementioned deficiencies in claim 6, and are thus rejected for the same rationale.
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.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Peter et al. (U. S. Patent Publication No. 2022/0111354).
Regarding claims 1-3, Peter et al. teach a catalyst including at least one group 10 metal, e.g., Pd, impregnated in a mixed metal oxide, wherein the mixed metal oxide is a combination of ln2O3, CuO, ZnO, ZrO2, and Al2O3. In exemplary embodiments of the aforementioned catalyst, Pd is present in a weight percentage ranging from 0.1 to 2% with respect to the total catalyst, In2O3 has weight percentage in the range of 2-4% with respect to the total catalyst, CuO has a weight percentage in the range of 55-59% with respect to the total catalyst; ZnO has a weight percentage in the range of 15-20% with respect to the total catalyst; ZrO2 has a weight percentage in the range of 8-10% with respect to the total catalyst; and Al2O3 has a weight percentage in the range of 8-10% with respect to the total catalyst. See paragraphs [0027]-[0032] of Peter et al., as well as the Abstract and paragraph [0057], both of which teach that the aforementioned catalyst is used for the conversion of CO2 to form methanol and carbon monoxide.
Pd, ln2O3, CuO, ZnO, and ZrO2 are considered to read upon Applicants’ claim limitation “metal and their oxides”; Al2O3 is considered to read upon Applicants’ claim limitation “structural promoter”.
By combining the percentages of Pd (0.1-2%), In2O3 (2-4%), CuO (55-59%), ZnO (15-20%), and ZrO2 (8-10%), the sum of these percentages is as follows: 0.1 + 2 + 55 + 15 + 8 = 80.1%, and 2 + 4 + 59 + 20 + 10 = 95%. Note that these combined percentages fall within Applicants’ “80-95% w/w of a metal and their oxides”; further, the weight percentage range of Al2O3 disclosed by Peter et al., 8-10%, falls within Applicants’ “5-20 % w/w of a structural promoter”, as recited in claim 1.
Further regarding claim 1, and also regarding claim 4, Peter et al. teach the feasibility in the aforementioned catalyst containing a binder, with pseudoboehmite (PSBH) disclosed as an exemplary binder. See paragraph [0055] of Peter et al.
Peter et al. do not explicitly teach or suggest the limitations of Applicants’ claims regarding the claimed amount of binder present in the catalyst, i.e., “5-10% w/w of a binder”, as recited in claim 1.
However, although Peter et al. teach an embodiment in which “the binder has a weight percentage in the range of 20-40% of the catalyst”, and that, in another embodiment, “the weight percentage of the binder is in the range of 27-32% of the catalyst”, it is known that teachings of a reference are not limited to its preferred embodiments (In re Boe, 145 U.S.P.Q. 507 (CCPA 1966)). Further, Peter et al. additionally teach that pseudoboehmite “has been identified as the best binder to impart long run stability to the catalyst"; see (paragraph [0055] of Peter et al. From these teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to determine through routine experimentation the optimal amount of binder, such as that recited in Applicants' claim 1, to obtain a catalyst exhibiting optimal long run stability.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Because Peter et al. do not teach or suggest the presence of either cerium, ceria, titanium, or titania in the catalyst disclosed therein, this reference does not teach or suggest the limitations of Applicants’ claim 5, regarding the claimed amounts of 10 w/w% of Ce and 5% w/w of Ti.
Peter et al. also do not teach or suggest the method as claimed in Applicants’ claims 6-12.
Peter et al. teach a process for preparing the aforementioned catalyst, wherein at least metallic nitrate and deionized water are contacted to form a first solution, at least one precipitating agent and deionized water are contacted to form a second solution, the first and second solution are contacted to obtain a first reaction mixture, the reaction mixture is processed through processes selected from the group consisting of ageing, filtering, washing, drying, calcining, and combinations thereof, to obtain a mixed metal oxide, the mixed metal oxide and an aqueous solution of palladium nitrate are contacted to obtain a third solution and the third solution is processed to obtain the catalyst; see, for example, paragraphs [0038]-[0054] and Example 1 of Peter et al.
Although Peter et al. teach the feasibility in the catalyst further comprising a co-binder, examples of which include nitric acid, acetic acid, and phosphoric acid (paragraph [0056] therein), this reference does not teach or suggest the presence or employment of a peptizing agent in the preparation thereof.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
English translations of Applicants’ cited references, CN 102240553, CN 103263926, CN 106423263, and CN 110252308, accompany this Office Action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 June 11, 2026
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