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 .
Status of Application
Claims 21, 27-30 and 41-45 (31-40 withdrawn) are pending and presented for examination.
Response to Arguments
Applicant’s remarks dated 24 July 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The rejection of claims 21, 22, 25 and 27-30 under 35 U.S.C. 103 over Espinoza in view of Meng with Wang as an evidentiary reference is UPDATED below to reflect the instant amendment.
The traversal is that Espinoza discloses that both a first amorphous silica-alumina and a second amorphous silica-alumina are modified by contacting with an acid under extrusion conditions (Remarks at 7). As recited in the Office Action, Espinoza discloses at 15:50-63 that:
“The treated amorphous material gel mixture and the optional binder can be mixed along with a peptizing agent Such as hydrochloric acid (HCl), nitric acid (HNO), . . . to form a homogeneous which is formed into a desired shape by shaping means. The desired shape may be formed by any suitable shaping means. Suitable shaping means include extrusion . . . Extrusion means include screw extruders and extrusion presses. The shaping means can determine how much water, if any, is added to the mixture.”
As such, Espinoza does disclose acid extrusion of the amorphous silica-alumina and discloses that a first and second one can be utilized (Espinoza at 15:21-26).
While Espinoza does disclose amorphous supports (Remarks at 9) and does not disclose addition of zeolites or any reason to include one, it need not disclose zeolites. It does not teach away from the usage of zeolites, so bringing in another reference discussing such is permissible, it would not “destroy or improperly alter Espinoza’s amorphous support in a manner that is clearly contrary or adverse to the disclosed invention” (Remarks at 9).
The traversal against Meng is, ultimately, that it is drawn to a fundamentally different catalyst as it is zeolite/ASA used in catalytic cracking (Remarks at 10). However, Espinoza is also drawn to a cracking catalyst (15:30), so they are indeed in analogous areas. Meng need not disclose that the silica-alumina of necessarily be different than that of Espinoza as Espinoza discloses that the first and second can have different properties (Espinoza at 4:50-60).
Given that Applicants regard the formation of the silica-alumina interphase, and individual domains are wrought from the usage of the acid extrusion (Remarks at 7), Wang is no longer considered to be necessary.
Further, Applicants state that Espinoza “does not disclose that both a first amorphous silica-alumina and a second amorphous silca-alumina are each modified by acid under extrusion conditions to form a composite material in which each modified ASA comprises silica domains, alumina domains, and a silica-alumina interphase.” (Remarks at 10). However, Espinoza states that the first and second material are mixed and then subjected to the acid extrusion, so the first and second phases are indeed being subjected to acid extrusion.
Lastly, Applicants present that an unexpected result exists. “The specification further describes hydroprocessing catalyst bases and comparative performance figures, including pore-size distributions, silica-domain distributions, catalyst activity, heavy diesel yield, and total distillate yield.” (Remarks at 11). Espinoza discloses the silica-alumina average pore sizes between 2 and 12 nm (Espinoza at 17:20-22) which is commensurate with “Fig. 1” of the Instant Specification so this does not appear to be an unexpected result. It is further difficult to understand how Applicants can regard any unexpected result is present as the claims are not commensurate in scope with the Examples which present the results, accordingly any argument of unexpected results cannot be utilized to withdraw the rejection (see MPEP 716.02(d)). Even if this is more than merely a simple admixture of two different ASA and zeolites, the is insufficient data to show that and further also the effect of the acid extrusion which requires further information from Applicants vis a vis the specific acid and extrusion type be claimed.
The rejection of claims 21, 22, 25 and 27-30 under 35 U.S.C. 103 over Ali in view of Espinoza with Wang as an evidentiary reference is UPDATED below.
The response to the traversals against Espinoza from above is hereby incorporated by reference.
The traversal against Ali is that it does not disclose a second amorphous silca-alumina nor the acid extrusion (Remarks at 8), both of which is true, but Ali does disclose a second one. Espinoza however discloses a second different one and discloses the acid extrusion aspects.
Neither Ali or Wang being drawn to separate inherency arguments with respect to the silica-alumina interphases and individual silica and alumina domains is noted, but it appears that these are produced from the acid extrusion as discussed supra.
Claim Rejections - 35 USC § 103
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, 27-30 and 41-45 are rejected under 35 U.S.C. 103 as being unpatentable over Espinoza in view of Meng.
