Prosecution Insights
Last updated: July 17, 2026
Application No. 18/570,430

INTEGRATED PROCESS AND CATALYSTS FOR MANUFACTURING HYDROGEN IODIDE FROM HYDROGEN AND IODINE

Non-Final OA §102§103§112§DP
Filed
Dec 14, 2023
Priority
Jul 16, 2021 — provisional 63/222,794 +1 more
Examiner
PIRO, NICHOLAS ANTHONY
Art Unit
1738
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Honeywell International Inc.
OA Round
1 (Non-Final)
44%
Grant Probability
Moderate
1-2
OA Rounds
9m
Est. Remaining
78%
With Interview

Examiner Intelligence

Grants 44% of resolved cases
44%
Career Allowance Rate
12 granted / 27 resolved
-20.6% vs TC avg
Strong +33% interview lift
Without
With
+33.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
60 currently pending
Career history
100
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
70.7%
+30.7% vs TC avg
§102
5.4%
-34.6% vs TC avg
§112
4.4%
-35.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 27 resolved cases

Office Action

§102 §103 §112 §DP
CTNF 18/570,430 CTNF 100717 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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. Election/Restrictions 08-25-01 AIA Applicant’s election without traverse of Group I, claims 1-9 and 15 , in the reply filed on 15 May 2026 is acknowledged. 08-06 AIA Claim s 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 May 2026 . Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 3-9 are is 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 3-5 recite the limitation "the step of activating" and “the activating step”. There is insufficient antecedent basis for these limitations in the claims. Claim 6-9 recite the limitation "the step of regenerating" and “the regenerating step”. There is insufficient antecedent basis for these limitations in the claims. Claim 7 further recites the limitation of “oxidizing the nickel iodide catalyst at least once”. However, it is unclear what is meant by this limitation. Nickel iodide is already in an oxidized state, and so it is unlikely that this step requires oxidizing the nickel iodide past an oxidation state of +2, and no such reaction is suggested in the specification. This step may instead refer to oxidizing a reduced form of the nickel catalyst, as suggested in [0008]: reducing the catalyst a first time; oxidizing the catalyst a first time. For the purposes of further examination, either interpretation may be used. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claims 1-5, 9, and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Yang et al. (US 2020/0331753), as evidenced by Choi et al. ( Int. J. Hydrogen Energy , 2014 , 39 , 3606-3616). Regarding claim 1 , Yang teaches a process for producing hydrogen iodide comprising providing a vapor-phase reactant stream comprising hydrogen and iodine and reacting the reactant stream in the presence of a nickel catalyst supported on a support to produce a stream comprising hydrogen iodide (abstract and [0084]). While Yang does not explicitly that the nickel catalyst is nickel iodide, the supported catalyst that is used in Yang (Ni/Al 2 O 3 ; [0084]) will generate nickel iodide during the reaction, as evidenced by Choi (p. 3613, ¶ 4 and Table 6). Regarding claim 2 , Yang teaches the process of claim 1, wherein the support is alumina ([0084]). Regarding claims 3-5 , Yang teaches the process of claim 1, wherein a nickel catalyst is subjected to iodine vapor ([0084]), which will generate nickel iodide, as evidenced by Choi, and can be considered an activating step. The iodine vapor is introduced in the presence of hydrogen vapor, and thus the reacting step will be occurring at least partially simultaneously with the reacting step and the reaction described is continuous, as it occurs under constant flow of reagents. Regarding claim 9 , Yang teaches the process of claim 1, where the reacting step occurs at a temperature from 370 °C to 370 °C and the ratio of hydrogen to iodine in the vapor-phase reactant stream is from 2.70 to 6.42 (Table 2). Regarding claim 15 , Yang teaches a process for producing hydrogen iodide comprising providing a vapor-phase reactant stream comprising hydrogen and iodine and reacting the reactant stream in the presence of catalyst to produce a stream comprising hydrogen iodide, wherein the catalyst is nickel (abstract and [0084]). Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2020/0331753) in view of Choi et al. ( Int. J. Hydrogen Energy , 2014 , 39 , 3606-3616) . Regarding claim 1 , Yang teaches a process for producing hydrogen iodide comprising providing a vapor-phase reactant stream comprising hydrogen and iodine and reacting the reactant stream in the presence of a nickel catalyst supported on a support to produce a stream comprising hydrogen iodide (abstract and [0084]). Yang teaches that the catalyst is a supported nickel catalyst (Ni/Al 2 O 3 ; [0084]), but not that the catalyst is nickel iodide supported on a support. However, Choi teaches a nickel catalyst for the decomposition of hydrogen iodide to hydrogen and iodine (abstract), and that under reaction conditions similar to those of Yang that the nickel catalyst in the system is converted to nickel iodide supported on the support (p. 3613, ¶ 4 and Table 6). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a catalyst of nickel iodide supported on a support in the method of Yang. One of ordinary skill in the art would have been motivated to do so because Choi teaches that the catalysts used by Yang is likely to be converted to such a substance under the reaction conditions, and would therefore also be a suitable catalyst. Regarding claim 2 , modified Yang teaches the process of claim 1, wherein the support is alumina ([0084]). Regarding claims 3-5 , modified Yang teaches the process of claim 1, wherein a nickel catalyst is subjected to iodine vapor ([0084]), which will generate nickel iodide, as taught by Choi, and can be considered an activating step. The iodine vapor is introduced in the presence of hydrogen vapor, and thus the reacting step will be occurring at least partially simultaneously with the reacting step and the reaction described is continuous, as it occurs under constant flow of reagents. Regarding claim 6 , modified Yang teaches the process of claim 1, and Choi further teaches that the nickel oxide catalyst should be regenerated (Section 4.2.2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a step of regenerating the catalyst in the method of Yang. One of ordinary skill in the art would have been motivated to do so because Choi teaches that catalysts of nickel and nickel iodide supported on alumina undergo partial structural rearrangement and incomplete desorption of HI which hinder catalytic activity (Section 6). Regarding claim 7 , modified Yang teaches the process of claim 1, and Choi teaches regenerating of the catalyst produces nickel (p. 3613, ¶ 4 and Table 6), which is a reduction. When this catalyst is resubjected to the reaction conditions it will react with iodine and undergo an oxidation to nickel iodide, therefore the regeneration step will comprise reducing the nickel iodide catalyst at least once and then oxidizing the reduced form of the catalyst at least once (see Claim Rejections- 35 USC § 112). Regarding claim 9 , modified Yang teaches the process of claim 1, where Yang teaches the reacting step occurs at a temperature from 320 °C to 370 °C and where the ratio of hydrogen to iodine in the vapor-phase reactant stream is from 2.70 to 6.42 (Table 2) . 07-22-aia AIA Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2020/0331753) in view of Choi et al. ( Int. J. Hydrogen Energy , 2014 , 39 , 3606-3616) , as applied to claim s 1 and 6 above, and further in view of Du et al. ( Int. J. Hydrogen Energy , 2018 , 43 , 20661-20670) . Regarding claim 8 , modified Yang teaches the process of claim 6, but does not teach the regenerating step reducing an average particle size of the nickel iodide catalyst to less than 500 Å. However, Du also teaches about the regeneration of Ni/alumina catalysts used in chemical industry (abstract) and further teaches that regeneration of such catalysts can lead to smaller nanoparticles with enhanced catalytic activity (compared with the fresh Ni/Al 2 O 3 catalyst, the sizes of Ni nanoparticles became even smaller in the regenerated ones. The regenerated Ni/Al 2 O 3 showed much enhanced catalytic activity; abstract). Du additionally teaches that the post regeneration particles have average size of ~300 Å (relatively uniform size about 30 nm; p. 20655, col. 2, ¶ 2). While Du is focused primarily on catalysts for CO methanation, one of ordinary skill in the art would recognize that the principal of smaller particles having increased surface area and increased catalytic activity would also apply to other heterogeneous catalysts, such as those of Yang and Choi. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement a catalyst regeneration process that results in catalysts particles of sizes of about 300 Å, as taught by Du, into the process of Yang. One of ordinary skill in the art would have been motivated to do so in order to increase the catalytic activity of the nickel catalyst particles in the process . 