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 .
Response to Amendment
The amendment filed on 07/29/2026 has been entered. Claims 1-5 and 10-22 are pending in the application. Claims 10-20 are withdrawn and claims 1-5 and 21-22 are being examined.
Applicant’s amendments to the claims have not introduced new matter and are supported in the specification in at least Pg. 14, lines 6-8, Pg. 14, lines 19-21, Fig. 9B, and Pg. 18, lines 4-18 of the instant specification.
Response to 130 Declaration and Arguments
Applicant’s arguments in the declaration filed 07/29/2026 have been fully considered and are persuasive. In summary of the Declaration, Applicant asserts on Pg. 1-2 that the work in the disclosure Slimani et al. (Catalysis 2023, 13, 668) is the work of the inventors and that the individuals named as additional authors (Mohamend J. S. Mohamed; Serkan Caliskan, Sultan Akhtar, Abdulhadi Baykal, and Mohammed A. Gondal) worked under the supervision and control of the named inventors and did not contribute concepts of the invention. This is sufficient to establish the nature of the matter sought (identification of author contributions) and that the work is the authors own. Accordingly, the 35 USC § 102 rejection of 06/09/2026 has been withdrawn.
Applicant’s arguments, see Pg. 9 filed 07/29/2026 with respect to claim 1, have been fully considered however are solely directed to the claim limitation “…cerium and samarium are each present in the titanium dioxide nanoparticles in an amount of 0.1 to 0.25%” introduced in the amendment filed 07/29/2026, which postdates the non-final rejection mailed 06/09/2026.
Upon further search and consideration and as necessitated by the amendment, the 35 U.S.C. 103 rejection of 06/09/2026 is updated and is unpatentable over Eskandarloo et al. (Ultrasonics Sonochemistry, 2015, 26, 281-292; cited in IDS dated 09/27/2023) in view of Coromelci et al. (Microporous and Mesoporous Materials 2022, 341, 112072), with evidentiary support provided by Liu et al. (Int. J. Light. Elec. Optic. 2020, 206, 164342).
Applicant's remaining arguments filed 07/29/2026 have been fully considered but they are not persuasive.
Applicant argues on Pg. 8 that Eskandarloo does not teach photodegradation properties of the samarium and cerium co-doped TiO2.
However, Eskandarloo teaches a samarium, cerium co-doped TiO2 nanoparticle that is photocatalytic (Abstract; Title; Pg. 287, right col.). Furter, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., photodegradation properties) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues on Pg. 8-9 that based on the teachings of Coromelci, a skilled artisan would not have a reasonable expectation of success in combining samarium and cerium dopants into titanium dioxide to yield an improved catalyst. Applicant argues a skilled artisan would expect the contrary where poor performance due to cerium doping diminishing or neutralizing the benefits of samarium. Applicant argues neither Eskandarloo nor Coromelci recognize the feature as a result-effective variable and would have not found it predictable to optimize the samarium and cerium doping to achieve an improved photocatalyst.
However, this is not found persuasive. Coromelci teaches photocatalytic activity decreases in the following order: Sm-TiO2>Dy-TiO2>La–TiO2>Ce–TiO2 while also teaching the indirect bandgap of samples doped with 1 mol% of Ce3+ and Sm3+ precursors (Pg. 2, 2.2; Pg. 6, 3.5; Fig. 5-6). A skilled artisan viewing the disclosure of Coromelci would understand which metal doping provides the highest photocatalytic activity between Sm and Ce. Further, Coromelci establishes that the identity of the metal is directly correlated to the indirect bandgap (Pg. 6, 3.5; Fig. 5-6; Pg. 8, right col.). Modifying the concentration of metals is within the ability of a skilled artisan and a skilled artisan would be motivated to modify the metals present in order to achieve the best photocatalytic activity.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. The concentration of Ce and Sm in the doped TiO2 of the instant invention has not been proven critical in Applicant remarks and Examiner notes at least Pg. 12, lines 14-22 describe a catalyst with 0.50% as demonstrating the best photocatalytic activity, which is outside of the instantly claimed range.
Examiner further notes that in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Eskandarloo is not relied on to teach the indirect bandgap, but rather Coromelci is.
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 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.
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 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Eskandarloo et al. (Ultrasonics Sonochemistry, 2015, 26, 281-292; cited in IDS dated 09/27/2023) in view of Coromelci et al. (Microporous and Mesoporous Materials 2022, 341, 112072), with evidentiary support provided by Liu et al. (Int. J. Light. Elec. Optic. 2020, 206, 164342). Note, Eskandarloo is cited in the IDS dated 09/27/2023 however the copy of Eskandarloo provided by Applicant only includes an Abstract. Citations to the text below are from the full text version provided by Examiner in this action.
