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 .
Election/Restrictions
Applicant's election with traverse of claims 1-3 and 10-12 in the reply filed on 25 August 2026 is acknowledged. The traversal is on the ground(s) that
1) Yang (D1) and Liu (D2) disclose catalysts comprising alumina and calcium oxide, whereas claim 1 does not;
2) The content of manganese oxide of claim 1 is significantly higher than in D1;
3) Claim 1 requires both manganese oxide and rare earth metal oxide, D1 contains only manganese oxide and D2 contains only rare earth oxide.
This is not found persuasive because
1) The claims include comprising type open language such that other components other than those provided in claim 1 may be present in the catalyst;
2) The range taught by Yang overlaps the claimed range such that the range taught by Yang obviates the claimed range. See MPEP 2144.05 (I);
3) 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).
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-9 and 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected groups II and III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 25 August 2026.
Response to Amendment
The Amendment filed 25 August 2026 has been entered. Claims 1, 4, and 6 are amended; claim 12 is cancelled. Accordingly, claims 1-11 and 13-17 remain pending in the application with claims 1-3 and 10-11 considered in this Office Action.
Information Disclosure Statement
The Information Disclosure Statements filed 12/19/2023 and 04/21/2026 have been considered.
Claim Objections
Claims 1-3 and 10-11 are objected to because of the following informalities:
Claim 1, lines 4-5, and Claim 3, lines 3-4 "gFe" should read "g Fe" with a space between “g” and “Fe” for clarity.
Claim 2, line 2, and Claim 10, line 2, “Fe3+/2Fe2+” should read “Fe3+/2Fe2+”.
Claim 11, line 2, “Fe3O4” should read “Fe3O4”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-3 and 10-11 are 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.
Claim 1, lines 1-2, recite “A molten iron catalyst…comprising iron oxides and cocatalysts”. It is unclear what the cocatalysts are, as “cocatalyst” does not appear in the claim following this recitation. It is unclear if the potassium oxide, strontium oxide, manganese oxide, and rare earth metal oxides are the cocatalysts. This limitation is interpreted as requiring the potassium oxide, strontium oxide, manganese oxide, and rare earth metal oxides are the cocatalysts.
Claims 2-3 and 10-11 are indefinite as they depend from an indefinite base and fail to cure the deficiencies of the base claim.
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.
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 1-3 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 1704161) in view of Liu (CN 101757925), as evidenced by Celsa (“Iron Oxide”).
Regarding Claim 1, Yang discloses a molten iron catalyst comprising alumina 0.1-3.6 g/100 g Fe, potassium oxide 0.1-1.4 g/100 g Fe, calcium oxide 0.1-2.5 g/100 g Fe, and other oxides 0-5.0 g/100 g Fe [0008]. Yang further discloses the other oxides are selected from one or more of the oxides of manganese, strontium, etc. [0009]. Yang discloses the catalyst includes a co-catalyst with potassium oxide and other oxides [0013], such that the molten iron catalyst of Yang comprises cocatalysts. Yang further discloses the iron in the molten iron catalyst comes from magnetite, steel slag, or iron oxide scale [0019], such that the molten iron catalyst of Yang comprises iron oxides. Yang further discloses the molten iron catalyst is co-catalyst mixed with waste steel slag and/or iron oxide scale, such that the rest of the mass content is iron oxides.
Regarding the potassium oxide, it appears that 0.1-1.4 g/100 g Fe taught by Yang overlaps the claimed range of 0.1-1 g/100 g Fe such that the range taught by Yang obviates the claimed range. See MPEP 2144.05 (I).
Regarding the strontium oxide and manganese oxide, it appears that 0-5.0 g other oxides/100 g Fe taught by Yang overlaps the claimed ranges of strontium oxide 0.1-1 g/100 g Fe and manganese oxide 1-20 g/100 g Fe such that the range taught by Yang obviates the claimed range. See MPEP 2144.05 (I).
Yang is silent to incorporating a rare earth metal oxide.
Liu discloses a molten iron catalyst comprising iron oxide and the mass content of: alumina 0.1-5%, potassium oxide 0.1-6%, calcium oxide 0.1-4% and other oxides 0.01-8.5% ([0012]-[0016]). Liu further discloses the other oxides are one or more of cerium oxide, lanthanum oxide, and samarium oxide [0019], which are rare earth metal oxides. Liu further discloses the cerium, lanthanum, and samarium co-catalysts significantly improve the selectivity of low-carbon hydrocarbons and the alkene-alkane ratio, while inhibiting methane formation [0079].