07-21-aia AIA Claim s 1-7, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kanbe et al (US 2010/0308261 A1) in view of Choi et al. ( Int. J. Hydrogen Energy , 2014 , 39 , 3606-3616), OpenStax (P. Flowers, et al. Chemistry , 2017 , Rice University), and Leoland (<URL: http://www.leonland.de/elements_by_price/en/list>, 9 October 2018) . Regarding claim 1 , Kanbe teaches a process for producing hydrogen iodide comprising providing a vapor-phase reactant stream comprising hydrogen and iodine and reacting the reactant stream in the presence of a catalyst supported on a support to produce a product stream comprising hydrogen iodide ([0257]). Kanbe does not teach that the catalyst is nickel iodide, and instead uses platinum or platinum group metals ([0257] and [0131]-[0132]). However, Choi teaches a nickel catalyst for the decomposition of hydrogen iodide to hydrogen and iodine (abstract), and that under the reaction conditions the nickel catalyst in the system is converted to nickel iodide supported on the support (p. 3613, ¶ 4 and Table 6). Choi further teaches that their system maintains the reaction at equilibrium (p. 3607, col. 2, ¶ 1), where both the forward and reverse reactions will be occurring. Furthermore, OpenStax teaches that a catalyst which accelerates the forward direction of an equilibrium reaction will also catalyze the reverse reaction (Note that a catalyst decreases the activation energy for both the forward and the reverse reactions and hence accelerates both the forward and the reverse reactions; p. 690, ¶ 1). Additionally, Leoland teaches that nickel is far less expensive than platinum and other platinum group elements (Pd, Ru, Os, Ir, Rh). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use in the method of Kanbe a catalyst comprised of nickel iodide supported on a support. One of ordinary skill in the art would have been motivated to do so because Choi and OpenStax teach that nickel iodide would be capable of catalyzing the reaction taught by Kanbe and because nickel is a less expensive than the platinum and platinum group elements used by Kanbe, as taught by Leoland . Regarding claim 2 , modified Kanbe teaches the process of claim 1, where Kanbe ([0254]) and Choi (abstract) each teach a support comprising alumina. Regarding claims 3-4 , modified Kanbe teaches the process of claim 1, where Kanbe teaches treating the supported catalyst with hydrogen and iodine vapor ([0257]), which will activate the nickel catalyst of Choi by converting it to nickel iodide, as supported by Choi (p. 3613, ¶ 4 and Table 6). Regarding claim 5 , modified Kanbe teaches the process of claim 3, and Kanbe further teaches introducing the iodine vapor is in the presence of hydrogen vapor ([0257]), and thus the reacting step will be occurring at least partially simultaneously with the activating step. Kanbe further teaches that the reaction is continuous ([0259]). Regarding claim 6 , modified Kanbe teaches the process of claim 1, and Choi further teaches that the nickel oxide catalyst should be regenerated (Section 4.2.2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a step of regenerating the catalyst in the method of Kanbe. One of ordinary skill in the art would have been motivated to do so because Choi teaches that their catalysts undergo partial structural rearrangement and incomplete desorption of HI which hinder catalytic activity (Section 6). Regarding claim 7 , modified Kanbe teaches the process of claim 1, and Choi teaches regenerating of the catalyst produces nickel (p. 3613, ¶ 4 and Table 6), which is a reduction. When this catalyst is resubjected to the reaction conditions it will react with iodine and undergo an oxidation to nickel iodide, therefore the regeneration step will comprise reducing the nickel iodide catalyst at least one and then oxidizing the reduced form of the catalyst at least once (see Claim Rejections- 35 USC § 112). Regarding claim 9 , modified Kanbe teaches the process of claim 1, where Kanbe teaches the reacting step occurring at 350 °C and the molar ratio of hydrogen to iodine in the vapor phase reactant stream being 450:75, or 6:1 (450 ml/min of hydrogen was supplied to the melted liquid iodine so as to obtain 75 ml/min of gaseous iodine; [0251], where Avogadro’s Law tells us that equal volumes of gas under equal temperature and pressure conditions will contain equal moles of gas, i.e. , a volume ratio of gases will be the same as a molar ratio). Regarding claim 15 , Kanbe teaches a process for producing hydrogen iodide comprising providing a vapor-phase reactant stream comprising hydrogen and iodine and reacting the reactant stream in the presence of a catalyst supported on a support to produce a product stream