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 .
Status of the Claims
The amendment filed on 06/05/2026 has been entered. Claims 1, 7-8, and 10-13 have been amended and claims 6, 14-16 and 19-24 have been canceled. Thus claims 1-5, 7-13 and 17-18 are currently pending and are under examination.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Withdrawn Objections and Rejections
The objections and 112(b) rejections have been withdrawn in view of claim cancellation and amendment.
Furthermore, claim 1 has been amended by now reciting the hydrogen catalyst as comprising Ni2Mg, Cu3Ni or CuMg. Nakayama (Nakayama, T. et al. “Ni/MgO catalyst prepared using citric acid for hydrogenation of carbon dioxide” Applied Catalysis A: General 158 (1997)) 185-199; cited in PTO-892 12/10/2025) teaches hydrogenation of carbon dioxide to methane using NiO-MgO as a solid solution hydrogenation catalyst but fails to teach or suggest the catalyst as instantly recited. Furthermore, neither Patent application publication number US2016/0017800A1 4A1 (US’800) in view of Nakayama (Nakayama, T. et al. “Ni/MgO catalyst prepared using citric acid for hydrogenation of carbon dioxide” Applied Catalysis A: General 158 (1997)) 185-199) nor International publication number WO2017/098020A1 (WO’020); both cited in PTO-892 12/10/2025, teaches or suggests the claimed catalyst. US’800 teaches that the process for the conversion of CO2 to methane is conducted in the presence of a hydrogenation catalyst comprising Ru on Al2O3. Thus the 103 rejection over US’800 in view of Nakayama and WO’020 has been withdrawn.
Claim Rejections - 35 USC § 112 – New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7-13 and 17-18 are newly rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended by canceling “a solid solution catalyst” and reciting the limitation “the hydrogenation catalyst comprises Ni2Mg, Cu3Ni or CuMg” without the originally recited solid solution, which is a specific form of the hydrogenation catalyst. The hydrogenation catalyst as instantly amended is broader than the solid solution form presented in the original claim 1 and dependent claim 6.
The instant specification appears devoid of such description and fails to disclose either explicitly or implicitly the broader form of the hydrogenation catalyst other than the solid solution form.
Thus, at the time the application was filed, a skilled artisan would not recognize from the disclosure that Applicant was in possession of the hydrogenation catalyst comprising Ni2Mg, Cu3Ni or CuMg in any form other than the solid solution form.
MPEP § 2163.06 notes: "If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)"
MPEP § 2163.02 further states that “Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by "whatever characteristics sufficiently distinguish it").”
MPEP § 2163.06 also notes " When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not "new matter" is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure."
This is a new matter rejection.
Claims 2-5, 7-13 and 17-18 also introduce new matter for being dependent on claim 1.
Allowable Subject Matter
The subject matter of claims 1-5, 7-13 and 17-18 is free of prior art reference. The closest prior art reference is Patent application publication number US2016/0017800A1 4A1 (US’800).
US’800 teaches a method for producing methane from an electrical energy source comprising: a. providing a source of electrical energy; b. using electrical energy from said source to electrolyze water to form hydrogen (renewable hydrogen) and oxygen; and c. using hydrogen thereby formed to hydrogenate carbon dioxide to form methane (claim 1), wherein the process is conducted in the presence of a hydrogenation catalyst comprising Ru on Al2O3 ([0028]) and wherein CO2 is obtained from stationary sources ([0212], Fig.9, CO2 from storage tank 960). The reference teaches the product stream comprises CH4 and H2O and passes to a condenser where the H2O condenses to liquid water ([0201]). US’800 further teaches removal of unreacted CO2 from the reaction product by scrubbing, the separation of CH4 from the reaction product and using the purified CH4 to the downstream CCGTEG (oxy-fuel combined cycle gas turbine electricity generator) plant and in the natural gas pipeline ([0089], [0155], [0173]-[0174], [0183], [0201] and [0202]). It is noted that since the reaction product comprises unreacted CO2 ([0201]), the conversion rate of CO2 to methane did not go to completion and thus a skilled artisan would understand that the reaction product would also comprise unreacted hydrogen in addition to unreacted CO2 and methane product.
US’800 fails to teach or suggest that the hydrogenation catalyst of CO2 comprises Ni2Mg, Cu3Ni or CuMg. Furthermore, the reference, while it teaches removing H2O and unreacted CO2, it fails to teach the removal of H2.
Thus, US’800 fails to anticipate the claimed process for the production of low-carbon CH4.
Nakayama (Nakayama, T. et al. “Ni/MgO catalyst prepared using citric acid for hydrogenation of carbon dioxide” Applied Catalysis A: General 158 (1997)) 185-199) teaches hydrogenation of carbon dioxide to methane using a solid solution hydrogenation catalyst comprising NiO-MgO, but fails to teach or suggest the hydrogenation catalyst as instantly claimed.
International publication number WO2017/098020A1 (WO’020) teaches a process for separating hydrogen gas from an input stream comprising gaseous methane and gaseous hydrogen using an electrochemical pump.
Thus, a skilled artisan would not have been motivated in combining US’800, Nakayama and WO’020 to arrive at the instantly claimed invention. As such, the process for the production of low-carbon CH4 is deemed unobvious over the closest prior art references.
Conclusion
Claims 1-5, 7-13 and 17-18 are rejected and no claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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