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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.1 7(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/19/2026 has been entered.
Status of Claims
No claim has been amended. Claims 1-55, 57, 60, 72-74, 77, 79, 81 and 83-173 have been cancelled. No new claim has been added. Claims 56, 58-59, 61-71, 75-76, 78, 80, 82 and 174 are pending. Claims 56, 58-59, 61-71, 75-76, 78, 80, 82 and 174 are examined herein.
Response to Amendments
The Amendments to the Claims filed 0/19/2026 have been entered. The previous 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections of claim 91 is considered moot since claim 91 has been cancelled.
Response to Arguments
Applicants argue that claims 56, 58-59, 61-71, 75-76, 78, 80, 82 and 174 of the instant invention are not obvious over the cited prior arts, Littlewood et al. (US 2023/0069964 A1), in view of Tsiotsias et al. (The Role of Alkali and Alkaline Earth Metals in the CO2 Methanation Reaction and the Combined Capture and Methanation of CO2, Catalysts 2020, 10, 812; doi:10.3390/catal10070812).
Applicant argues that: (i) Littlewood discloses two distinct catalysts with distinct functions: (1) Reforming/RWGS Catalysts (details of which are presented, e.g., in paragraphs [0037]-[0063]) and (2) LPG Synthesis Catalyst Systems (details of which are presented, e.g., in paras [0064]-[0063]). These catalysts are disclosed in different embodiments, are made up of different components, have different selectivities, and are disclosed as contacted with different feed streams to result in the desired product; (ii) In alleging that Littlewood teaches the claimed catalyst, the Examiner inappropriately combines components from these two different types of catalysts: a support material from the RWGS catalyst, and one or more metals selected from copper, zinc and aluminum from the LPG catalyst. Combining select metals from the LPG catalyst with a particular support of the RWGS catalyst is not taught or suggested by Littlewood, and it is only by applying impermissible hindsight based on knowledge of the claimed catalysts, that such a combination would have been made. See Remarks, pages 6-13, filed 03/19/2025.
In response, the examiner respectfully disagrees.
As discussions presented in the Office action dated 10/22/2025 (see pages 7-9), Littlewood discloses a method for the conversion of CO2 and a first reduction gas (H2 gas) to long-chain hydrocarbons (LPG) (i.e., a liquid product mixture comprising paraffins and olefins) (Abstract) comprising contacting a feed mixture comprising CO2 and hydrogen gas (the first reduction gas) (paragraph [0029]) with a first catalyst (a bi-functional catalyst having both a methanol synthesis-functional constituent and a dehydration-functional constituent, paragraph [0016]) to produce a product mixture comprising long-chain hydrocarbons (a product comprising ethane, propane, butane, pentane, and methyl pentene, paragraph [0087], Table 1 ).
Littlewood discloses the overall process comprises (i) one or both reactions of reforming and reverse water-gas shift (RWGS), in combination with (ii) LPG synthesis (paragraph [0001]), which is interpreted as two intermediate steps in conduction the recited process of claim 1. Littlewood discloses the first catalyst (a bi-functional catalyst) comprises: a support material comprising cerium oxide (i.e., a lanthanide), iron oxide, nickel oxide (RWGS catalyst) (paragraph [0042]) which meets the recited "one or more metals comprising iron"); and one or more metal selected from the group comprising copper, zinc and aluminum (paragraph [0065]) (LPG synthesis catalysts) (claims 56 and 62).
In the embodiments, Littlewood discloses either (i) two step reactions employing two reactors (100, 200, Figure) with recycle of any portion of material obtained in the first or second reaction stages; or (ii) once-through operation without recycle of any portion of material obtained in the first or second reaction stages (paragraph [0082]).
The "(ii) once-through operation without recycle" is reasonably interpreted as a process conducted in an integrated reactor in the presence of an integrated catalyst. In the case "(ii) once-through operation without recycle of any portion of material obtained in the first or second reaction stages", one skilled in the art would have reasonably interpreted that the two reactors (100, 200, Figure) are functioning as a single integrated reactor, and the catalysts are functioning as a single integrated catalyst.
