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 .
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 16-22, 24-25 and 34-35 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. In this case, claim 16 recites "said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction in a tubular reactor equipped with a jacket … hydrogen peroxide in the feed ”, such recited propylene oxide selectivity relative to propylene is affected by the epoxidation reaction conditions, such as flow rate or contents of hydrogen peroxide, propylene, reaction temperature, pressure and other reactants or additive or catalyst content etc. Therefore, one of ordinary skill in the art cannot ascertain the metes and bounds of such claimed subject matter, therefore, it renders claim indefiniteness. All claim 16’s depending claims are rejected for similar reasons.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16-22 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (CN108250161) (For applicant’s convenience, machine translation has been used for citations) as evidenced by Kegnæs (US 20160137516), and in view of Parvulescu et al. (US20160250624).
Shi et al. teaches a molding composition having framework MFI zeolitic material (TS-1) and a silica binder (para. [0009], [0018], [0066], [0067], example 1-12), extruded and then dried and calcined to obtaining a molding composition as catalyst. As for the claimed zeolitic material having 98 to 100% by weight being material consisting of Ti, Si, O and H, Shi et al. teaches a same or substantially the same zeolitic material being MFI framework, specifically TS-1 wherein no other component/element being included (para. [0067], example 1-12), therefore 98 to 100% by weight of the zeolitic material consist of Ti, Si, O and H as that of instantly claimed is expected.
Shi et al also teaches such modified titanium silicate material (zeolitic material) having nitrogen adsorption peak changes (para. [0018], claim 8, examples 1-12), which suggests that such zeolitic material having type IV nitrogen adsorption/desorption. Shi et al further teaches the zeolitic material having MFI framework having radial length of the cavity part of the hollow structure is 5-300 nm (para. [0067]), which means such zeolitic material having pore size range in mesopores (such as 10 nm).
Kegnæs teaches introducing mesopores (pore size of 2-50 nm) into zeolitic material of TS-1 can help achieving (Fig. 3, para. [0123], [0135], [0150]-[0154]) can help such material obtain type IV nitrogen adsorption/desorption.
Since Shi et al. already teaches a TS-1 material possessing mesopores, therefore, it is readily apparent that such mesopores would exhibit type IV nitrogen adsorption/desorption as evidenced by Kegnæs.
Shi et al further teaches the molding ( i.e. the shaped) composition contains titanium silicate molecular sieve (specifically TS-1 which has a MFI framework structure) as an active ingredient and a silica carrier as a binder, wherein the content of the titanium silicate molecular sieve can be 5-95% by weight, preferably 10-95% by weight, and more preferably 70-90% by weight; while the content of the carrier can be 5-95% by weight, preferably 5-90% by weight, and more preferably 10-30% by weight (para. [0095], example 1-12, table 1-3), wherein such teachings suggest an overlapping ratio of TS-1 to silica binder thus renders a prima facie case of obviousness (see MPEP § 2144. 05 I).
Regarding claim 16, Shi et al. does not expressly teach the molding composition having pore volume at least 0.8 ml/g.
However, Shi et al. already teaches a same or substantially the same molding composition having same or substantially the same zeolitic material and same or substantially the same binder material of SiO2, therefore, same or substantially the same pore volume of at least 0.8 ml/g would be expected.
Furthermore, Parvulescu et al. teaches a molding composition comprising a zeolitic material having MFI framework, specifically TS-1 (para. [0017], [0031], [0040], example 1-6, table 2), wherein such molding composition includes a silica binder and can have a pore volume at least 0.8 ml/g (para. [0057], table 2).
It would have been obvious for one of ordinary skill in the art to adopt such well-known pore as shown by Parvulescu et al. to modify the molding composition of Shi et al because by doing so can help obtaining a desired molding composition for intended application as catalyst or sorbent material as suggested by Parvulescu et al. (para. [0057], [0109]).
As for the claimed “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction …”, Shi et al alone or in view of Parvulescu et al. already teaches a same or substantially the same molding as that of instantly claimed, therefore, same or substantially the same property of function, i.e., same or substantially the same of “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction …” as that of instantly claimed would be expected. It is also noted that such recited limitation of “determined in a continuous epoxidation reaction in a tubular reactor equipped with a jacket … hydrogen peroxide in the feed” just a measurement method to obtain the instantly claimed propylene oxide selectivity, but such limitation does not structurally limit the instantly claimed molding composition, therefore, it cannot make the instantly claimed molding composition patentable distinct.
