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 .
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
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 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 1-4 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (US 2019/0084832 A1).
Regarding claim 1, Hu et al. teach a process for the simultaneous production of Multi-Walled Carbon Nanotubes (MWCNTs)(Title, Abstract) and hydrogen gas comprising introducing a reactant gas stream comprising lower hydrocarbon comprises methane, ethane, propane, butane, or a combination thereof, into a fixed flow reactor in the presence of a catalyst, contacting at a temperature about 650-750 0C in a fixed reactor purged with N2 ([0107]) which is encompassed by the instant claimed temperature range, producing hydrogen at a conversion of CH4 of 37% ([0462]) which reads on the instant claimed ranges.
The catalyst comprises bimetallic nickel and cobalt in a 1:1 molar ratio (about 1:1 weight ratio, such as 30% weight of each metal), and on a support of silica ([0448] and [0462], or alternative TiO2 (the instant claimed titania) ([0019]-[0021]). As such, the cobalt and nickel is present in an amount of about 30 %wt., and the support of titania is present in an amount from about 40%wt. which reads on the instant claimed ranges.
Regarding claim 2, Hu et al. teach 30% CH4/N2 ([0451]).
Although Hu et al do not specifically disclose a concentration of 50-95% vol as per applicant claim 2, the differences in concentration will not support the patentability of subject matter, this is a case of prima facie obviousness, as one having ordinary skill in the art at the time the invention was made, given the general conditions taught by Hu et al.
It would have been obvious to one of ordinary skill in the art to select any concentration of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Regarding claim 3, as discussed above, the feed gas taught by Hu et al. comprises methane, ethane, propane, butane, and nitrogen as the instant claims ([0107] and [0451]).
Regarding claim 4, as discussed above, the reactor taught by Hu et al.is a reactor bed of a fixed flow as the instant claim ([0109]-[0112])
Regarding claim 6, as discussed above, the contacting temperature taught by Hu et al. is temperature about 650-750 0C ([0450]).
The references differ from Applicant's recitations of claims by not disclosing identical ranges of 700-800 0C. However, the reference discloses "overlapping" ranges or “close” range, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 7, the process taught by Hu et al. comprise 30% CH4/N2 and a space velocity of 60 mL/min (4.2 L/hour) as the instant claim ([0448]).
Regarding claim 8, as discussed above, the carbon deposited on surfaces of the catalyst taught by Hu et al. is in the form of multi-walled carbon nanotubes (MWCNTs) as the instant claim (Title).
Regarding claim 9, the MWCNTs taught by Hu et al. have a mean diameter of about 40-150 nm which overlaps the instant claimed ranges([0419]). The length of most of the CNTs are 50-200 nm ([0526]).
The references differ from Applicant's recitations of claim 9 by not disclosing identical ranges However, the reference discloses "overlapping" ranges or “close” range, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 10, although Hu et al. do not the MWCNTs are hollow multi-walled carbon nanotubes having open tips, and wherein Ni and Co particles reside within the inner surfaces of the hollow multi-walled carbon nanotubes as per applicant claim 10, the reference of Hu et al. teach all of the claimed reagents, composition and method for production hydrogen and deposited carbon on the surface of the catalyst, the physical properties of the resulting composition (i.e., hollow multi-walled carbon nanotubes having open tips, and wherein Ni and Co particles reside within the inner surfaces of the hollow multi-walled carbon nanotubes) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 11, the process taught by Hu et al. is free from carbon oxide as the instant claim ([0107]-[0108] and [0486]).
Regarding claim 12, the catalyst composition taught by Hu et al. has a BET surface area of from about 50-about 500 m2/g which overlaps the instant claimed ranges.
The references differ from Applicant's recitations of claim 12 by not disclosing identical ranges However, the reference discloses "overlapping" ranges or “close” range, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 13, the catalyst composition taught by Hu et al. has a pore volume of 0.3-1.6 cm3/g ([0326]) which overlaps the instant claimed ranges.
Regarding claim 14, the catalyst particles taught by Hu et al. have an average pore diameter 5-15 nm ([0524]) which is encompassed by the instant claimed ranges.
Regarding claim 15, although Hu et al. do not the catalyst particles have a hydrogen temperature-programmed reduction (H2-TPR) of 1.5 to 10 millimoles per gram (mmol/g) as per applicant claim 15, the reference of Hu et al. teach all of the claimed reagents, composition and method for production hydrogen and deposited carbon on the surface of the catalyst, the physical properties of the resulting composition (i.e., the catalyst particles have a hydrogen temperature-programmed reduction (H2-TPR) of 1.5 to 10 millimoles per gram (mmol/g) would necessarily follow as set forth in MPEP 2112.01(II).
Regarding claim 16-20, a product-by-process limitation of “ preparing the NCT catalyst…” of claims 16-20 noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[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 re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. as applied to claim 1 above, and further in view of Hossain et al. (US 11, 819, 825 B1).
Regarding claim 5, although Hu et al. teach the reactor as per applicant claim 5, Hossain et al. teach decomposition of a feed gas stream containing methane and propane for produce hydrogen in the presence of catalyst in a cylindrical reactor which includes a top portion, a vertically oriented cylindrical body portion, a bottom portion, a housing. In some embodiments, the housing has an open top, and open bottom supportably maintained with the vertically oriented cylindrical body portion. The active catalyst composition is supportably retained within the housing, permitting fluid flow therethrough. In some embodiments, the vertical cylindrical reactor further includes at least one propeller agitator disposed in the bottom portion of the reactor. In some embodiments, the main function of the propeller agitator is homogenization, dispersion, and suspension of low-viscosity products. In some embodiments, the bottom portion is cone-shaped or pyramidal. In an embodiment, the bottom portion may have a cylindrical, cubical, cuboidal, or rhombic shape. In some preferred embodiments, a plurality of recirculation tubes fluidly connects the bottom portion of the vertical cylindrical reactor with the vertically oriented cylindrical body portion of the vertical cylindrical reactor. In an embodiment, the fixed-bed reactor may be made up of a material such as stainless-steel, iron, aluminum, copper, lead, iron, zirconium, or another alloy (col. 13, lines 16-54).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the fixed bed reactor taught by Hossain et al. in the process taught by Hu et al. to obtain the invention as specified in the claim 5 as an alternative fixed flow reactor, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Since both of Hu et al. and Hossain et al. teach methods of produce hydrogen in fixed flow reactors, one would have a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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, Sally A Merkling can be reached at 571-272-6297. 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.
YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).