It is still the examiner's assessment that the first catalyst (a bi-functional catalyst) comprises: a support material comprising cerium oxide (i.e., a lanthanide), iron oxide, nickel oxide (RWGS catalyst) (paragraph [0042]) which meets the recited "one or more metals comprising iron"); and one or more metal selected from the group comprising copper, zinc and aluminum (paragraph [0065]) (LPG synthesis catalysts) (claims 56 and 62) adopted in a method for the conversion of CO2 and a first reduction gas (H2 gas) to long-chain hydrocarbons (LPG) (i.e., a liquid product mixture comprising paraffins and olefins) as taught by Littlewood meets the "a catalyst for converting CO2 and a first reduction gas to long-chain hydrocarbons" as recited in claim 56 of claimed invention.
However, in order to address the feature of one single catalysts, system, upon further consideration and search, a modified ground of rejections to claims 56, 58-59, 61-71, 75-76, 78, 80, 82 and 174 are presented in the instant Office action.
MODIFIED REJECTIONS
Claim Rejections - 35 USC § 102
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 –
(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 56, 61, 62, 67, 68 and 174 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benham et al. (US 5,504,118, hereinafter “Benham”).
For recordation purposes, it is noted herein that, per MPEP 2111.02 II, the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. 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. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (holding that the preamble phrase "which provides improved playing and handling characteristics" in a claim drawn to a head for a lacrosse stick was not a claim limitation).
The preamble “A catalyst for converting CO2 and a first reduction gas to long-chain hydrocarbons” is considered to state 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. In addition, it is considered that the main body of the claim 56 fully and intrinsically sets forth all the limitations of the claimed invention about the catalyst. Therefore, the examination of the instant Office action is based on the composition of the catalyst recited in the main body of claim 56, not based on the preamble of the claim.
In regard to claims 56, 62, 67 and 68, Benham discloses a method and a system for the production of hydrocarbons and hydrocarbon compounds which includes the use of a Fischer-Tropsch synthesis reactor and process (col. 1, lines 14-17). Benham discloses a Fischer-Tropsch catalyst comprising iron, copper and potassium (Group 1A element metal), wherein the potassium is a promoter metal (col. 11, lies 30 thru col. 12, line 41).
In regard to claim 61, Benham discloses the iron is present in the form of iron oxide (col. 28, claim 1).
In regard to claim 174, it is noted that claim 56 is about a product (catalyst), not about a process of using the product (catalyst). It has long been held that “apparatus/product claims cover what a device is, not what a device/product does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.”); In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function.”).
However, since Benham discloses the same catalyst as that recited in claim 56, it is asserted, absent evidence to the contrary, that one would reasonably expect that the catalyst as taught by Benham to function the same as the catalyst recited in claim 56. Specifically, it is asserted that one would reasonably expect the catalyst of Benham would results the liquid product mixture comprises linear hydrocarbons with a carbon number between 6 and 26 as recited. See MPEP 2112.01 and 2112.02.
Benham discloses every limitation recited in claims 56, 61, 62, 67, 68 and 174.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 58, 59, 63-66, 69, 70, 71 and 75 and are rejected under 35 U.S.C. 103 as being unpatentable over Benham, as applied to claim 1 above, and further in view of Littlewood et al. (US 2023/0069964 A1, hereinafter “Littlewood”), and as evidenced by Gallucci et al. (A theoretical analysis of methanol synthesis from CO2 and H2 in a ceramic membrane reactor, International Journal of Hydrogen Energy 32 (2007) 5050–5058).
In regard to claims 58 and 59, Benham does not explicitly disclose the one or more metals further comprises cobalt.
