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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/17/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In this case, claim 25 recites a crushing strength in the range from 6 to 25 N, such limitation does not further limit its parent claim 21 recited crushing strength range of 8 to 15 N. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Mueller et al. (DE10110139) (for applicant’s convenience, Machine translation has been used for citations hereof) as evidenced by Kegnæs (US20160137516), and in view of Muller’579 (US20110130579) and McGuire (WO2018/197470) (for applicant’s convenience, equivalent US2020/0139357 has been used for citations).
Muller et al. teaches a molding composition comprising a zeolitic material, an MFI framework type of TS-1 titanium silicate zeolite (para. [0016]-[0018], [0025]) and the framework containing Si, O and Ti (para [0016], [0062]). Muller et al. also teaches the molding comprising an alumina binder which can comprise silica (i.e. Si and O) (para. [0026], [0027]). Muller et al. teaches the molding comprising zeolitic material and binder having a pore volume preferably from 0.3 to 1.1 ml/g, particularly preferably from 0.6 to 0.95 ml/g (para.[0019], [0033],[0070], Fig. 1-3, examples 1-5).
As for the claimed “zeolitic material which exhibits a type I nitrogen adsorption/desorption isotherm”, Kegnæs teaches zeolites are crystalline alumina silicate materials that exhibit a highly ordered porous structure with pores of molecular diameter. IUPAC identifies this type of porosity as microporous, as the size of the pores are not wider than 2 nm (para. [0002]) and such micropores in zeolites possess type I nitrogen adsorption/desorption (para. [0135]). Since Muller et al. already teaches a same or substantially the same zeolitic material having MFI framework (TS-1), therefore, such zeolite material of TS-1 possesses micropores exhibiting type I nitrogen adsorption/desorption is expected.
Regarding claim 21, Muller et al. does not expressly teach the molding composition exhibiting a crushing strength of at least 6N or BET surface in the range of 30 to 400 m2/g.
However, Muller et al. already teaches the molding composition needs to have sufficient strength (para. [0008]).
Muller’579 teaches a molding composition comprising a zeolitic material of TS-1 and a binder comprising silica (para. [0026], [0029], [0031], [0046], [0053]-[0056], [0061], [0107]) and such molding having a crushing strength of more than 23N, or at least 22 N (para. [0109], [0207], [0240], claim 21).
It would have been obvious for one of ordinary skill in the art to adopt such well-known crushing strength of a molding composition as shown by Muller’579 to modify the molding composition of Muller et al. because adopting such well-known crushing strength to modify a well-known molding composition comprising TS-1 zeolite and a binder comprising silica for improvement would have predictable results (see MPEP § 2143 KSR).
McGuire teaches a molding comprising zeolite and binder and the molding has surface area in the range of 100 to 500 m2/g (para. [0005],[0041], [0042], [0051]), wherein there is no restriction on zeolite framework, such as zeolite having MFI type framework ([0018], [0153])
It would have been obvious for one of ordinary skill in the art to adopt such well-known technique of a zeolite and binder containing molding having such surface area in the range of 100 to 500 m2/g as shown by McGuire to modify a well-known molding containing zeolite and silica binder as shown by Muller et al. for improvement would have predictable results (see MPEP 2143 KSR).
Regarding claim 22, Muller et al. also teaches the zeolite containing 1.5% by weight of Ti (para. [0062]). Muller et al. further teaches molding (shaped bodies) composition comprising at least one zeolite, specifically, TS-1 which consists of titanium (Ti), silicon (Si) and oxygen (O), and an aluminum-containing binder which can comprise silica, optionally polymer, optionally one or more organic viscosity-increasing substances and further additives known in the art (para. [0012], [0013], [0016]), such teachings suggest the molding composition consisting of TS-1 and an aluminum-containing binder. Muller et al. further teaches such molding contains up to approximately 80% by weight of binder (para. [0030], which means the zeolite (e.g. TS-1) content in the molding can be from 20% to 100% by weight of the molding composition. Therefore, Muller et al. disclosed zeolitic material content overlaps with that of instantly claimed zeolitic material content thus renders prima facie of obviousness (see MPEP § 2144. 05 I).
Regarding claim 23, since the binder content in the molding can be up to 80% by weight of the molding composition and such binder comprises some silica, therefore, Muller et al. disclosed silica binder content is overlapping with that of instantly claimed silica binder content thus renders prima facie of obviousness (see MPEP § 2144. 05 I). It would have been obvious for one of ordinary skill in the art to adopt a same silica binder content via routine experimentation (see MPEP § 2144. 05 II) for help obtaining a desired molding, such as a molding with sufficient strength as indicated by Muller et al (para. [0008]).
Regarding claim 24-25, such limitations have been taught as discussed above.
Regarding claim 26, Muller et al in view of Muller’579 and McGuire already teaches a same or substantially the same molding composition as that of instantly claimed, therefore, same or substantially the same the molding would exhibit one or more of those instantly claimed properties. Furthermore, Muller’579 expressly teach the molding composition when used as epoxidation catalyst having a hydrogen peroxide conversion rate being at 90% (para. [0235],[0236], table 1) when preparing propylene oxide from hydrogen peroxide and propene. As for the claimed “at a temperature of the cooling medium in the range from 55 to 56 °C ….without regeneration of the catalyst”, such are just limitations used to measure the conversion rate, which does not structurally limit the instantly claimed molding composition, therefore, cannot render the claimed molding composition patentable distinct.