Regarding claim 1, Eskandarloo teaches a samarium and cerium co-doped TiO2 nanoparticle that is photocatalytic (Abstract; Title; Pg. 287, right col.). Eskandarloo teaches the nanoparticles display an anatase phase crystal system (Pg. 288, right col.).
Eskandarloo does not explicitly state the anatase crystal system is tetragonal, however anatase is known by skilled artisans to be a tetragonal crystal system, as evidenced by Liu who teaches the crystal structure of anatase TiO2 is tetragonal system (Pg. 2, 2.1 Modeling of anatase TiO2).
Eskandarloo further teaches the material is doped with samarium and cerium, where the samarium content by weight percent (wt.%) ranges from 0.16-1.14 and the cerium content by (wt.%) ranges from 0.16-1.14, while teaching an example where the samarium wt.% is 0.16 and the cerium wt.% is 0.16 (Table 2; Fig. 2).
Eskandarloo teaches the average crystallite size of the Sm-Ce-TiO2 catalyst is 19 nm and the mean particle size is 20 nm (Pg. 288, right col.).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Eskandarloo (0.16-1.14 wt.% Ce; 0.16-1.14 wt.% Sm; average crystallite size of the Sm-Ce-TiO2 catalyst is 19 nm; mean particle size is 20 nm) overlaps with the claimed ranges (0.1-0.25 wt.% Ce; 0.1-0.25 wt.% Sm; average crystallite size of the Sm-Ce-TiO2 catalyst is 10-30 nm; average particle size is 10-50 nm). Therefore, the ranges in Eskandarloo render obvious the claimed ranges.
The claim further requires the “the titanium dioxide nanoparticles have an indirect bandgap (Eidrec) from 3.05 to 3.15 electron volts (eV) calculated from a plot of a square root of a Kubelka-Munk function multiplied by an energy of a photon ([(F(R)hv)]1/2) versus an energy of a photon (hv),” to which Eskandarloo is silent.
Coromelci teaches activated mesoporous titania rare-earth metal doped materials where titania is doped with samarium or cerium (Abstract; Title). Coromelci teaches the doping of cerium and samarium leads to a lowering of the indirect band gap from pure TiO2 materials, where pure TiO2 displays an indirect band gap of 3.28 eV while doping with cerium provides an indirect band gap of 3.18 eV and doping with samarium provides an indirect band gap of 3.12 eV (Fig. 5; Pg. 5-6, 3.4. Optical Properties; Pg. 5-6, 3.5, Photocatalytic properties…). Coromelci teaches the indirect band gap is a plot of the square root of the function (F(R)hv)1/2 against the energy of a photon hv (Fig. 5; 2.3 Characterization Techniques). Examiner notes Coromelci does not explicitly state the function is a Kubelka-Munk function, however the functions being plotted in Coromelci ((F(R)hv)1/2 against hv) are identical to the claimed functions, meeting the limitation required by the claim.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Coromelci (samarium doping providing a band gap of 3.12 eV) overlaps with the claimed range (indirect band gap from 3.05 to 3.15 eV). Therefore, the range in Coromelci renders obvious the claimed range.
Advantageously, doping with cerium or samarium lowers the indirect band gap of pure titania which increases the oxygen vacancies on the surface to improve photocatalytic activity, which is useful in applications including photodegradation of dyes (Pg. 6, 3.5. Photocatalytic properties…). Further, Coromelci teaches it is advantageous to provide an indirect band gap below 3.2 eV in order to provide a competitive photocatalyst that is sensitive to light activation (Pg. 6, left col.).
Therefore, it would have been obvious to one of ordinary skill in the art to adjust the cerium and samarium doping in the titania material into the claimed range by varying the amount of cerium and samarium in order to obtain an indirect band gap at least below 3.20 eV, as directed by Coromelci. One of ordinary skill in the art would have had a reasonable expectation of success in performing this modification because Figure 5 of Coromelci shows the trend of doping titania with cerium and samarium that leads to a lowering of the indirect band gap. See MPEP 2144.05 II.
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide an indirect band gap of about 3.12 eV in the product of Eskandarloo in order to provide increased oxygen vacancies that improves the photocatalytic activity of the material, as taught by Coromelci.
Regarding claim 2, Eskandarloo in view of Coromelci teaches the photocatalytic nanoparticle composition of claim 1.
Eskandarloo further teaches the material is doped with samarium and cerium, where the samarium content by weight percent (wt.%) ranges from 0.30-1.14 and the cerium content by (wt.%) ranges from 0.30-1.14, while teaching an example where the samarium wt.% is 0.30 and the cerium wt.% is 0.30 (Table 2; Fig. 2). The balance (i.e. the remaining weight percent) is TiO2 (Pg. 283, 2.2.).
