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 .
Applicants’ Preliminary Amendment, filed on March 29, 2024, has been made of record and entered. In this amendment, the Specification has been amended to include a cross-reference to related applications, and claims 1-12 have been amended to conform to U. S. Patent Application claim format.
No claims have been canceled or added; claims 1-12 are presently pending in this application.
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.
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.
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.
Claims 1, 2, 4, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (CN 106031873, Applicants’ submitted art; English translation provided and relied upon by the Examiner).
Regarding claims 1 and 4, Tang et al. teach a spinel-type CuMn2O4 catalyst (paragraph [0008]; “metal oxide, comprising a metal element A, manganese and oxygen”; “wherein the A is…copper”), wherein, based on the formula, the molar ratio of Mn to O is 2:4, or 1:2, and the molar ratio of Cu to Mn is 1:2, which reads on the respectively recited molar composition ratios recited in claim 1. See paragraphs [0007] and [0008] of Tang et al.
Regarding claim 10, it is considered that because Tang et al. teach a spinel-type CuMn2O4 catalyst structurally reading upon that instantly claimed, the skilled artisan would have been motivated to reasonably expect the catalyst disclosed in Tang et al. to effectively and successfully function as a carbon dioxide reduction catalyst, absent the showing of convincing evidence to the contrary.
Tang et al. do not explicitly teach or suggest the limitations of Applicants’ claims regarding (1) the metal oxide having an intensity ratio (118°/137°) of 0.2 or more between (a) a peak having a 2θ value in a range of from 16° to 20° (P18°) and (b) a peak having a 2θ value in a range of from 35° to 39° (P37°), as recited in claim 1, and (2) the metal oxide having a full width at half maximum (FWHM) of the peak (Pl8°) having the 2θ value in the range of from 16 to 20 degrees of from 1.0° to 7.0°, as recited in claim 2.
However, Figure 1 of Tang et al. depicts an X-ray diffraction pattern of the aforementioned catalyst, wherein peaks are shown at (a) between 15° and 20° 2θ and (b) between 35° and 40° 2θ. Because said peaks fall within Applicants’ claim limitations “2θ value in a range of from 16° to 20°” and “2θ value in a range of from 35° to 39°”, and because Tang et al. teach a catalyst structurally reading upon Applicants’ claimed metal oxide, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the catalyst disclosed in Tang et al. to exhibit both an intensity ratio and a full width at half maximum comparable to that instantly claimed, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2112.01 (I and II).
Allowable Subject Matter
Claims 3, 5, 7, 8, and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6 and 9 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Neither Tang et al. nor the cited references of record teach or suggest the limitations of Applicants’ claims 3, 5-9, and 12. For example, Tang et al. teach the formation of the catalyst disclosed therein “into 40-60 mesh particles” (paragraph [0021] therein), which converts to a particle size range of from 0.250 mm (60 mesh) to 0.420 mm (40 mesh). Applicants’ claim 3 recites an average particle of from 1 to 10 nm, i.e., 0.000001 to 0.00001 mm.
Regarding claims 5-9, Tang et al. teach a preparation for the aforementioned catalyst, wherein a solution of soluble copper and manganese salts are prepared, followed by adding thereto an ammonium oxalate solution, forming a precipitate via ultrasonic stirring, filtering the precipitate and washing with ethanol, drying to form a copper manganese oxalate precursor, and calcining said precursor to form the catalyst. See paragraphs [0008]-[0013] of Tang et al. Tang et al. do not teach or suggest the presence of an alcohol in the precursor solution, as required by Applicants’ claims 5 and 6, nor does this reference teach or suggest the employment of tetrabutylammonium permanganate, as required by Applicants’ claim 9.
Regarding claims 11 and 12, neither Tang et al. nor the cited references of record teach or suggest the limitations of these claims regarding a carbon dioxide reductio method or a carbon dioxide reduction apparatus.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 July 10, 2026
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