Regarding claim 17-19, Shi et al. already teaches such limitations as discussed above.
Regarding claim 20, Shi et al. further teaches the titanium silicate (zeolitic) material containing 2.5 % to 4.3% by weight titanium oxide (example 1-12) based on weight of zeolitic material. Corresponding, Shi et al. (Ti only accounts as 60% by weight of TiO2 content) suggests an overlapping of titanium content based on zeolitic material content as that of instantly claimed range titanium content, thus renders a prima facie case of obviousness (se MPEP §2144. 05 I).
Regarding claim 21-22, Parvulescu et al. further discloses molding composition more preferably having a pore volume of 0.9 ml/g to 1.3 ml/g, specifically 1.0 ml/g etc. (para. [0057], table 2).
Regarding claim 34-35, Shi et al. teaches the molding composition being an epoxidation catalyst (para. [0061]).
Claims 16-22, 24-25 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Parvulescu et al. (US20160250624) in view of Kegnæs (US 20160137516).
Parvulescu et al. teaches a molding composition comprising a zeolitic material having MFI framework, specifically TS-1 (para. [0017], [0031], [0040], example 1-6, table 2), wherein such molding composition includes a silica binder and having a pore volume at least 0.8 ml/g (para. [0057], table 2). As for the claimed “determined by intrusion mercury porosimetry”, it is noted that such limitation just a method for determine molding pore volume, Parvulescu et al. already teaches a same or substantially the same molding composition pore volume.
As for the claimed zeolitic material having 98 to 100% by weight being material consisting of Ti, Si, O and H, Parvulescu et al. teaches a same or substantially the same zeolitic material being MFI framework, specifically TS-1 (para. [0040], [0050], example 1-6), wherein such zeolitic material framework only optionally containing X2O3 (0.1% by weight or less based on 100 wt.% of zeolitic material), 1.9% or 2.0% by weight of Ti (reference example 1-4, table 1). Thus, Parvulescu et al. disclosed zeolitic material has framework of MFI, wherein from 98-100% by weight of the zeolitic material consisting of Ti, Si, O and H.
Parvulescu et al. teaches the any suitable weight ratio of the one or more binders to the zeolitic material (binder: zeolitic material) may be employed provided that the mixture obtained may be kneaded and the kneaded mixture obtained can be subsequently molded for obtaining one or more moldings. Parvulescu et al. teaches a weight ratio of the one or more binders to the zeolitic material comprised in the range of from 0.1 to 0.6 (para. [0021], examples 1-6). Parvulescu et al. disclosed binders (silica): to zeolitic material (MFI framework) weight ratio being 0.1 to 0.6, therefore, MFI: silica weight ratio being 1.67:1-10:1, wherein such ratio overlaps with that of instantly claimed MFI: SiO2 weight ratio range thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Regarding claim 16, Parvulescu et al. does not expressly teach the zeolitic material exhibiting a type IV nitrogen adsorption/desorption.
Kegnæs teaches introducing mesopores (pore size of 2-50 nm) into zeolitic material of TS-1 can help achieving (Fig. 3, para. [0123], [0135], [0143], [0150]- [0153]) can help such material obtain type IV nitrogen adsorption/desorption.
It would have been obvious for one of ordinary skill in the art to introducing such mesoporous features (correspondingly type IV nitrogen adsorption/desorption) as shown by Kegnæs to modify the zeolitic material in the molding composition of Parvulescu et al. because introducing such mesoporous features (correspondingly type IV nitrogen adsorption/desorption) can help enhance accessibility of such molding composition’s active site for reactants and increased external surface when used as solid catalyst as suggested by Kegnæs (para. [0135], [0151]-[0153], table 2-3).