Eskandarloo teaches an optimized sample that has the formula Sm (0.6 wt%)–Ce(0.82 wt%)/TiO2 (Fig. 4; Pg. 288, right col.). Converting the weight percent taught in Eskandarloo for the Sm (0.6 wt%)–Ce(0.82 wt%)/TiO2 sample to atom percent (at%) provides values of 0.11 at% Sm, 0.16 at% Ce, 33.1 at% Ti, and 66.7 at% O (see calculations below). At least this example renders obvious the claimed ranges.
Calculations:
Samarium molar mass = 150.36 g/mol; wt.% in Eskandarloo= 0.60
Cerium molar mass = 140.116 g/mol; wt.% in Eskandarloo = 0.82
Titanium molar mass = 47.867 g/mol
Oxygen molar mass = 16 g/mol
TiO2 molar mass = 79.8658 g/mol
Mass percent of Ti in TiO2 = 1* 47.867 / 79.8658 = 59.99
Mass percent of O in TiO2 = 2 * 16 / 79.8658 = 0.40
Wt % of TiO2 in Sm(0.6 wt%)–Ce(0.82 wt%)/TiO2 = 100-(0.6 + 0.82) = 98.58
wt% of Ti in 98.58 g of TiO2 = 59.08
wt% of O in 98.58 g of TiO2 = 39.80
at% of Sm = ((0.6/150.36) / (0.6/150.36) + (0.82/140.116) + (59.08/47.867) + (39.80/16)) * 100 = [Wingdings font/0xE0] 0.107 at% Sm
at% of Ce = ((0.82/140.116) / (0.6/150.36) + (0.82/140.116) + (59.08/47.867) + (39.80/16)) * 100 = [Wingdings font/0xE0] 0.157 at% Ce
at% of Ti = ((59.08/47.867) / (0.6/150.36) + (0.82/140.116) + (59.08/47.867) + (39.80/16)) * 100 = [Wingdings font/0xE0] 33.06 at% Ti
at% of O = ((39.80/16) / (0.6/150.36) + (0.82/140.116) + (59.08/47.867) + (39.80/16)) * 100 = [Wingdings font/0xE0] 66.67 at% O
Regarding claim 3, Eskandarloo in view of Coromelci teaches the photocatalytic nanoparticle composition of claim 1.
Eskandarloo teaches the material is doped with samarium and cerium, where the samarium content by weight percent (wt.%) ranges from 0.30-1.14 and the cerium content by (wt.%) ranges from 0.30-1.14, while teaching an example where the samarium wt.% is 0.30 and the cerium wt.% is 0.30 (Table 2; Fig. 2). Eskandarloo teaches the average crystallite size of the Sm-Ce-TiO2 catalyst is 19 nm and the mean particle size is 20 nm (Pg. 288, right col.). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges and values taught by Eskandarloo (Sm wt% 0.30-1.14; Ce wt.% 0.30-1.14; average crystallite size 19 nm; average particle diameter 20 nm) overlap or abut the claimed ranges (cerium and samarium each present from 0.1 to 2.5% by weight; average crystallite size 15 to 18 nm; average particle diameter 18 to 25 nm). Therefore, the ranges and values in Eskandarloo render obvious the claimed ranges.
It is noted the crystallite size taught by Eskandarloo is 19 nm while the claimed range is 15 to 18 nm. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Furthermore, the proportions are so close (19 nm vs 18 nm) that prima facie one skilled in the art would expect them to have the same or similar properties. See MPEP 2144.05.I.
Eskandarloo further teaches the particles have a spherical morphology (Pg. 288, right col.).
Regarding claim 5, Eskandarloo in view of Coromelci teaches the photocatalytic nanoparticle composition of claim 1.
Eskandarloo further teaches the Ce and Sm atoms are doped into the TiO2 crystal lattice (Pg. 288, right col.). Incorporating metals into a crystal lattice is understood to be equivalent to displacing metals in a crystal lattice.
Regarding claim 21, Eskandarloo in view of Coromelci teaches the photocatalytic nanoparticle composition of claim 1.
Eskandarloo teaches the material is doped with samarium and cerium, where the samarium content by weight percent (wt.%) ranges from 0.16-1.14 and the cerium content by (wt.%) ranges from 0.16-1.14, while teaching an example where the samarium wt.% is 0.16 and the cerium wt.% is 0.16 (Table 2; Fig. 2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Eskandarloo (0.16-1.14 wt.% Ce; 0.16-1.14 wt.% Sm) overlaps with the claimed ranges (0.1-0.2 wt.% Ce; 0.1-0.2 wt.% Sm). Therefore, the ranges in Eskandarloo render obvious the claimed ranges.
Regarding claim 22, Eskandarloo in view of Coromelci teaches the photocatalytic nanoparticle composition of claim 1.
