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 .
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.
Claim(s) 1, 4-5, 8-9, and 12 is/are rejected under 35 U.S.C. 103 as obvious over WO 2007/087725 in view of DE 102014226675.
Regarding claim 1 and 8-9, WO ‘725 teaches a process that includes the oxidation of methane oxidation by a catalyst for removing the methane from an exhaust stream (Abstract), which is a process of reforming the methane to H2O and CO2 (Paragraph [0027]). The catalyst is operated at a temperature of about 700 to below 800 C (Paragraph [0053]). The methane oxidation catalyst includes a combination of cerium and zirconium (Claim 44), which is considered doped with zirconium under the broadest reasonable interpretation of the claims. The methane and catalyst may be in contact for about 50 seconds (Paragraph [0052]).
WO’ 725 does not expressly state that the treated stream contains less than 5% H2 and CO. However, “[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.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The stream of WO ‘725 is substantially similar because the process of WO ‘725 seeks to oxidize methane, which would convert it to H2O and CO2. WO ‘725 does not teach partial oxidation or steam reforming.
WO ‘725 does not expressly state that the oxide is doped with one ore more of strontium, lithium, gadolinium, samarium, praseodymium, or hafnium.
DE ‘675 teaches a methane oxidation catalyst (Title) analogous to the catalyst of WO ‘725. DE ‘675 further teaches that the catalyst may include praseodymium in combination of with cerium and/or zirconia (Claim 11).
At the time of invention, it would have been obvious to include praseodymium in the oxygen storage material of WO ‘725 in view of DE ‘675. The rationale for doing so would have been a simple substitution for a know oxygen storage material used in a similar process that you have provided predictable results. See MPEP 2143.
Regarding claims 4-5, WO ‘725 teaches the catalyst is operated at a temperature of about 700 to below 800 C (Paragraph [0053]), which overlaps the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 12, WO’ 725 does not expressly state that the treated stream contains less than 1% H2 and CO. However, “[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.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The stream of WO ‘725 is substantially similar because the process of WO ‘725 seeks to oxidize methane, which would convert it to H2O and CO2. WO ‘725 does not teach partial oxidation or steam reforming.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2007/087725 in view of DE 102014226675 as applied to claim 1 above, and further in view of King Fahd US 2016/0340187.
Regarding Claim 10, WO ‘725 in view of ‘675 discloses the method of claim 1, but fails to explicitly disclose wherein the energy to generate a temperature operating condition is provided by a parabolic trough. However, King is in the field of methane reforming reactors (King, Abstract), and teaches wherein the energy to generate a temperature operating condition is provided by a parabolic trough (King, Para. [0019] Fig. 3 the system includes solar parabolic trough 38 that can be used to heat the heating fluid to a working temperature ... the heating fluid provides the working temperature of reactor 10). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify WO ‘725 to include wherein the energy to generate a temperature operating condition is provided by a parabolic trough as taught by King. The motivation would have been to provide an efficient and cost effective means of generating temperatures required for a methane reforming reaction (King, Para. [0020)).
Claim(s) 13-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2007/087725 in view of King Fahd US 2016/0340187.
Regarding Claim 13, 16, and 19-20, WO ‘725 teaches a process that includes the oxidation of methane oxidation by a catalyst for removing the methane from an exhaust stream (Abstract), which is a process of reforming the methane to H2O and CO2 (Paragraph [0027]). The catalyst is operated at a temperature of about 700 to below 800 C (Paragraph [0053]). The methane oxidation catalyst includes a combination of alumina (Claim 36) and zirconium (Claim 44), which is considered doped with zirconium under the broadest reasonable interpretation of the claims. The methane and catalyst may be in contact for about 50 seconds (Paragraph [0052]).
WO ‘725 fails to explicitly disclose the system comprising a parabolic trough, wherein the parabolic trough is in electrical or thermal communication with the reforming reactor, wherein the energy derived from the parabolic trough is used to adjust the operating conditions in the reforming reactor. However, King is in the field of methane reforming reactors (King, Abstract), and teaches the system comprising a parabolic trough (Para. [0019] Fig. 3 the system includes solar parabolic trough 38 can be used to heat the heating fluid to a working temperature), wherein the parabolic trough is in electrical or thermal communication with the reforming reactor (King, Para. [0019] Fig. 3 the system includes solar parabolic trough 38 can be used to heat the heating fluid to a working temperature, as shown in Fig. 3 the parabolic through is in thermal communication with the reactor 10), wherein the energy derived from the parabolic trough is used to adjust the operating conditions in the reforming reactor (King, Para. [0019] Fig. 3 the system includes solar parabolic trough 38 can be used to heat the heating fluid to a working temperature ... the heating fluid provides the working temperature of reactor 10). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify WO ‘725 to include the system comprising a parabolic trough, wherein the parabolic trough is in electrical or thermal communication with the reforming reactor, wherein the energy derived from the parabolic trough is used to adjust the operating conditions in the reforming reactor as taught by King. The motivation would have been to provide an efficient and cost effective means of generating temperatures required for a methane reforming reaction (King, Para. (0020)).
Regarding claims 14-15, WO ‘725 teaches the catalyst is operated at a temperature of about 700 to below 800 C (Paragraph [0053]), which overlaps the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 17 and 18, WO’ 725 does not expressly state that the treated stream contains less than 1% or 5% H2 and CO. However, “[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.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The stream of WO ‘725 is substantially similar because the process of WO ‘725 seeks to oxidize methane, which would convert it to H2O and CO2. WO ‘725 does not teach partial oxidation or steam reforming.
Regarding claim 21, WO ‘725 teaches that the temperature may be below 600 deg. C (Paragraph [0053]), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 22, WO ‘725 the process may may occur for 14.5 minutes (Paragraph [0026]).
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach or suggest the amended features of claims 1 and 13. In response, the rejections above have been amended to address the claim amendments of 10/31/2025.
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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/JAMES A FIORITO/Primary Examiner, Art Unit 1731