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 .
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.
Status of Application
Claims 1-36 are pending and presented for examination.
This application is a continuation-in-part of 18320931 which was effectively filed 19 May 2023. The application does not disclose usage of Ae of Sr, nor that M can be Yb, W, or Ta. Accordingly, claims 1-6, 10, 11, 12, 16, 17, 18, 19, 21, 24, 31, 33, 35 and 36 are not given that filing date, but instead that of the instant application which is 13 May 2024. Claims 7-9, 13-15, 20, 22, 23, 25-30, 32 and 34 are given the effective filing date of 19 May 2022.
Claim Interpretation
As to claims 1-12 and 19-36, While the claims state that p can be 0, doping the niobium sites with an alkaline earth metal is disclosed in the claims and thusly p is being treated as being exclusive of 0. It is thusly considered that p+(0.67-x)+x must be equal to 1. As to claims 13-19, since the cliam requires alkali doping in the barium site, p cannot be 0.
In claim 7, Ae is construed to be alkaline earth metal like in the other claims.
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, 19-24 and 32 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.
Regarding claim 1, 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). For the purposes of compact prosecution it is being considered to limit the alkaline earth elements to Mg, Ca, or Sr. Claims 2-6 correct this so they are not rejected under 35 U.S.C. 112(b).
As to claim 32, it cannot be determined what the metes and bounds of x and y are. X is being assumed to be between 0 and 0.60 and y between 0 and 0.50 like in claim 33.
As to claim 20, it cannot be determined what the metes and bounds of x are, it is bien construed as between 0 and 0.33 like claim 21. It is also unclear on if the claimed formulas are usable together or separate. Also, claim 19 is rejected as it is indefinite if it should be “at least one of Mg and Ca . . at least one of Fe, Ni, Co, Y, Yb, and Pr” as claim 20 suggests it should be read this way which is how it is being read. Proper Markush group usage would be preferred in this and all other claims (all claims depending from 19 are rejected for this same reason).
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 1, 2, 5, 6, 7, 9, 11, 12, 19-24 and 31-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Highly Durable Doped Barium Niobate Perovskite Electrodes for Electrochemical Oxidative Coupling of Methane” to Denoyer et al. (hereinafter, “Denoyer at __”). It is noted that Troche is a named author on Denoyer but is not a named inventor on the instantly claimed application.
Regarding claims 1, 2, 5, 6, 7, 9, 11, 12, 19-22, 24 and 31, Denoyer discloses an electrode catalyst for methane conversion comprising BaMg0.33Nb0.67-xFexO3-d where x=0.33 as the amounts of Mg+Nb+Fe=1 the Ca and Fe are doping the Nb sites.
Concerning claim 23, as methane is converted this claim is considered to be met.
As to claims 32 and 33, since y can be 0 this claim is considered to be met.
Turning to claim 34, the rejection of claim 1 covers this.
As to claims 35 and 36, as the methane is converted this is considered to be met.
Claims 1, 3, 5, 6, 7, 8, 11, 12, 19-24 and 31-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Preparation, Structure and CO2 Sensor Studies of BaCa0.33Nb0.67−xFexO3−δ” to Mulmi et al. (hereinafter, “Mulmi at __”) with Denoyer as an evidentiary reference to the catalytic methane version abilities of barium niobates doped with alkaline metals.
Regarding claims 1, 3, 5, 6, 7, 8, 11, 12, 19-22, 24 and 31, Mulmi discloses a composition of BaCa0.33Nb0.42Fe0.25O3 (Mulmi at “Table 1”), while this is not disclosed as a catalyst (especially one for methane conversion), Denoyer sets forth that alkaline doped barium niobates have utility as methane conversion catalysts. Per MPEP 2112 II, finding a new use for something old is not patentable. In the case of arguendo that Denoyer does not suggest such a catalyst, usage of the composition of Mulmi as a catalyst would not be patentable.
Concerning claim 23, as methane is converted this claim is considered to be met.
As to claims 32 and 33, since y can be 0 this claim is considered to be met.
Turning to claim 34, the rejection of claim 1 covers this.
As to claims 35 and 36, as the methane is converted this is considered to be met.
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 1-3, 5-9, 11-15 and 17-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- of U.S. Patent No. 12036535. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘535 covers barium niobate which is doped with Ca and Mg and the M site is doped with Fe, Ni, Co, Y,and Pr which overlap in scope of the doped elements with instant claim 1, but it does not disclose the values of p and x but these are considered to broadly overlap the range instantly claimed such that a prima facie case of obviousness exists (see MPEP 2144.05). Claim 2 of ‘535 covers specifically usage of x from 0 to 0.33 and p of 0.33 for Ca which covers instant claim 3 and claim 3 of ‘535 covers Mg for claim 2 and 5 and 6. Instant claims 7-9, 11 and 12 are covered by claims 2 or 3 of ‘535. Instant claims 13-15, 17 and 18 are covered by p=0 with respect to claims 2 and 3 of ‘535. Instant claim 19 is covered by claims 2 or 3 of ‘535. Instant claims 19-21 are the equivalent to claim 2 and 3 of ‘535. Instant claims 22-25 are equivalent to claims 12-15 of ‘535. While instant claim 25 recites “for oxidizing methane” this is the intended use of the catalyst and is thusly not given patentable weight, this catalyst is equivalent to that of claims 1, 2, 3 and 12-15 of ‘535 for instant claims 25-30 and also 31-36.
Allowable Subject Matter
Claims 4, 10 and 16 are objected to as being dependent upon a rejected base claim.
As to claims 4, 10 and 16, none of the cited prior art either alone or in combination discloses a catalyst comprising a barium niobate doped with Sr as claimed. “Room Temperature Magnetic Properties of Fe/Co-Doped Barium Niobate Crystals” to Xie et al., discloses an Fe/Co doped barium niobate but dopes the Fe/Co at 0.1, since the Nb must be present at 0.67 it cannot possible be rejected over Xie as Xie discloses Nb is present at a full stoichiometric amount and no Nb vacancy sites exist in Xie. “Room temperature short-range ferromagnetic order in Ni-doped tetragonal perovskite niobate” to Zhou et al. (hereinafter, “Zhou at __”) discloses BaNb(1-x)FexO3 which lacks Ca/Mg/Sr doping.
Claims 25-30 are allowed.
As to claim 25, none of the cited prior art either alone or on combination discloses a Mg/Ca doped barium niobate. Denoyer is the closest piece of prior art and it only discloses Mg doping of the Nb site.
As to claim 31, none of the cited prior art either alone or on combination discloses a Mg/Ca doped barium niobate. Denoyer is the closest piece of prior art and it only discloses Mg doping of the Nb site.
Conclusion
Claims 1-3, 5-9, 11-15, 17-24 and 31-36 are rejected. Claims 4, 10 and 16 are objected to. Claims 25-30 are allowed
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
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