DETAILED ACTION
Claims 1-16 were subjected to restriction requirement mailed on 05/07/2026.
Applicants filed a response, and elected Group I, claims 1-7 and 17, and withdrew claims 8-16, with traverse on 08/24/2026.
Claims 1-17 are pending, and claims 8-16 are withdrawn after consideration.
Claims 1-7 and 17 are rejected.
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 .
Double Patenting
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.
Claims 1-2 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 19382542 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The present claims require a calcined steam reforming catalyst comprising:75-90 wt% of a catalyst support; and 10-25 wt% of nickel oxide and potassium on the basis of calcined catalyst, in which the content of potassium is 2-4 wt% on the basis of calcined catalyst; and in which wherein the catalyst support comprises at least 35 wt% hibonite (CaAl12O19) and 10-35 wt% potassium beta-alumina upon sintering.
The copending claims meet all limitations of the present claims. Specifically, the co-pending application recites “A steam reforming catalyst comprising: 75-90 wt% of a catalyst support; and 10-25 wt% of an active material, the active material being catalytically active in steam reforming, wherein the catalyst support comprises at least 35 wt% hibonite and 10-35 wt% potassium beta-alumina upon sintering (copending, claim 12), which overlap the ranges of the presently claimed.
Further, the copending recites wherein the catalyst support has a molar ratio of Ca:Al:Ti:K is in the range of 1:(8-20):(0.01-0.5):(0.05-1.0) (copending, claim 12), therefore the copending would have a content of K that overlaps the range of the presently claimed.
Regarding claims 5-7, although there is no disclosure that the test method is conformity with measured ex-situ by X-ray powder Diffraction (XRPD) technique using Cu Ka radiation and Bragg-Brentano geometry, PANalytical Xpert Pro; or the quantitative phase analysis being performed by Rietveld refinement using TOPAS, version 4.2, software, given that the copending teaches amount of crystalline phases as the presently claimed and absent evidence criticality how the quantitative analysis of crystalline phrases is measured, it is an examiner's position that amount of crystalline phases taught by copending to meet the claim limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-7 and 17 in the reply filed on 08/24/2026 is acknowledged. This is not found persuasive because the reason set forth below.
With respect to Applicant’s traversal of the restriction requirement, Applicant’s remarks are based on the presently amended claims having a technical feature not taught by the references cited in the restriction requirement set forth in the previous Office action mailed 05/07/2026. However, the restriction requirement was properly made with respect to the claims presented at the time of the previous Office action (i.e., the claims as originally presented) and Applicant has not presented any arguments directed to the original claims. Also, even with respect to the newly amended claims filed 08/24/2026, the previously cited references still show that the amended claims do not make a contribution over the prior art (i.e., that Groups I to VII still lack the same or corresponding special technical features) because the groups do not make a contribution over Jacobsen as set forth below.
Jacobsen teaches a steam reforming catalyst based on supported nickel (i.e., nickel on a supported material) (Jacobsen, page 3, 1st paragraph); the nickel is present as nickel oxide (Jacobsen, page 3, 2nd paragraph);
the supported nickel catalyst precursor is decomposed to form a supported nickel catalyst, suitably at temperatures between 350-500˚C (reading upon a calcined steam reforming catalyst) (Jacobsen, page 6, 2nd paragraph);
the supported material is sintered (Jacobsen, page 8, 1st paragraph);
the support material comprises 8 wt% or more potassium β-alumina (Jacobsen, page 10, 3rd paragraph), which overlap the range of the presently claimed;
the supported nickel catalyst suitably comprises 5-20 wt% nickel monoxide, which corresponds to that the supported nickel catalyst comprises 80-95 wt% of the support material (Jacobson, page 13, 3rd paragraph), which overlap the ranges of the presently claimed.
Jacobsen further teaches the finished support material suitably comprises 0.5-2.5 wt% potassium oxide (Jacobsen, page 11, 2nd paragraph), given the molecular/atomic mass of K2O of 94 g/mol and K of 39 g/mol, it can be derived that the finished support material suitably comprises 0.415-2.074 wt% potassium (i.e., 0.5*39*2/94=0.415; 2.5*39*2/94=2.074).
Further given that the finish the supported nickel catalyst comprises 80-95 wt% of the support material, it can be further derived that the finish the supported nickel catalyst comprises 0.332-1.970 wt% potassium (i.e., 0.415*80%=0.332; 2.074*95%=1.970).
The only deficiency of Jacobsen is that Jacobsen discloses the use of 0.332-1.970 wt% potassium in the finished supported nickel catalyst, while the present claims require 2-4 wt% on the basis of calcined catalyst.