As for the claimed “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction…”, Parvulescu et al. in view of Kegnæs already teaches a same or substantially the same molding as that of instantly claimed, therefore, same or substantially the same property of function, i.e., same or substantially the same of “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction …” as that of instantly claimed would be expected. It is also noted that such recited limitation of “determined in a continuous epoxidation reaction in a tubular reactor equipped with a jacket … hydrogen peroxide in the feed” just a measurement method to obtain the instantly claimed propylene oxide selectivity, but such limitation does not structurally limit the instantly claimed molding composition, therefore, it cannot make the instantly claimed molding composition patentable distinct.
Regarding claim 17, Kegnæs further teaches the zeolitic material having mesoporous features, wherein the mesopores having pores (cavities) diameters from 2 to 50 nm (i.e. 20 to 500 Å) (para. [0123]).
Regarding claim 18-20, such limitations are met as discussed above.
Regarding claim 21-22, Parvulescu et al. discloses molding composition more preferably having a pore volume of 0.9 ml/g to 1.3 ml/g, specifically 1.0 ml/g etc. (para. [0057], table 2).
Regarding claim 24, such limitation has been met as discussed above.
Regarding claim 25, Parvulescu et al. teaches the molding composition being formed via mixing TS-1 zeolitic material, binders and pore forming agents wherein pore forming agents being calcined to decompose forming pores while solvents being dried and removed during calcining (para. [0019], [0020], [0066]-[0074], examples 1-9). Hence, the obtained molding composition consist of the zeolitic material having framework type MFI and silica binder, i.e., 99% to 100% by weight of molding consisting the zeolitic material having framework type MFI and silica binder (example 1-9). It would have been obvious for one of ordinary skill in the art to decompose all pore forming agents and removing all remaining solvent etc. reagents after desired molding composition being obtained because obtaining a pure molding composition consisting of zeolitic material TS-1 and silica binder ( i.e. 99% to 100% by weight of molding consisting the zeolitic material having framework type MFI and silica binder) with desired pore volume and minimized impurities is desired for intended usage as catalyst or sorbent material as suggested by Parvulescu et al. (para. [0109]).
Regarding claim 34-35, Parculescu et al also teaches such obtained molding composition can be used as catalyst, sorbent, such as catalyst for isomerization etc. (para. [0109]), wherein a catalyst or sorbent containing such molding composition, or an isomerization catalyst containing such molding composition as that of instantly claimed is envisioned.
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.
Claim 16-22, 24-25 and 34-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13-27 of U.S. Patent No. US 10434503 in view of Parvulescu et al. (US20160250624) and Kegnæs (US 20160137516). US’503 teaches a substantially the same molding composition except 98 to 100% weight of zeolitic material consists of Ti, Si, O and H, or zeolitic material exhibit type IV nitrogen adsorption/desorption, wherein Parvulescu et al. teaches 98 to 100% weight of zeolitic material consists of Ti, Si, O and H and Kegnæs zeolitic material exhibit type IV nitrogen adsorption/desorption. It would have been obvious for one of ordinary skill in the art to adopt a zeolitic material having MFI framework wherein 98 to 100% weight of zeolitic material consists of Ti, Si, O and H as shown by Parvulescu et al. to modify the molding composition of US’503 because adopting such known zeolitic material to a known molding composition for improvement would yield predictable results (see MPEP §2143). It would have been obvious for one of ordinary skill in the art to introducing such mesoporous features (correspondingly type IV nitrogen adsorption/desorption) as shown by Kegnæs to modify the zeolitic material in the molding composition of US’503 because introducing such mesoporous features (correspondingly type IV nitrogen adsorption/desorption) can help enhance accessibility of such molding composition’s active site for reactants when used as solid catalyst as suggested by Kegnæs (para. [0135]). As for the claimed “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction …”, US’503 in view of Parvulescu et al. and Kegnæs already teaches a same or substantially the same molding as that of instantly claimed, therefore, same or substantially the same property of function, i.e., same or substantially the same of “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction …” as that of instantly claimed would be expected. It is also noted that such recited limitation of “determined in a continuous epoxidation reaction in a tubular reactor equipped with a jacket … hydrogen peroxide in the feed” just a measurement method to obtain the instantly claimed propylene oxide selectivity, but such limitation does not structurally limit the instantly claimed molding composition, therefore, it cannot make the instantly claimed molding composition patentable distinct.