comprising hydrogen iodide ([0257]). Kanbe does not teach that the catalyst is one of those recited in the instant claim, and instead uses platinum or platinum group metals ([0257] and [0131]-[0132]). However, Choi teaches a nickel catalyst for the decomposition of hydrogen iodide to hydrogen and iodine (abstract). Choi further teaches that their system maintains the reaction at equilibrium (p. 3607, col. 2, ¶ 1), where both the forward and reverse reactions will be occurring. Furthermore, OpenStax teaches that a catalyst which accelerates the forward direction of an equilibrium reaction will also catalyze the reverse reaction (Note that a catalyst decreases the activation energy for both the forward and the reverse reactions and hence accelerates both the forward and the reverse reactions; p. 690, ¶ 1). Additionally, Leoland teaches that nickel is far less expensive than platinum and other platinum group elements (Pd, Ru, Os, Ir, Rh). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use in the method of Kanbe a catalyst comprised of nickel supported on a support. One of ordinary skill in the art would have been motivated to do so because Choi and OpenStax teach that nickel iodide would be capable of catalyzing the reaction taught by Kanbe and because nickel is a less expensive than the platinum and platinum group elements used by Kanbe, as taught by Leoland . 07-21-aia AIA Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kanbe et al (US 2010/0308261 A1) in view of Choi et al. ( Int. J. Hydrogen Energy , 2014 , 39 , 3606-3616), OpenStax (P. Flowers, et al. Chemistry , 2017 , Rice University), and Leoland (<URL: http://www.leonland.de/elements_by_price/en/list>, 9 October 2018), as applied to claims 1 and 6, and further in view of Du et al. (( Int. J. Hydrogen Energy , 2018 , 43 , 20661-20670) . Regarding claim 8 , modified Kanbe teaches the process of claim 6, but does not teach the regenerating step reducing an average particle size of the nickel iodide catalyst to less than 500 Å. However, Du also teaches about the regeneration of Ni/alumina catalysts used in chemical industry (abstract) and further teaches that regeneration of such catalysts can lead to smaller nanoparticles with enhanced catalytic activity (compared with the fresh Ni/Al 2 O 3 catalyst, the sizes of Ni nanoparticles became even smaller in the regenerated ones. The regenerated Ni/Al 2 O 3 showed much enhanced catalytic activity; abstract). Du additionally teaches that the post regeneration particles have average size of ~300 Å (relatively uniform size about 30 nm; p. 20655, col. 2, ¶ 2). While Du is focused primarily on catalysts for CO methanation, one of ordinary skill in the art would recognize that the principal of smaller particles having increased surface area and increased catalytic activity would also apply to other heterogeneous catalysts, such as those of Kanbe and Choi. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement a catalyst regeneration process that results in catalysts particles of sizes of about 300 Å, as taught by Du, into the process of Kanbe. One of ordinary skill in the art would have been motivated to do so in order to increase the catalytic activity of the nickel catalyst particles in the process . Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-22 of U.S. Patent No. 11,554,956 . Although the claims at issue are not identical, they are not patentably distinct from each other because independent claims 1 and 16 of the ‘956 patent recite anticipate the limitations of instant claim 15 . 08-36 AIA Claim s 1-7 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-22 of U.S. Patent No. 11,554,956 in view of Choi et al. ( Int. J. Hydrogen Energy , 2014 , 39 , 3606-3616) . Claim 1 of the ‘956 patent recites all the limitations of instant claim 1 except that the ‘956 patent lists nick and nickel oxide as potential catalysts but not nickel iodide. However, Choi teaches that nickel iodide is formed from nickel supported on alumina upon exposure to hydrogen iodide, hydrogen, and iodine, and that such nickel iodide can be regenerated to metallic nickel upon regeneration (p. 3613, ¶ 4 and Table 6). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the nickel of the ‘956 patent with nickel iodide, thereby arriving at the instantly claimed invention of claim 1. One of ordinary skill in the art would have been motivated to do so because Choi teaches that both materials can be interconverted in a related catalytic system and would therefore be expected to be functional equivalents under the catalytic conditions. The further limitations of instant claim 2 are suggested by claims 7-8 of the ‘956 patent and the further limitations of instant claim 9 are suggested by claims 4, 11, and 22 of the ‘956 patent. Regarding instant claims 3-5, the further limitations of these claims would be met by simply subjecting a nickel catalyst supported on alumina to the reaction conditions of iodide vapor, conditions which would be obvious in view of claims 1 and 8 of the ‘956 patent. Regarding instant claim 6 and 7, the step of regenerating the nickel iodide catalyst is taught by Choi (degradation of the adsorbent catalyst is due to the thermal structure rearrangement and partial incomplete desorption of HI and iodine. The optimal regeneration temperature is 400°C, ensuring a minimal decline in catalytic ability; Section 6), and that during the regeneration nickel iodide is reduced to nickel which will then be re-oxidizing to nickel iodide when subjected to reaction conditions (p. 3613, ¶ 4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate such a regeneration step into the method of the ‘956 patent. One of ordinary skill in the art would have been motivated to do so in order to recover lost catalytic activity, as taught by Choi . 08-36 AIA Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-22 of U.S. Patent No. 11,554,956 in view of Choi et al. ( Int. J. Hydrogen Energy , 2014 , 39 , 3606-3616), as applied to claim 6 above, and further in view of Du et al. (( Int. J. Hydrogen Energy , 2018 , 43 , 20661-20670) . Regarding instant claim 8, Choi teaches modifying the claims of the ‘956 patent to arrive at the process of instant 6, but does not teach the regenerating step reducing an average particle size of the nickel iodide catalyst to less than 500 Å. However, Du also teaches about the regeneration of Ni/alumina catalysts used in chemical industry (abstract) and further teaches that regeneration of such catalysts can lead to smaller nanoparticles with enhanced catalytic activity (compared with the fresh Ni/Al 2 O 3 catalyst, the sizes of Ni nanoparticles became even smaller in the regenerated ones. The regenerated Ni/Al 2 O 3 showed much enhanced catalytic activity; abstract). Du additionally teaches that the post regeneration particles have average size of ~300 Å (relatively uniform size about 30 nm; p. 20655, col. 2, ¶ 2). While Du is focused primarily on catalysts for CO methanation, one of ordinary skill in the art would recognize that the principal of smaller particles having increased surface area and increased catalytic activity would also apply to other heterogeneous catalysts, such as those of the ‘956 patent and Choi. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement a catalyst regeneration process that results in catalysts particles of sizes of about 300 Å, as taught by Du, into the process of the ‘956 patent. One of ordinary skill in the art would have been motivated to do so in order to increase the catalytic activity of the nickel catalyst particles in the process. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm. 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 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. /NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738 /PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735 Application/Control Number: 18/570,430 Page 2 Art Unit: 1738 Application/Control Number: 18/570,430 Page 3 Art Unit: 1738 Application/Control Number: 18/570,430 Page 4 Art Unit: 1738 Application/Control Number: 18/570,430 Page 5 Art Unit: 1738 Application/Control Number: 18/570,430 Page 7 Art Unit: 1738 Application/Control Number: 18/570,430 Page 8 Art Unit: 1738 Application/Control Number: 18/570,430 Page 9 Art Unit: 1738 Application/Control Number: 18/570,430 Page 10 Art Unit: 1738 Application/Control Number: 18/570,430 Page 11 Art Unit: 1738 Application/Control Number: 18/570,430 Page 12 Art Unit: 1738 Application/Control Number: 18/570,430 Page 13 Art Unit: 1738 Application/Control Number: 18/570,430 Page 14 Art Unit: 1738 Application/Control Number: 18/570,430 Page 15 Art Unit: 1738 Application/Control Number: 18/570,430 Page 16 Art Unit: 1738 Application/Control Number: 18/570,430 Page 17 Art Unit: 1738 Application/Control Number: 18/570,430 Page 19 Art Unit: 1738 Application/Control Number: 18/570,430 Page 20 Art Unit: 1738
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Prosecution Timeline

Dec 14, 2023
Application Filed
Jun 17, 2026
Non-Final Rejection mailed — §102, §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
44%
Grant Probability
78%
With Interview (+33.3%)
3y 4m (~9m remaining)
Median Time to Grant
Low
PTA Risk
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