The claim further requires the “the titanium dioxide nanoparticles have an indirect bandgap (Eidrec) from 3.12 to 3.14 electron volts (eV) calculated from a plot of a square root of a Kubelka-Munk function multiplied by an energy of a photon ([(F(R)hv)]1/2) versus an energy of a photon (hv),” to which Eskandarloo is silent.
Coromelci teaches activated mesoporous titania rare-earth metal doped materials where titania is doped with samarium or cerium (Abstract; Title). Coromelci teaches photocatalytic activity decreases in the following order: Sm-TiO2>Dy-TiO2>La–TiO2>Ce–TiO2 while also teaching the indirect bandgap of samples doped with 1 mol% of Ce3+ and Sm3+ precursors (Pg. 2, 2.2; Pg. 6, 3.5; Fig. 5-6). Coromelci teaches the doping of cerium and samarium leads to a lowering of the indirect band gap from pure TiO2 materials, where pure TiO2 displays an indirect band gap of 3.28 eV while doping with cerium provides an indirect band gap of 3.18 eV and doping with samarium provides an indirect band gap of 3.12 eV (Fig. 5; Pg. 5-6, 3.4. Optical Properties; Pg. 5-6, 3.5, Photocatalytic properties…). Coromelci teaches the indirect band gap is a plot of the square root of the function (F(R)hv)1/2 against the energy of a photon hv (Fig. 5; 2.3 Characterization Techniques). Examiner notes Coromelci does not explicitly state the function is a Kubelka-Munk function, however the functions being plotted in Coromelci ((F(R)hv)1/2 against hv) are identical to the claimed functions, meeting the limitation required by the claim.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Coromelci (samarium doping providing a band gap of 3.12 eV) overlaps with the claimed range (indirect band gap from 3.12 to 3.14 eV). Therefore, the range in Coromelci renders obvious the claimed range.
Advantageously, doping with cerium or samarium lowers the indirect band gap of pure titania which increases the oxygen vacancies on the surface to improve photocatalytic activity, which is useful in applications including photodegradation of dyes (Pg. 6, 3.5. Photocatalytic properties…). Further, Coromelci teaches it is advantageous to provide an indirect band gap below 3.2 eV in order to provide a competitive photocatalyst that is sensitive to light activation (Pg. 6, left col.).
Therefore, it would have been obvious to one of ordinary skill in the art to adjust the cerium and samarium doping in the titania material into the claimed range by varying the amount of cerium and samarium in order to obtain an indirect band gap at least below 3.20 eV, as directed by Coromelci. One of ordinary skill in the art would have had a reasonable expectation of success in performing this modification because Figure 5 of Coromelci shows the trend of doping titania with cerium and samarium that leads to a lowering of the indirect band gap. See MPEP 2144.05 II.
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide an indirect band gap of about 3.12 eV in the product of Eskandarloo in order to provide increased oxygen vacancies that improves the photocatalytic activity of the material, as taught by Coromelci.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Eskandarloo et al. (Ultrasonics Sonochemistry, 2015, 26, 281-292; cited in IDS dated 09/27/2023) in view of Coromelci et al. (Microporous and Mesoporous Materials 2022, 341, 112072) and further in view of Zhao et al. (J. Phys. D. Appl. Phys. 2008, 41, 085417), with evidentiary support for the rejection of independent claim 1 provided by Liu et al. (Int. J. Light. Elec. Optic. 2020, 206, 164342)..
Regarding claim 4, Eskandarloo in view of Coromelci teach the photocatalytic composition of claim 1.
The claim further requires “the titanium dioxide nanoparticles have a cell volume of 136 to 137 cubic angstroms” to which Eskandarloo and Coromelci are silent.
Zhao teaches a study on the effect of lanthanide doping, including Ce or Sm, on the electronic structure of anatase TiO2 that includes unit cell parameters for TiO2 of a = b = 3.7848 Å and c = 9.5124 Å (Abstract; Pg. 3, 3.1; Table 1). The unit cell volume can be calculated from the unit cell parameters by multiplying a*b*c, which provides a taught unit cell volume of 136.26 Å3 (3.7848 x 3.7848 x 9.5124). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges and values taught by Zhao (TiO2 unit cell volume of 136.26 Å3) overlaps the claimed range (cell volume 136 to 137 Å3). Therefore, the range in Zhao render obvious the claimed ranges.
Advantageously, the cell volume changes significantly improve the photocatalytic activity of the lanthanide-doped TiO2 materials (Pg. 4, left and right col.).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to utilize a TiO2 material with a unit cell volume of 136.26 Å3 in the photocatalyst of Eskandarloo in order to improve the photocatalytic activity, as taught by Zhao.
Conclusion
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.
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