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 21-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13-27 of U.S. Patent No. US 10434503 as evidenced by Kegnæs (US 20160137516). US’503 teaches a substantially the same molding composition containing zeolitic material of MFI framework (comprising Si, O and Ti) and a silica binder, and such molding can have surface area of 50 to 700 m2/g (see US’503 claim 25) and pore volume of 0.1 to 2.5 ml/g (see US’503 claim 26) , except zeolitic material exhibit type I nitrogen adsorption/desorption, or at least 6N crushing strength. Kegnæs has been described as above. Since US’503 already teaches a same or substantially the same zeolitic material having MFI framework, therefore, such zeolite material possesses micropores which exhibit type I nitrogen adsorption/desorption is envisioned. As for the claimed crushing strength of at least 6 N, US’503 already teaches a same or substantially the same molding composition having same or substantially the same zeolitic material with MFI framework (containing Si, O and Ti) and same or substantially the same binder material containing Si and O, US’503 claim 27 teaches the molding having a mechanical strength of 1 to 15 N, therefore, same or substantially the same crushing strength of at least 6 N would be expected (see MPEP §2112). As for the claimed properties in claim 26, since US’503 already teaches a same or substantially the same molding composition having same or substantially the same zeolitic material with MFI framework (containing Si, O and Ti) and same or substantially the same binder material containing Si and O, therefore, same or substantially the same properties or function as that of instantly claimed would be expected (see MPEP §2112).
Claims 21-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16-19, 22, 24-25 and 34-35 of co-pending Application No 17/283,975 as evidenced by Kegnæs (US 20160137516), and in view of Muller’579 (US20110130579) and McGuire (WO2018/197470) (for applicant’s convenience, equivalent US2020/0139357 has been used for citations). Co-pending ’975 teaches a substantially the same molding composition except zeolitic material exhibit type I nitrogen adsorption/desorption, or at least 6N crushing strength, or specific surface area. Kegnæs has been described as above. Since co-pending application’ 975 already teaches a same or substantially the same zeolitic material having MFI framework, therefore, such zeolite material possesses micropores which exhibit type I nitrogen adsorption/desorption is envisioned. As for the claimed crushing strength of at least 6 N, co-pending ’975 already teaches a same or substantially the same molding composition having same or substantially the same zeolitic material with MFI framework (containing Si, O and Ti) and same or substantially the same binder material containing Si and O, therefore, same or substantially the same crushing strength of at least 6 N would be expected (see MPEP §2112). Furthermore, Muller’579 teaches a zeolite molding having a crushing strength of more than 23N, or at least 22 N as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well-known crushing strength of a molding composition as shown by Muller’579 to modify the molding composition of co-pending ’975 because adopting such well-known crushing strength to modify a well-known molding composition comprising TS-1 zeolite and a binder comprising silica for improvement would have predictable results (see MPEP § 2143 KSR).
McGuire already teaches a zeolite molding containing overlapping surface area as that of instantly claimed as described above. It would have been obvious for one of ordinary skill in the art to adopt such well-known technique of a zeolite and binder containing molding having such surface area in the range of 100 to 500 m2/g as shown by McGuire to modify a well-known molding containing zeolite and silica binder as shown by co-pending’975 for improvement would have predictable results (see MPEP 2143 KSR).
As for the claimed properties in claim 26, since co-pending’975 already teaches a same or substantially the same molding composition having same or substantially the same zeolitic material with MFI framework (containing Si, O and Ti) and same or substantially the same binder material containing Si and O, therefore, same or substantially the same properties or function as that of instantly claimed would be expected (see MPEP §2112).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed on 12/15/2025 have been fully considered but they are moot in view of current rejections.
In response to applicant’s arguments about unexpected results, i.e. molding of inventive example 2-4 showing low pressure drop rate than comparative example 1,
the examiner would like to remind 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) - § 716.02(e)). In this case, comparative example 1 uses a molding comprising specific content of Si (44/100), specific Ti content (1.5/100), and having specific crushing strength 5 N, and pore volume 0.89 ml/g; while inventive example 2 discloses a molding comprising specific content of Si (44/100), specific Ti content (1.4/100), and having specific crushing strength 8 N, and pore volume 0.83 ml/g, inventive example 3 discloses a molding comprising specific content of Si (44/100), specific Ti content (1.4/100), and having specific crushing strength 11 N, and pore volume 0.84 ml/g, and inventive example 4 discloses molding comprising specific content of Si (44/100), specific Ti content (1.4/100), and having specific crushing strength 12 N, and pore volume 0.82 ml/g. Firstly, comparative example 1 disclosed molding is different as compared to the applied closest prior art Muller et al in view of Muller’579 disclosed molding because Muller discloses a molding need have sufficient strength (para. [0008]), while
Muller’579 teaches a molding composition comprising a zeolitic material of TS-1 and a binder comprising silica and such molding having a crushing strength of more than 23N, or at least 22 N (para. [0109], [0207], [0240], claim 21). Therefore, comparative example 1 disclosed molding is much weaker as compared to applied closest prior art disclosed molding, therefore, such example is not against the closest prior art at all. Secondly, inventive example 2-4 showing molding with specific content 44/100 of Si , 1.4/100 of Ti in the molding, 8-12 N strength, and 0.82 to 0.84 ml/g pore volume as compared to same specific Ti and Si content in comparative example 1, pore volume of 0.89 ml/g and much lower crush strength of 5 N, even if example 2-4 showing improved results as compared to comparative example 1, but since instant invention directs to any molding comprising any content of greater than 0 but less than 100% of Ti, and Si, having any crushing strength in a range of 8-15 N, any pore volume being at least 0.4 ml/g, it is not readily apparent to one of ordinary skill in the art that such alleged improved result would occur over the entire claimed molding, such as any molding comprising any content of greater than 0 but less than 100% of Ti, and Si, having any crushing strength being 8-15N , any pore volume being at least 0.4 ml/g. Therefore, such arguments are not found convincing.
Similar reasons for sustaining double patenting rejections.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUN LI/ Primary Examiner, Art Unit 1732
Prosecution Insights