However, Littlewood discloses a method for the conversion of CO2 and a first reduction gas (H2 gas) to long-chain hydrocarbons (LPG) (i.e., a liquid product mixture comprising paraffins and olefins) (Abstract) comprising contacting a feed mixture comprising CO2 and hydrogen gas (the first reduction gas) (paragraph [0029]) with a first catalyst (a bi-functional catalyst having both a methanol synthesis-functional constituent and a dehydration-functional constituent, paragraph [0016]) to produce a product mixture comprising long-chain hydrocarbons (a product comprising ethane, propane, butane, pentane, and methyl pentene, paragraph [0087], Table 1). Littlewood discloses the first catalyst (a bi-functional catalyst) comprises: a support material comprising cerium oxide (i.e., a lanthanide), iron oxide, nickel oxide (paragraph [0042]) which meets the recited “one or more metals comprising iron”); one or more metal selected from the group comprising copper, zinc and aluminum (paragraph [0065]) (claims 56 and 62). Littlewood discloses the first catalyst (a bi-functional catalyst) further comprises non-zeolitic molecular sieve ELAPO comprising cobalt element (paragraph [0070]). This renders the recited limitation of “the one or more metals further comprises cobalt”.
It is noted that the conversion of CO2 and H2 gas into hydrocarbon comprises Fischer-Tropsch reaction as evidenced by Gallucci et al. (A theoretical analysis of methanol synthesis from CO2 and H2 in a ceramic membrane reactor, International Journal of Hydrogen Energy 32 (2007) 5050–5058, see page 5050, col. 2, a reaction mechanism of methanol synthesis from CO2 and H2).
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the catalyst of Benham to provide the feature of the one or more metals further comprises cobalt as taught by Littlewood, because that cobalt is a metal element that can be incorporated into a Fischer-Tropsch reaction catalyst as taught by Littlewood (paragraph [0070]).
A reference is analogous art to the claimed invention if the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325 (MPEP 2141.01(a) I.). Therefore, it is the examiner’s position that the Littlewood reference is reasonably pertinent to the problem of the catalyst comprises the one or more metals further comprise cobalt as recited in the claimed invention with motivations that cobalt is a metal element that can be incorporated into a Fischer-Tropsch reaction catalyst as taught by Littlewood (paragraph [0070]), consequently, the Littlewood reference can be applied to in analyzing the subject matter at issue. Furthermore, it is examiner's assessment that the combination of Benham and Littlewood references does not necessarily alter Benham's the principles of operation, because both references have a common denominator of Fischer-Tropsch process and its catalyst.
In regard to claims 63, 64 and 65, Littlewood discloses the one or more metal selected from the group comprising copper, zinc and aluminum (paragraph [0065]). Littlewood discloses the one or more metal selected from the group comprising copper, zinc and aluminum are either in an elemental form or in the form of oxide (paragraph [0065]).
In regard to claim 66, Littlewood discloses the methanol synthesis-functional constituent comprising one or more of Cu, Zn, Al, Pt, Pd, and Cr, regardless of their particular form(s) (paragraph [0066]).
In regard to claim 69, Littlewood discloses one or more metal selected from the group comprising copper, zinc and aluminum, wherein the metal Al is in the form of oxide (paragraph [0065]) which directs the presence of oxygen element. The metal comprises about 1-10 wt% of the total catalyst weight (paragraph [0066], which directs the remainder is comprised of support material. In the support material, the cerium oxide and the second oxide such as iron oxide constitute about 99 wt% of the support, wherein the second oxide such as iron oxide comprised of 1-45 wt% of the support (paragraph [0043]). It is estimated that, in case, for example, the metal copper and zinc comprise 10 wt% of the total catalyst weight, the second oxide such as iron oxide comprised of 7.2 wt% of the support (5 wt% of iron atom in the total catalyst weight), the one or more metal (iron) mass composition based on the total amount of copper, zinc, and iron is 30 wt%. In light of teachings from Benham, in view of Littlewood, the recited limitation “the one or more second element is present in an amount of about 0.5 to about 40 wt.% of the total amount of the one or more metals, the one or more second element, the optional one or more Group VI, VII, VIII, IX, X, or XI metal additives, and the Group IA or IIA metal promoter” would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize catalytic activity and utility taking into consideration the operational parameters of the CO2-to-fuels conversion process (time, temperature, pressure, throughput), the geometry of the catalytic bodies, the physical and chemical make-up of the feedstock as well as the nature of the reaction end-products.