It is apparent, however, that the instantly claimed amount of 2-4 wt% on the basis of calcined catalyst. and that taught by Jacobsen are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 0.332-1.970 wt% potassium in the finished supported nickel catalyst disclosed by Jacobsen and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of potassium on the basis of calcined catalyst, it therefore would have been obvious to one of ordinary skill in the art that the amount of potassium on the basis of calcined catalyst disclosed in the present claims is but an obvious variant of the amounts disclosed in Jacobsen, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Jacobsen further teaches the support material suitably comprise 0-60 wt% hibonite (Jocobsen, page 11, 3rd paragraph), which overlaps the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Therefore, since the limitations fail to define a contribution over Jacobsen, they failed to
constitute a special technical feature and hence there is lack of unity between the cited claims.
Applicants primarily argue:
“Accordingly, the common technical feature now shared by the claims is not merely the presence of nickel oxide and potassium, but the specific catalyst defined in claim 1. Jacobsen neither discloses nor recognizes this specific catalyst composition or the significance of the claimed hibonite-rich support. The catalyst of claim 1 therefore represents a contribution over Jacobsen and constitutes a "special technical feature.”
Remarks, p. 2
The examiner respectively traverses as follows:
Jacobsen meets the specific catalyst composition of the amended claim 1, as set forth above.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/24/2026.
Claim Objections
Claim1-7 and 17 are objected to because of the following informalities:
Claim 1, line 3, it is suggested to amend “calcined catalyst” to “the calcined steam reforming catalyst” to be consistent with the phrase “A calcined stream reforming catalyst” recited in claim 1, line 1.
Claim 1, line 4, it is suggested to amend “calcined catalyst” to “the calcined steam reforming catalyst” to be consistent with the phrase “A calcined stream reforming catalyst” recited in claim 1, line 1.
Each line 1 of claims 2-7 and 17, it is suggested to amend “The steam reforming catalyst” to “The calcined steam reforming” to be consistent with the phrase “A calcined steam reforming catalyst” in claim 1, line 1.
Claim 3, lines 2-3, recites a phrase “less than a total of 40 wt% of the alumina crystal structures grossite and/or alpha-alumina upon sintering”. The examiner interprets that the phrase refers to a total amount of the alumina crystal structures grossite and alpha-alumina upon sintering is less than a total of 40 wt%. it is suggested to amend the phrase to “less than a total of 40 wt% of the alumina crystal structures grossite and alpha-alumina combined upon sintering”.
Claim 4, line 2, it is suggested to amend “from 40-90 wt% hibonite (CaAl12O19)” to “40-90 wt% hibonite (CaAl12O19)”.
Claim 4, lines 2-3, it is suggested to amend “from 0-30 wt% grossite or alpha-alumina and from 10-30 wt% potassium beta-alumina” to “0-30 wt% grossite and alpha-alumina combined and 10-30 wt% potassium beta-alumina upon sintering”.
Claim 5, line 2, it is suggested to amend “the catalyst” to “the calcined steam reforming catalyst” to be consistent with the phrase “A calcined stream reforming catalyst” recited in claim 1, line 1.
Claim 5, line 4, it is suggested to amend “geometry (PANalytical Xpert Pro)” to “geometry, using PANalytical Xpert Pro” to ensure clarity.
Claim 6, line 2, it is suggested to amend “quantitative phase analysis” to “quantitative analysis” to be consistent with the phrase “quantitative analysis” of claim 5, line 2.
Claim 6, lines 2-3, it is suggested to amend “TOPAS (version 4.2)” to “TOPAS, version 4.2, software”.
Claim 7, line 3, it is suggested to amend “the analysis” to “the quantitative analysis” to be consistent with the phrase “quantitative analysis” of claim 5, line 2.
Claim 7, line 3, it is suggested to amend “K-β-alumina” to “potassium beta-alumina” to be consistent with the phrase “potassium beta-alumina” in claim 1, line 6.
Claim 7, line 4, it is suggested to amend “phases” to “all known potassium beta-alumina”.
Claim 7, line 5, it is suggested to amend “K-β-alumina” to “potassium beta-alumina” to be consistent with the phrase “potassium beta-alumina” in claim 1, line 6.
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.
Claim 7 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.
Regarding claim 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The examiner interprets that “KAl11O17, K2Al11O17.5, K1.62Mg0.62Al10.38O17, K2Mg4Al30O50” are not required of claim 7.
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.
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.
Claim(s) 1-7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jacobsen et al., WO 2014/048740 A1 (Jacobsen).