Regarding claims 21 and 27, Espinoza discloses a silica-alumina composite material (Espinoza at “Abstract”, the usage of such in making hydroprocesing catalyst base is not given patentable weight as discussed supra) comprising a first amorphous silica-alumina and a second amorphous silica-alumina which are both extruded under acidic conditions (Espinoza at 15:55-65) and they differ in 4:50-60). While Espinoza does not expressly state that each of the ASAs have a silica-alumina interphase and individual domains of alumina and silica, the Instant Specification sets forth that usage of nitric acid results in formation of such ([0072]) so one of ordinary skill in the art, absent evidence to the contrary, would expect the interphase and domains to be present, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
However, Espinoza does not expressly state addition of a zeolite.
Meng, in a method of making a catalyst comprising an ASA support, discloses mixing a gamma zeolite into the ASA (Meng at 56 L col).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to utilize the gamma zeolite of Meng with the ASAs of Espinoza. The teaching or suggested motivation in doing so being a trapeziform distribution of pores (Id.) and acidic groups (Meng at 63 R col).
Turning to claim 28, first is present at 33-67% and the second at 67-33% (Meng at “Claim 8”).
Concerning claims 29 and 30, Meng at “Example 7” per “Table 1” discloses the mixture having a surface area of 575, a pore volume of 0.81, a pore diameter average of 5.7, and an Al content of 2.7%. “Example 8” discloses similar values. Individually properties of LASA and HASA are also shown in “Table 1”.
Regarding claim 41, this is a product-by-process claim as it recites that is “made by a method . . .” and is thusly examined on the merits of the product (which is taught) and not how it is made. While the product is claimed as dependent upon the process made, there is nothing to suggest that the instant product would have different properties, structure or aspects than that in the prior art, absent evidence to the contrary. Accordingly, at minimal one of ordinary skill in the art would find it obvious that prior art product and the instant product would have the same product aspects as that instantly claimed. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) also MPEP 2113, et seq. As shown supra the product is known.
Turning to claims 42 and 43, the combination teaches the two ASAs, Y-zeolite, and the presence of alumina domains is considered to meet the requirement for alumina, and since the beta zeolite is optional, this need not be met, especially as claim 43 allows for alumina to be 0%., claim 43 is the same as claim 28 but dependent instead on claim 41.
Claims 44 and 45 are also dependent upon claim 41 and are the same as claims 29 and 30 except dependent upon claim 41.
Claims 21, 27-30 and 41-45 are rejected under 35 U.S.C. 103 as being unpatentable over Ali in view of Espinoza
Regarding claims 21 and 27, Ali discloses a silica-alumina composite material that is suitable for use in making a hydroprocessing catalyst (Ali at “Abstract”) comprising a modified silica-alumina (“Abstract”) which further comprises USY-Y and beta zeolite (Id.).
However, Ali does not expressly state a second ASA which differs in Si:Al, SSA, pore size, pore volume, or domain of silica or alumina size nor that either of the ASAs comprise a silica-alumina interphase, individual silica domains, and alumina domains, nor acid extrusion of the ASAs.
Espinoza in a support for hydrocracking involving ASAs discloses that a combination of ASAs can be utilized, a second silica-alumina wherein the first and second differ in pore size, surface area, or pore volume (4:50-55) and Espinoza discloses that the ASAs are subjected to extrusion under nitric acid conditions (15:40-55).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to utilize the second ASA of Espinoza in the catalyst support of Ali. The teaching or suggested motivation in doing so being controlling acidity (6:54-65).
Turning to claim 28, zeolite is present at 40% (Ali at “Table 3, Cat-4”), 30%*21% alumina, 30% of the ASA (and Espinoza 1/3-2/3 can be either ASA).
Concerning claim 29, ASA SSA is 514 m2/g (Ali at “Table 1”).
With respect to claim 30, 310.5 m2/g (Ali at “Table 3, Cat-4”) and a pore diameter of ~5.6 nm.
Regarding claim 41, this is a product-by-process claim as it recites that is “made by a method . . .” and is thusly examined on the merits of the product (which is taught) and not how it is made. While the product is claimed as dependent upon the process made, there is nothing to suggest that the instant product would have different properties, structure or aspects than that in the prior art, absent evidence to the contrary. Accordingly, at minimal one of ordinary skill in the art would find it obvious that prior art product and the instant product would have the same product aspects as that instantly claimed. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) also MPEP 2113, et seq. As shown supra the product is known.
Turning to claims 42 and 43, the combination teaches the two ASAs, Y-zeolite, and the presence of alumina domains is considered to meet the requirement for alumina, and since the beta zeolite is optional, this need not be met, especially as claim 43 allows for alumina to be 0%., claim 43 is the same as claim 28 but dependent instead on claim 41.
Claims 44 and 45 are also dependent upon claim 41 and are the same as claims 29 and 30 except dependent upon claim 41.
Conclusion
Claims 21, 27-30 and 41-45 are finally rejected.
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 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.
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, Curtis Mayes can be reached at 571-272-1234. 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.
RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759