Regarding the rare earth metal oxide, it appears that 0.01-8.5% taught by Liu, in the alternative, overlaps the claimed range of 1-10 g/100 g Fe such that the range taught by Liu obviates the claimed range. See MPEP 2144.05 (I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yang to incorporate the teachings of Liu to incorporate a rare earth metal oxide in order to significantly improve the selectivity of low-carbon hydrocarbons and the alkene-alkane ratio, while inhibiting methane formation, as recognized by Liu [0079].
Yang further discloses the molten iron catalyst is for Fischer-Tropsch synthesis [0006], which produces olefins [0020] from synthesis gas [0017].
With regard to the language of the preamble ‘for producing high-carbon α-olefins from synthesis gas’, it is noted that this phrase is the intended use of the claimed composition. MPEP 2111.02.II. states that ‘if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction’. Accordingly, ‘producing high-carbon α-olefins from synthesis gas’ is not a claim limitation (Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997)). In the present case, the molten iron catalyst taught by Yang in view of Liu are commensurately capable of providing for such intended uses in as much as recited and required herein.
Regarding Claim 2, Yang discloses the molar ratio of ferric iron to ferrous iron (Fe3+/2Fe2+) in the steel slag and/or iron oxide scale is 0.3-1.6 [0012], which overlaps the claimed range of 0.5-1.2 such that the range taught by Yang obviates the claimed range. See MPEP 2144.05 (I).
Regarding Claim 3, Yang discloses a molten iron catalyst comprising alumina 0.1-3.6 g/100 g Fe, potassium oxide 0.1-1.4 g/100 g Fe, calcium oxide 0.1-2.5 g/100 g Fe, and other oxides 0-5.0 g/100 g Fe [0008]. Yang further discloses the other oxides are selected from one or more of the oxides of manganese, strontium, etc. [0009].
Regarding the potassium oxide, it appears that 0.1-1.4 g/100 g Fe taught by Yang overlaps the claimed range of 0.25-0.8 g/100 g Fe such that the range taught by Yang obviates the claimed range. See MPEP 2144.05 (I).
Regarding the strontium oxide and manganese oxide, it appears that 0-5.0 g other oxides/100 g Fe taught by Yang overlaps the claimed ranges of strontium oxide 0.25-0.8 g/100 g Fe and manganese oxide 2-15 g/100 g Fe such that the range taught by Yang obviates the claimed range. See MPEP 2144.05 (I).
Yang is silent to incorporating a rare earth metal oxide.
Liu discloses a molten iron catalyst comprising iron oxide and the mass content of: alumina 0.1-5%, potassium oxide 0.1-6%, calcium oxide 0.1-4% and other oxides 0.01-8.5% ([0012]-[0016]). Liu further discloses the other oxides are one or more of cerium oxide, lanthanum oxide, and samarium oxide [0019], which are rare earth metal oxides. Liu further discloses the cerium, lanthanum, and samarium co-catalysts significantly improve the selectivity of low-carbon hydrocarbons and the alkene-alkane ratio, while inhibiting methane formation [0079].
Regarding the rare earth metal oxide, it appears that 0.01-8.5% taught by Liu, in the alternative, overlaps the claimed range of 2-6 g/100 g Fe such that the range taught by Liu obviates the claimed range. See MPEP 2144.05 (I).
Regarding Claim 10, Yang discloses the molar ratio of ferric iron to ferrous iron (Fe3+/2Fe2+) in the steel slag and/or iron oxide scale is 0.3-1.6 [0012], which overlaps the claimed range of 0.4-1.5 such that the range taught by Yang obviates the claimed range. See MPEP 2144.05 (I).
Regarding Claim 11, Yang discloses the iron in the molten iron catalyst comes from magnetite, steel slag, and/or iron oxide scale ([0012], [0019]), such that the iron oxides of the molten iron catalyst of Yang comprise magnetite Fe3O4.
Yang is silent to the molten iron catalyst comprising wustite FeO.
Celsa, however, discloses iron oxide scale is mainly composed of FeO (wustite), Fe2O3 (hematite), and Fe3O4 (magnetite) (pg. 1, par 1). Therefore, the iron oxides of Yang necessarily comprise a mixture of magnetite Fe3O4 and wustite FeO.
Conclusion
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/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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