In regard to claims 70, 71 and 75, Littlewood discloses the first catalyst (a bi-functional catalyst) further comprises support comprising aluminum, oxide, silicon oxide, zirconium oxide, etc. (paragraph [0067]).
Claims 78, 80 and 82 and are rejected under 35 U.S.C. 103 as being unpatentable over Benham, in view of Littlewood, as applied to claim 70 above, and further in view of Tsiotsias et al. (The Role of Alkali and Alkaline Earth Metals in the CO2 Methanation Reaction and the Combined Capture and Methanation of CO2, Catalysts 2020, 10, 812; doi:10.3390/catal10070812, hereinafter “Tsiotsias”).
In regard to claims 78, 80 and 82, Benham, in view of Littlewood, does not disclose the additional support is a mesoporous material, the additional support has surface area from about 10 m2/g to about 1000 m2/g, and the composition is in the form of particles having an average size from about 10 nm to about 5 μm.
Tsiotsias discloses alkali and alkaline earth metals can serve both as promoters for methanation catalysts, such as metal embedded oxide catalysts, wherein the alkali and alkaline earth metals comprise Li, Na, K, Ca, Mg, Sr and Ba (page 16, Table 1). Tsiotsias discloses a use of high surface mesoporous alumina Al2O3 in the catalyst (page 2, 1st paragraph from the bottom; page 9, Section 2.2.2. Magnesium (Mg)). It is known in the art, as evidenced by Wu et al. (Ordered Mesoporous Crystalline [Symbol font/0x67]-Al2O3 with Variable Architecture and Porosity from a Single Hard Template, J. AM. CHEM. SOC. 2010, 132, 12042-12050), the mesoporous alumina Al2O3 has a surface area of, for example, 261 m2/g (Wu et al., page 12045, left column, 1st paragraph from the bottom) and a particle size of about 1.4 µm (Wu et al., page 12044, right column, 2nd paragraph from the top).
It is noted that all the Benham, Littlewood, and Tsiotsias references direct a conversion of CO2 into chemicals/fuel in the presence of metal embedded oxide catalysts, wherein the reaction comprises a Fischer-Tropsch process.
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the catalyst of Benham, in view of Littlewood, in view of Tsiotsias, to provide the feature of the additional support is a mesoporous material, the additional support has surface area from about 10 m2/g to about 1000 m2/g, and the composition is in the form of particles having an average size from about 10 nm to about 5 μm as taught by Tsiotsias, because the recited features of the additional support is known in the Tsiotsias reference (page 16, Table 1; page 2, 1st paragraph from the bottom; page 9, Section 2.2.2. Magnesium (Mg)).
Claim 76 is rejected under 35 U.S.C. 103 as being unpatentable over Benham, in view of Littlewood, as applied to claim 70 above, and further in view of Furimsky (CO2 Hydrogenation to Methanol and Methane over Carbon-Supported Catalysts, Ind. Eng. Chem. Res. 2020, 59, 15393-15423).
In regard to claim 76, Benham, in view of Littlewood, does not explicitly disclose the additional support comprises one or more carbon-based materials.
Furimsky discloses a CO2 hydrogenation to methanol and methane over carbon-supported catalysts (Title; Abstract). Furimsky discloses the stability of catalyst is increased when a carbon support, such as carbon black or activated carbon, is used (Abstract; pages 15394-15395).
It is noted that all the Benham, Littlewood, and Furimsky references direct a conversion reaction of CO2 into chemicals/fuel in the presence of metal embedded oxide catalysts, wherein the reaction comprises a Fischer-Tropsch process.
Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the catalyst of Benham, in view of Littlewood, to provide the feature of the additional support comprises one or more carbon-based materials as taught by Furimsky, because the stability of catalyst is increased when a carbon support, such as carbon black or activated carbon, is used (Furimsky, Abstract; pages 15394-15395).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772