Patent Application 18189297 - CARBON DIOXIDE REDUCTION CATALYST - Rejection

Patent Application 18189297 - CARBON DIOXIDE REDUCTION CATALYST

Title: CARBON DIOXIDE REDUCTION CATALYST

Application Information

• Invention Title: CARBON DIOXIDE REDUCTION CATALYST
• Application Number: 18189297
• Submission Date: 2025-05-16T00:00:00.000Z
• Effective Filing Date: 2023-03-24T00:00:00.000Z
• Filing Date: 2023-03-24T00:00:00.000Z
• National Class: 502
• National Sub-Class: 336000
• Examiner Employee Number: 85973
• Art Unit: 1732
• Tech Center: 1700

Rejection Summary

• 102 Rejections: 2
• 103 Rejections: 3

Cited Patents

The following patents were cited in the rejection:

• US 0105630🔗

Office Action Text

    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 of group I invention (claim 1-5) in the reply filed on 02/25/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/25/2025.
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 5 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. In this case, claim 5 recites “the catalytic metal”, there is insufficient antecedent basis for this limitation.  Next, claim 5 recites “the catalytic metal includes an Fe-Zr composite oxide formed by the Fe and the Zr”, one of ordinary skill in the art is uncertain how can catalytic metal include a composite oxide because ordinary meaning of metal does not include oxide at all.  Therefore, such limitation renders claim indefiniteness. 
Claim Rejections - 35 USC § 102
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 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.

Claim(s) 1-2 and 5 are rejected under 35 U.S.C. 102 ((a) (1)) as being anticipated by Fujiwara et al. (JP10-192714) (for applicant’s convenience, Machine translation has been used for citations hereof). 
Fujiwara et al. expressly teaches a catalyst composition comprising a mixture of composite oxide comprising iron, zirconium as catalytic metals (example 2-3, table 2-3, para. [0022]-[0026], claim 1-2), wherein example 3’s catalytic metal also includes gallium (Ga). 
Regarding claim 1-2, Fujiwara et al. teaches every each and every limitation of claim 1-2, therefore, claims 1-2 are anticipated by Fujiwara et al.
As for the claimed “for hydrogenating carbon dioxide to reduce carbon dioxide to produce a hydrocarbon”, such limitation just intended use of the instantly claimed catalyst composition.  In this case, Fujiwara et al. teaches the catalyst can be used for converting CO2 to isobutane (i.e. a hydrocarbon).  
	Regarding claim 5, Fujiwara et al further teaches catalyst being a composite oxide comprising an Fe-Zr composite oxide formed by the Fe and the Zr (example 2-3, table 2-3, para. [0022]-[0026], claim 1-2). 
Claim(s) 1 and 4 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Hashimoto et al. (JP05-68883A) (for applicant’s convenience, Machine translation has been used for citations hereof). 
Hashimoto et al. teaches a catalyst composition comprising an alloy having 6-12 atomic % Zr and substantially residual Fe and such catalyst is used for conversing (i.e. reducing) carbon dioxide to a hydrocarbon (claim 1, para [0042]-[0044]). 
As for the claimed “for hydrogenating carbon dioxide to reduce carbon dioxide to produce a hydrocarbon”, such limitation just intended use of the instantly claimed catalyst composition. It is also noted that Hoshimoto teaches catalyst being used for CO2 hydrogenation as discussed above. 
Regarding claim 1, Hoshimoto et al. teaches every each and every limitation of claim 1, therefore, claim 1 is anticipated by Hoshimoto et al.
Regarding claim 4, since the alloy has 6-12 atomic% Zr and rest being iron, specifically 9% of atomic Zr, which suggests Zr mass% in the catalyst within the claimed range.  Zr having molar mass of 91.2 g/mol, while Fe having molar mass of 55.9 g/mol, therefore, for 100% molar (i.e. atomic) of such alloy catalyst, having mass of Zr 0.09x91.2/(0.09x91.2+0.91x55.9) =13.9 mass%, wherein such ratio within the claimed mass ratio range of Zr metal. 

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.
Claim(s) 4 is rejected under 35 U.S.C. 103 as obvious over Fujiwara et al. (JP10192714) (for applicant’s convenience, Machine translation has been used for citations hereof). 
Fujiwara et al.  generically teaches a catalyst composition comprising a mixture of a composite oxide comprising iron, zinc, and at least one of a Group IVA metal, a Group VIA metal, and a Group IIIB metal, and a zeolite (claim 1-2) wherein the at least one of Group IVA, VIA and IIIB preferably being selected from zirconium, chromium, aluminum and gallium (para. [0011], [0014]). Fujiwara et al. also disclose catalyst composition having weight ratio of iron: zinc: group IVA (Zr/Ti/Hf), VIA, IIIB metals=1:1.2-3.6-0.3-3.3 (para. [0011]).  Fujiwara et al. already teaches group IVA metal being Zr (see example 2-3).   Fujiwara et al. disclosed such metal weight ratio suggests an overlapping mass ratio of group IVA metal (e.g zirconium) to iron as that of instantly claimed thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).  It would have been obvious for one of ordinary skill in the art to adopt a same Zr mass amount as that of instantly claimed via routine experimentation (see MPEP §2144. 05 II) for help obtaining a catalyst with desired catalyst performance as suggested by Fujiwara et al. (para. [0011], example 2-3). 
Claim(s) 3 is rejected under 35 U.S.C. 103 as obvious over Fujiwara et al. (JP10192714) (for applicant’s convenience, Machine translation has been used for citations hereof) as applied above, and in view of Dorner (US2011/0105630). 
Regarding claim 3, Fujiwara et al. does not expressly teach the catalytic metal including Na. 
Dorner teaches a CO2 hydrogenation catalyst comprising iron and sodium (Na) etc. metals (para. [0024], [0050]) wherein such catalyst comprises at least one alkali or alkaline earth metal selected from the group consisting of Li, Na, K, Cs and Sr for desired catalyst selectivity and yield (para. [0053]). 
It would have been obvious for one of ordinary skill in the art “obvious to try” sodium (Na) as alkali metal to modify the catalyst composition of Fujiwara et al. because choosing sodium from a finite number of identified, predictable alkali metals for help providing a CO2 hydrogenation catalyst with increased surface basicity thus improving the catalyst yield and selectivity as suggested by Dorner (para. [0053]) would have a reasonable expectation of success (see MPEP § 2143 KSR). 
Claim(s) 4 is, also alternatively, rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (05-68883A) (for applicant’s convenience, Machine translation has been used for citations hereof). 
Alternatively, Hashimoto et al disclosed alloy catalyst has 6-12 atomic% Zr and rest being iron, wherein such atomic ratio suggesting (based on Zr and iron molar mass as discussed above) mass ratio of Zr being 0.06x91.2/(0.06X91.2+0.94X55.9)=9.95 mass%,  to 0.12x91.2/(0.12x91.2+0.88x55.9)=18.2mass%.  Such range overlaps with that of instantly claimed thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).   Furthermore, Hashimoto et al. teaches if the amount of Zr (in the catalyst) is too small, not only will an amorphous alloy not be obtained, but the amount of zirconium oxide will be insufficient, and Fe will not be finely dispersed, making it impossible to obtain a catalyst with high activity (para. [0049]).  It would have been obvious for one of ordinary skill in the art to adopt a same Zr mass amount as that of instantly claimed via routine optimization (see MPEP §2144. 05 II) for help obtaining a catalyst with finely dispersed iron and desired catalyst activity as suggested by Hashimoto et al. 

Conclusion
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/JUN LI/           Primary Examiner, Art Unit 1732