Claim 16-22, 24-25 and 34-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21-26 of co-pending Application No. 17/606,875 in view of Kegnæs (US 20160137516). US’875 teaches a substantially the same molding composition comprising 95 to 100% weight of zeolitic material consists of Ti, Si, O and optionally H except the zeolitic material exhibit type IV nitrogen adsorption/desorption, wherein Kegnæs zeolitic material exhibit type IV nitrogen adsorption/desorption. It would have been obvious for one of ordinary skill in the art to introducing such mesoporous features (correspondingly type IV nitrogen adsorption/desorption) as shown by Kegnæs to modify the zeolitic material in the molding composition of US’875 because introducing such mesoporous features (correspondingly type IV nitrogen adsorption/desorption) can help enhance accessibility of such molding composition’s active site for reactants when used as solid catalyst as suggested by Kegnæs (para. [0135]). As for the claimed “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction …”, co-pending application’875 in view of Muller et al. and Kegnæs already teaches a same or substantially the same molding as that of instantly claimed, therefore, same or substantially the same property of function, i.e., same or substantially the same of “said molding exhibits a propylene oxide selectivity relative to propylene in the range of from 96 to 100% determined in a continuous epoxidation reaction …” as that of instantly claimed would be expected. It is also noted that such recited limitation of “determined in a continuous epoxidation reaction in a tubular reactor equipped with a jacket … hydrogen peroxide in the feed” just a measurement method to obtain the instantly claimed propylene oxide selectivity, but such limitation does not structurally limit the instantly claimed molding composition, therefore, it cannot make the instantly claimed molding composition patentable distinct.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's amendments filed on 09/17/2025 have been acknowledged thus previous 112 rejections have been withdrawn.
Applicant's arguments filed on 09/17/2025 have been fully considered but they are not persuasive. In response to applicant’s arguments about incorporating previous claim 23 recited zeolitic material to silica binder weight ratio, both Shi et al. and Parvulescu et al. expressly teach such limitation as explained in above rejections. In response to applicant’s arguments hollow powder of example 2.1 from instant application using 75% of hollow TS-1 and 25% of silica showing improved results as compared to additional Experiment 1 and Experiment 2 (table 3-4), the examiner would like to kindly reminder the applicant that evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (see MPEP § 716.02(d)). In the instant case, instant example 2.1 discloses a molding having pore volume of 1.0 ml/g, while instant example 1.1 having pore volume of 0.82 ml/g, while additional Experiment 1 and Experiment 2 respectively shows pore volume of a molding being pore volume respectively being 0.28 ml/g and 0.33 ml/g. But the instantly applied closest prior art, e.g. Parvulescu et al. discloses molding composition more preferably having a pore volume of 0.9 ml/g to 1.3 ml/g, therefore, such additional Experiment 1 and Experiment 2 appear not even demonstrate data against applied closest prior art at all. Even if assuming applicant’s allegation of example in table 3 and 4 showing superior results being true, it is noted that instant example 2.1 only showing a specific molding having a specific pore volume of 1.0 ml/g as compared to additional Experiment 1 and Experiment 2 disclosed pore volume of 0.28 ml/g, 0.33 ml/g, wherein example 1.2-noted this example having a specific TS-1 to silica binder ratio being 3:1 which is much narrower as compared to the instantly claimed 1:1 to 5:1 ratio range. Therefore, it is not readily apparent for one of ordinary skill in the art that such alleged improved results would occur over the entire claimed range, for a molding (containing MFI zeolitic material consisting of Ti, Si, H and O, and a silica binder) having any pore volume being at least 0.8 ml/g, with any zeolitic material to silica binder ratio being 1:1 to 5:1 (see MPEP § 716.02(d) - § 716.02(e)). Therefore, such arguments are not found convincing. Additionally, it is noted that propylene oxide selectivity of being at least 97% for 400 hours is well-known in the art (see Muller to US20110130579 para. [0179]).
In response to applicant’s arguments about instantly claimed molding being water treated after said molding has been formed, it is noted that instant claims only require a molding composition (see claims 16-22, 24-25 and 34-35), wherein such argued feature of being water treated is not even claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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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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/JUN LI/ Primary Examiner, Art Unit 1732
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