Regarding claims 1 and 17, Jacobsen teaches a steam reforming catalyst based on supported nickel (i.e., nickel on a supported material) (Jacobsen, page 3, 1st paragraph); the nickel is present as nickel oxide (Jacobsen, page 3, 2nd paragraph);
the supported nickel catalyst precursor is decomposed to form a supported nickel catalyst, suitably at temperatures between 350-500˚C (reading upon a calcined steam reforming catalyst) (Jacobsen, page 6, 2nd paragraph);
the supported material is sintered (Jacobsen, page 8, 1st paragraph);
the support material comprises 8 wt% or more potassium β-alumina (Jacobsen, page 10, 3rd paragraph), which overlap the range of the presently claimed;
the supported nickel catalyst suitably comprises 5-20 wt% nickel monoxide, which corresponds to that the supported nickel catalyst comprises 80-95 wt% of the support material (Jacobson, page 13, 3rd paragraph), which overlap the ranges of the presently claimed.
Jacobsen further teaches the finished support material suitably comprises 0.5-2.5 wt% potassium oxide (Jacobsen, page 11, 2nd paragraph), given the molecular/atomic mass of K2O of 94 g/mol and K of 39 g/mol, it can be derived that the finished support material suitably comprises 0.415-2.074 wt% potassium (i.e., 0.5*39*2/94=0.415; 2.5*39*2/94=2.074).
Further given that the finish the supported nickel catalyst comprises 80-95 wt% of the support material, it can be further derived that the finish the supported nickel catalyst comprises 0.332-1.970 wt% potassium (i.e., 0.415*80%=0.332; 2.074*95%=1.970).
The only deficiency of Jacobsen is that Jacobsen disclose the use of 0.332-1.970 wt% potassium in the finished supported nickel catalyst, while the present claims require 2-4 wt% on the basis of calcined catalyst.
It is apparent, however, that the instantly claimed amount of 2-4 wt% on the basis of calcined catalyst. and that taught by Jacobsen are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 0.332-1.970 wt% potassium in the finished supported nickel catalyst disclosed by Jacobsen and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of potassium on the basis of calcined catalyst, it therefore would have been obvious to one of ordinary skill in the art that the amount of potassium on the basis of calcined catalyst disclosed in the present claims is but an obvious variant of the amounts disclosed in Jacobsen, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Jacobsen further teaches the support material suitably comprise 0-60 wt% hibonite, 0-60 wt% grossite, (Jocobsen, page 11, 3rd paragraph), which overlaps the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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 2, as applied to claim 1, given that Jacobsen teaches the support material comprises 8 wt% or more potassium β-alumina (Jacobsen, page 10, 3rd paragraph), the support material suitably comprise 0-60 wt% hibonite (Jocobsen, page 11, 3rd paragraph), therefore, the support material (i.e., sintered) could have a total amount of 8-68 wt% of hibonite and potassium β-alumina, which overlap the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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 3, as applied to claim 1, Jacobsen further teaches the support material comprises 0-5 wt% α-alumina (Jacobsen, page 11, 3rd paragraph).
Given that Jacobsen teaches the support materials comprises 0-60 wt% grossite and/or hibonite, therefore the grossite of Jacobsen could be 0-60 wt.%, therefore, grossite and α-alumina corresponds to 0-65 wt% of the support material, which overlap the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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 4, as applied to claim 1, given that Jacobsen teaches the support materials comprises 0-60 wt% grossite and/or hibonite and 0-5 wt% α-alumina, therefore, Jacobsen teaches the support materials comprises 0-60 wt% hibonite, a total amount of 5-65 wt% grossite and α-alumina, which overlap the ranges of the presently claimed.
Furthermore, Jacobsen teaches the support material comprises 8 wt% or more potassium β-alumina, which overlap the ranges of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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 claims 5-7, as applied to claim 1, Jacobsen teaches the quantitative amount of phases present is determined through a Rietveld refinement analysis of the XRD (i.e., x-ray diffraction) diffractogram using the commercial program HighScore Plus from PANalytical (Jacobsen, page 11, 3rd paragraph).
Although there is no disclosure that the test method is conformity with measured ex-situ by X-ray powder Diffraction (XRPD) technique using Cu Ka radiation and Bragg-Brentano geometry, PANalytical Xpert Pro; or the quantitative phase analysis being performed by Rietveld refinement using TOPAS, version 4.2, software, given that the Jacobsen discloses amount of crystalline phases as the presently claimed and absent evidence criticality how the quantitative analysis of crystalline phrases is measured, it is an examiner's position that amount of crystalline phases disclosed by Jacobsen to meet the claim limitation.
Further regarding claim 7, as applied to claim 5, given that Jacobsen teaches potassium β-alumina, therefore, it is obvious to a person of ordinary skill in that art that all known potassium β-alumina phases would be reported at potassium β-alumina.
Given that Jacobsen teaches an identical or substantially identical quantitative analysis method, i.e., a Rietveld refinement analysis of the XRD (i.e., x-ray diffraction) diffractogram using the commercial program HighScore Plus from PANalytical, that that of the present invention (claims 5-6), it is clear that the quantitative analysis method of Jacobsen would also result in information on lattice parameter in addition to relative amounts of phases present.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights