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 (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 December 2025 has been entered.
Priority
This application claims the benefit of KR 10-2021-0087018 with an effective filing date of 02 July 2021 as reflected in the filing receipt mailed on 15 July 2022.
Status of the Claims
Claims 1-4, 8-12, and 27-37 are pending.
Claims 27-37 are new.
Claim 1 is currently amended.
Claims 5-7 are currently cancelled.
Claims 13-26 were previously cancelled.
Response to Amendments
Applicant’s amendments filed 04 December 2025 are acknowledged.
Claim Rejections - 35 USC § 103
Applicant’s amendments to claim 1 adding PVA as the polymer binder and a specific concentration for PVA not taught by Sunley are sufficient to overcome the rejections of:
Claims 1-3, 5, 8, 10, and 12 under 35 U.S.C. 103 as being unpatentable over US 2016/0016155 A1 to Sunley in view of US 2010/0092681 A1 to Rende et al. (hereinafter Rende) and WO 2021/064703 A1 to Thangaraju Murugan et al. (hereinafter Thangaraju);
Claims 4, 6, 7, and 11 under 35 U.S.C. 103 as being unpatentable over US 2016/0016155 A1 to Sunley in view of US 2010/0092681 A1 to Rende et al. (hereinafter Rende), WO 2021/064703 A1 to Thangaraju Murugan et al. (hereinafter Thangaraju), and US 2011/0236271 A1 to Kikuchi et al. (hereinafter Kikuchi); and,
Claim 9 under 35 U.S.C. 103 as being unpatentable over US 2016/0016155 A1 to Sunley in view of US 2010/0092681 A1 to Rende et al. (hereinafter Rende), WO 2021/064703 A1 to Thangaraju Murugan et al. (hereinafter Thangaraju), and “Preparation of Pt/γ-Al2O3 catalyst coating in microreactors for catalytic methane combustion” to He et al. (hereinafter He).
Due to the amendments to claim 1 and the cancellation of claims 5-7, new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed 04 December 2025 have been fully considered but they are moot or not persuasive.
Applicant’s argue that Sunley, Rende, Thangaraju, Kikuchi, and He do not disclose the limitations as recited in amended claim 1. These arguments have been considered but are moot or not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 04 December 2025 with respect to Sunley, Rende, Thangaraju, Kikuchi, and He have been considered but are moot because the new ground of rejection does not rely on Sunley, Rende, Thangaraju, Kikuchi, and He applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, the new ground of rejection does not rely upon Sunley, Kikuchi, and He for any teaching and the new ground of rejection does not rely upon Rende and Thangaraju to teach the concentration of the polyvinyl alcohol binder.
In response to applications arguments on pages 7-8 of the remarks filed on 04 December 2025 that “the highest selectivity for methyl acetate (MA) is observed when the content of PVA is “50~73 wt% based on the total weight of the support and the ferrierite zeolite catalyst particles,” thus rendering the claimed range a critical significance”.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious, see Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In addition, “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range” In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP 716.02(d).
Instant application claim 1 states “wherein a content of the polymer binder is in a range of 50 to 73% by weight, based on a total weight of the support and the ferrierite zeolite catalyst particles”. Applicant’s argue, as stated above, this range of the organic binder is of “critical significance” to increase the “selectivity for methyl acetate (MA)”; however, Applicant’s have not provided a proper comparison to the closest prior art and have not established test points inside and outside the claimed range of the organic binder in order to support the argument of critical significance, see MPEP 716.02(e).
The instant specification is relied upon for any comparison tests/examples. Instant specification Table 2 details a variety of conversions of dimethyl ether to methyl acetate with a variety of polyvinyl alcohol (PVA) binder concentrations and other organic binder concentrations. Focusing on the PVA concentrations in Table 2, Present Example 1-2 details a PVA concentration of 54.5% which is within the claimed range and a selectivity for methyl acetate of 57.4 mol%; however, Present Example 1-21 details a PVA concentration of 27% which is below and outside the claimed range and a selectivity for methyl acetate of 72.3 mol% and Present Example 1-23 details a PVA concentration of 90% which is above and outside the claimed range and a selectivity for methyl acetate of 64.2 mol%. Instant specification Paras. [00103]-[00109];[00139]-[00140];[00155]-[00157] detail the same “PVA having a viscosity of 35 to 55 mPa-s” was used in Present Examples 1-2, 1-21, and 1-23 all processed under the same conditions. Since Examples 1-21 and 1-23 have PVA concentrations below and above the claimed range and both have higher selectivity for methyl acetate then Present Example 1-2 with a PVA concentration within the claimed range, the instant specification does not provide a comparison to the closest prior art and does not provide support for the critical significance of the concentration of PVA is within the instantly claimed range of 50 to 73% by weight in order to increase the selectivity for methyl acetate, see MPEP 716.02(e).
In addition, newly added claim 32 states “wherein when the polymer binder is polyvinyl alcohol (PVA), a content of the polymer binder is in a range of 9 to 73% by weight, based on a total weight of the support and the ferrierite zeolite catalyst particles”. Further detailing the range of PVA between 50-73% is not critically significant.
For the reasons indicated above, applicant’s above arguments are not persuasive.
New Rejections Based on Amendments to the Claims in the reply filed on 04 December 2025 and the RCE filed on 22 December 2025
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.
Claim 8 is rejected under 35 U.S.C. 112(d) 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.
Claim 8 depends from claim 1. Claim 1 limits the polymer binder to PVA. Claim 8 states “wherein the polymer binder has at least one functional group selected from a group consisting of a methoxyl group (CH3O-), a carboxyl group (-COOH), glycerate (C3H5O4-) and a hydroxyl group (-OH)”. PVA contains a hydroxyl group (-OH). PVA does not contain a methoxyl group (CH3O-), a carboxyl group (-COOH), or glycerate (C3H5O4-). Therefore, claim 8 broadens the polymer binder of claim 1 and fails to further limit the subject matter of the claim upon which it depends because PVA with a hydroxyl group is already stated in claim 1.
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.
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
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 1-4, 8, and 12 are newly rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO2021107992, published 03 June 2021, hereinafter Peters) in view of Rende et al. (US20100092681, published 15 April 2010, hereinafter Rende) and Thangaraju Murugan et al. (WO2021064703, published 08 April 2021, hereinafter Thangaraju).
Peters is in the known prior art field of “compositions including metal-organic framework materials and a polymeric binder”, see Abstract, where the composition is used as a catalyst to “catalyze various reactions”, see Paras. [0071]-[0075].
Regarding the limitations of instant application claims 1, 2, 4, and 8, Peters teaches a catalyst comprising a MOF material support, such as “HKUST-1, MOF-74, MIL-100, ZIF-7, ZIF-8, ZIF-90, UiO-66, UiO-67, MOF-808 or MOF- 274”, all inherently having a first density, see Paras. [0014]-[0016];[0071]-[0075], and MPEP 2112, meeting:
The support having a first density in instant application claim 1;
The catalyst comprises “a binder including at least one polymer”, see Para. [0014], such as “polyvinyl alcohol” (PVA) and derivatives thereof, see Paras. [0031]-[0033];[0035], where the binder includes additives, such as “silica-alumina”, and additives suitable “for adhesion of powdery materials, such as oxides, of silicon, of aluminum, of boron, of phosphorus, of zirconium and/or of titanium”, i.e., zeolites are mixtures of metals, aluminum, and silicates that are on the surface of the catalyst bond by the binder in order to bind materials, see Paras. [0044]-[0048]. The PVA binder is in an amount of “from 1 wt% to 99 wt%, such as from 1 wt% to 90 wt%, from 1 wt% to 50 wt%, or from 1 wt% to 20 wt% of the polymeric binder (including optional additives)”, the zeolite metal, aluminum, and silicate additive is in an amount “of from 0 wt% to 20 wt% based on the total weight of the polymeric binder”, and the MOF is in an amount “from 1 wt% to 99 wt%, such as from 5 wt% to 99 wt%, from 7 wt% to 99 wt%, or from 10 wt% to 95 wt% of the MOF material”, where the zeolite materials inherently have a second density smaller than the density of the MOF, see Paras. [0048];[0052]-[0056] and MPEP 2112, meeting:
The PVA binder on a surface of the support; zeolite catalyst particles bound to the surface of the support via the PVA binder and the zeolite catalyst particles having a second density smaller than the first density, the PVA is in a concentration to bind the zeolite catalyst particles to the surface of the support, the specific PVA binder, and within the concentration of the PVA binder based on a total weight of the support and the zeolite catalyst particles in instant application claim 1;
The zeolite catalyst particles are on an outside surface of the catalyst in instant application claim 2;
Within the weight ratio of the support to the zeolite catalyst particles in instant application claim 4; and,
The PVA polymer binder has a hydroxyl group in instant application claim 8.
In regard to the instant application claim 1 preamble statement of “for carbonylation of dimethyl ether”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “for carbonylation of dimethyl ether” is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
In addition, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use is not considered a claim limitation.
Peters does not teach:
The instant application claim 1 limitations of a polymer binder coating a surface of the support; and ferrierite zeolite catalyst particles bound to the surface of the support, the ferrierite zeolite catalyst particles, and the ferrierite zeolite catalyst particles having a second density smaller than the first density;
The instant application claims 2 and 4 ferrierite zeolite catalyst particles; and,
The limitations of instant application claim 3.
Rende is in the known prior art field of catalyst compositions to “catalyze various reactions” comprising “an inner core such as a cordierite core and an outer layer comprising a refractory inorganic oxide, a fibrous component and an inorganic binder”, where the “layered composition is prepared by coating the inner core with a slurry comprising the refractory inorganic oxide, fibrous component, an inorganic binder precursor and an organic binding agent such as polyvinyl alcohol”, see Abstract; Paras. [0003];[0009]-[0010];[0015];[0026];[0041];[0050]-[0062], and is applied to teach the same.
Regarding the limitations of instant application claims 1, 2, and 4, Rende teaches a catalyst comprising “an inner core” of “metals, refractory inorganic oxides and silicon carbide” such as “non-limiting examples being aluminas, cordierite, mullite, montmorillonite, silica, zirconia, titania and mixtures thereof’, “zeolites include, but are not limited to, zeolite Y … mordenite”, and “cerium”, i.e., an inner core catalyst mixture of zeolite Y, silica, alumina, montmorillonite, titania, and cerium inherently having a first density, see Paras. [0012];[0015];[0034];[0036] and MPEP 2112. As evidenced by Thangaraju, “an FCC catalyst composition comprising Y type zeolite, silicon oxide, alumina, at least one clay, at least one rare earth metal oxide, and at least one metal oxide” with “a bulk density in the range of 0.65 to 0.80 g/cc”, see Thangaraju, Pg. 3, Lns. 23-25; Pg. 6, Lns. 27-30, i.e., the inner core FCC catalyst of Rende may have a bulk density of 650 kg/m3 to 800 kg/m3, meeting the support having a first density in instant application claim 1;
The inner core is “coated with a layer of a refractory inorganic oxide which is different from the inorganic oxide which may be used as the inner core and will be referred to as the outer refractory inorganic oxide”, such as ferrierite zeolite, with “an apparent bulk density of about 0.2 g/ml to about 1.8 g/ml”, applied using a slurry of “an organic bonding agent which aids in the adhesion of the layer material to the inner core”, such as “but are not limited to polyvinyl alcohol (PVA), hydroxy propyl cellulose, methylcellulose and carboxy methylcellulose”, see Paras. [0015]-[0017];[0020], meeting:
A polymer binder coating a surface of the support; and ferrierite zeolite catalyst particles bound to the surface of the support and the ferrierite zeolite catalyst particles in instant application claim 1;
The ferrierite zeolite catalyst particles having a second density smaller than the first density in instant application claim 1; and,
The specific ferrierite zeolite catalyst particles in instant application claim 2 and in instant application claim 4.
Regarding the limitations of instant application claim 3, Rende teaches a “spherical inner core is preferred”, where the inner core is coated with ferrierite with the slurry “by means such as rolling, dipping, spraying, etc.”, such as “using a fixed fluidized bed of inner core particles and spraying the slurry into the bed to coat the particles evenly”, and the catalytic components are dispersed on the surface of the outer layer of the catalyst, i.e., ferrierite is the shell coated over the core, see Paras. [0014]-[0017];[0022];[0036], meeting the limitations in instant application claim 3.
Peters and Rende do not teach the limitations of instant application claim 12.
Regarding the limitations of instant application claim 12, Rende teaches an inner core catalyst mixture of zeolite Y, silica, alumina, montmorillonite, titania, and cerium inherently having a first density, see Paras. [0012];[0015];[0034];[0036] and MPEP 2112.
Thangaraju is in the known prior art field of “an FCC catalyst composition and a process for its preparation”, see Abstract, where ““fluid catalytic cracking” (FCC) is used to convert the high-boiling, high-molecular weight hydrocarbon fractions of petroleum crude oils to more valuable gasoline, olefinic gases and other products”, see Pg. 2, Lns. 14-24, the FCC catalyst comprises “Y type zeolite, silicon oxide, alumina, at least one clay, at least one rare earth metal oxide, and at least one metal oxide”, see Pg. 3, Lns. 23-25, and is applied to teach the same.
Regarding the limitations of instant application claim 12, Thangaraju teaches “an FCC catalyst composition comprising Y type zeolite, silicon oxide, alumina, at least one clay, at least one rare earth metal oxide, and at least one metal oxide” with “a bulk density in the range of 0.65 to 0.80 g/cc”, see Pg. 3, Lns. 23-25; Pg. 6, Lns. 27-30, i.e., the inner core FCC catalyst of Rende may have a bulk density of 650 kg/m3 to 800 kg/m3, meeting within the range of the first density in instant application claim 12.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the binder and zeolite particles of Peters to use the binder incorporating ferrierite zeolite particles to cover an inner core having a density larger than the zeolite particles as taught by Rend and Thangaraju with a reasonable predictability of success for the purpose of efficiently improving the porosity, activity, attrition resistance, and selectivity of the catalyst and improving the adhesion of ferrierite zeolite additives to the catalyst, see Rende, Paras. [0015];[0020];[0050];[0061]; Thangaraju, Pg. 5, Lns. 21-22; Pg. 12, Lns. 3-6.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the binder and zeolite particles of Peters by applying the known technique of the binder incorporating ferrierite zeolite particles to cover an inner core having a density larger than the zeolite particles as taught by Rend and Thangaraju with a reasonable predictability of success for the purpose of efficiently improving the porosity, activity, attrition resistance, and selectivity of the catalyst and improving the adhesion of ferrierite zeolite additives to the catalyst, see Rende, Paras. [0015];[0020];[0050];[0061]; Thangaraju, Pg. 5, Lns. 21-22; Pg. 12, Lns. 3-6; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Peters, Rend and Thangaraju all teach zeolite catalysts within the conversion of carbohydrates into useful chemicals and fuels industry, a person of ordinary skill in the art has good reason to modify Peters by relying upon Rend and Thangaraju before the effective filing date of the claimed invention for knowledge generally available within the conversion of carbohydrates to useful chemicals and fuels art regarding the catalyst, see MPEP 2143 B & G and 2141, for the benefit of efficiently improving the porosity, activity, attrition resistance, and selectivity of the catalyst and improving the adhesion of ferrierite zeolite additives to the catalyst, see Rende, Paras. [0015];[0020];[0050];[0061]; Thangaraju, Pg. 5, Lns. 21-22; Pg. 12, Lns. 3-6; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as catalyst binder coating of ferrierite zeolite particles, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Claim 9 is newly rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO2021107992, published 03 June 2021, hereinafter Peters) in view of Rende et al. (US20100092681, published 15 April 2010, hereinafter Rende) and Thangaraju Murugan et al. (WO2021064703, published 08 April 2021, hereinafter Thangaraju), as applied to claims 1-4, 8, and 12 in the 35 USC 103 rejection above, in further view of Ghosh et al. (US20140080696, published 20 March 2014, hereinafter Ghosh).
Peters, Rende, and Thangaraju do not teach the limitations of instant application claim 9.
Ghosh is in the known prior art field of a catalyst for the conversion of hydrocarbons into useful chemicals and fuels produced by “forming a zeolite shaped body is carried out by preparing an aqueous mixture containing a zeolite, a silica binder material and an extrusion aid”, where the “extrusion aid is at least one of PVAc-PVA1 (80-89) and polyacrylamide”, see Abstract; Para. [0044], the zeolite is ferrierite, see Para. [0036], and is applied to teach the same.
Regarding the limitations of instant application claim 9, Ghosh teaches the molecular weight of the binder, such as PVA containing binders, is “from 500 to 500,000, and in others the PVAc-PVA1 (80-89) may have an average molecular weight (MW) of from 10,000 to 200,000”, see Paras. [0007];[0050];[0060]-[0061]; Tables 1-2, meeting within the range for PVA binder molecular weight in instant application claim 9.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the binder and zeolite particles of Peters to use the PVA binder molecular weights as taught by Ghosh with a reasonable predictability of success for the purpose of efficiently increasing “the mechanical or crush strength of the [catalyst] made from the zeolite”, see Ghosh, Paras. [0050]-[0051];[0060]-[0061]; Tables 1-2.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the binder and zeolite particles of Peters by applying the known technique of the PVA binder molecular weights as taught by Ghosh with a reasonable predictability of success for the purpose of efficiently increasing “the mechanical or crush strength of the [catalyst] made from the zeolite”, see Ghosh, Paras. [0050]-[0051];[0060]-[0061]; Tables 1-2; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Peters and Ghosh both teach zeolite catalysts with PVA binders within the conversion of carbohydrates into useful chemicals and fuels industry, a person of ordinary skill in the art has good reason to modify Peters by relying upon Ghosh before the effective filing date of the claimed invention for knowledge generally available within the conversion of carbohydrates to useful chemicals and fuels art regarding the catalyst PVA binder, see MPEP 2143 B & G and 2141, for the benefit of efficiently increasing “the mechanical or crush strength of the [catalyst] made from the zeolite”, see Ghosh, Paras. [0050]-[0051];[0060]-[0061]; Tables 1-2; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as the molecular weight of PVA, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the molecular weight of the PVA, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Claims 10 and 11 are newly rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO2021107992, published 03 June 2021, hereinafter Peters) in view of Rende et al. (US20100092681, published 15 April 2010, hereinafter Rende) and Thangaraju Murugan et al. (WO2021064703, published 08 April 2021, hereinafter Thangaraju), as applied to claims 1-4, 8, and 12 in the 35 USC 103 rejection above, in further view of Abrevaya et al. (WO2006098712, published 21 September 2006, hereinafter Abrevaya).
Peters, Rende, and Thangaraju do not teach the limitations of instant application claim 10.
Peters and Thangaraju do not teach the limitations of instant application claim 11.
Regarding the limitations of instant application claim 11, Rende teaches the “inner core whether spherical or not has an effective average diameter of about 0.05 mm to about 15 mm and preferably from about 0.5 mm to about 10 mm.”, i.e., about 50 micron to about 10,000 micron, see Para. [0014], meeting within the range of the size of the support in instant application claim 11.
Abrevaya is in the known prior art field of ferrierite zeolite catalysts for the conversion of hydrocarbons into useful fuels and chemicals comprising a molecular sieve, a desired silica to alumina ratio, pore size, and crystal size “to limit production of aromatics in the cracking process”, see Abstract; Paras. [0002]-[0005];[0022]-[0025];[0030];[0036];[0052], and is applied to teach the same.
Regarding the limitations of instant application claims 10 and 11, Abrevaya teaches the ferrierite catalyst “is a crystal having substantially non-intersecting channels where the crystal has a dimension between 0.1 micrometers and 0.3 micrometers” “further comprises a composition with a silicon to aluminum ratio from 20 to 200”, such as “the low ratio ferrierite with relatively large crystallite size of 1-2 micrometers, with a low ratio ferrierite having a small crystallite size of 0.2 micrometers”, see Paras. [0007]-[0009];[0022];[0051]-[0052]; Table 4, meeting:
Within the ferrierite particle Si/Al range in instant application claim 10; and,
Within the size range of the ferrierite particle in instant application claim 11.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the catalyst size and zeolite particles of Peters to use the catalysts support size of Rende and the ferrierite Si/Al ratio and particle size as taught by Abrevaya with a reasonable predictability of success for the purpose of efficiently improving the conversion of hydrocarbons with catalytic “zeolites having pores of sufficient size to admit molecules from the [hydrocarbon] feed while not too large to promote the formation of aromatics or hydrogen transfer reactions with large transition states”, see Abrevaya, Paras. [0023];[0033];[0052].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the catalyst size and zeolite particles of Peters by applying the known technique of the catalysts support size of Rende and the ferrierite Si/Al ratio and particle size as taught by Abrevaya with a reasonable predictability of success for the purpose of efficiently improving the conversion of hydrocarbons with catalytic “zeolites having pores of sufficient size to admit molecules from the [hydrocarbon] feed while not too large to promote the formation of aromatics or hydrogen transfer reactions with large transition states”, see Abrevaya, Paras. [0023];[0033];[0052]; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Peters, Rende, and Abrevaya all teach zeolite catalysts within the conversion of carbohydrates into useful chemicals and fuels industry, a person of ordinary skill in the art has good reason to modify Peters by relying upon Rende and Abrevaya before the effective filing date of the claimed invention for knowledge generally available within the conversion of carbohydrates to useful chemicals and fuels art regarding the catalyst, see MPEP 2143 B & G and 2141, for the benefit of efficiently improving the conversion of hydrocarbons with catalytic “zeolites having pores of sufficient size to admit molecules from the [hydrocarbon] feed while not too large to promote the formation of aromatics or hydrogen transfer reactions with large transition states”, see Abrevaya, Paras. [0023];[0033];[0052]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as a zeolite Si/Al ratio, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Changes in configuration, shape, and/or size, such as the size of the catalyst particles, is a matter of choice which a person of ordinary skill in the art would have found obvious, such as finding the optimal of the catalyst for the preferred pore size, absent persuasive evidence that the particular configuration as claimed was significant, see MPEP 2144.04 IV.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as catalyst size, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Claims 27-34, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO2021107992, published 03 June 2021, hereinafter Peters) in view of Rende et al. (US20100092681, published 15 April 2010, hereinafter Rende) and Thangaraju Murugan et al. (WO2021064703, published 08 April 2021, hereinafter Thangaraju), in further view of Abrevaya et al. (WO2006098712, published 21 September 2006, hereinafter Abrevaya).
Peters is in the known prior art field of “compositions including metal-organic framework materials and a polymeric binder”, see Abstract, where the composition is used as a catalyst to “catalyze various reactions”, see Paras. [0071]-[0075].
Regarding the limitations of instant application claims 27, 28, 30-32, and 34, Peters teaches a catalyst comprising a MOF material support, such as “HKUST-1, MOF-74, MIL-100, ZIF-7, ZIF-8, ZIF-90, UiO-66, UiO-67, MOF-808 or MOF- 274”, all inherently having a first density, see Paras. [0014]-[0016];[0071]-[0075], and MPEP 2112, meeting:
The support having a first density in instant application claim 27;
The catalyst comprises “a binder including at least one polymer”, see Para. [0014], such as “polyvinyl alcohol” (PVA) and derivatives thereof, see Paras. [0031]-[0033];[0035], where the binder includes additives, such as “silica-alumina”, and additives suitable “for adhesion of powdery materials, such as oxides, of silicon, of aluminum, of boron, of phosphorus, of zirconium and/or of titanium”, i.e., zeolites are mixtures of metals, aluminum, and silicates that are on the surface of the catalyst bond by the binder in order to bind materials, see Paras. [0044]-[0048]. The PVA binder is in an amount of “from 1 wt% to 99 wt%, such as from 1 wt% to 90 wt%, from 1 wt% to 50 wt%, or from 1 wt% to 20 wt% of the polymeric binder (including optional additives)”, the zeolite metal, aluminum, and silicate additive is in an amount “of from 0 wt% to 20 wt% based on the total weight of the polymeric binder”, and the MOF is in an amount “from 1 wt% to 99 wt%, such as from 5 wt% to 99 wt%, from 7 wt% to 99 wt%, or from 10 wt% to 95 wt% of the MOF material”, where the zeolite materials inherently have a second density smaller than the density of the MOF, see Paras. [0048];[0052]-[0056] and MPEP 2112, meeting:
The PVA binder on a surface of the support; zeolite catalyst particles bound to the surface of the support via the PVA binder and the zeolite catalyst particles having a second density smaller than the first density, the PVA is in a concentration to bind the zeolite catalyst particles to the surface of the support, the specific PVA binder, and within the concentration of the PVA binder based on a total weight of the support and the zeolite catalyst particles in instant application claim 27 and in instant application claim 32;
The zeolite catalyst particles are on an outside surface of the catalyst in instant application claim 28;
Within the weight ratio of the support to the zeolite catalyst particles in instant application claim 30;
The specific polymer binder PVA in instant application claim 31 and in instant application claim 32; and,
The PVA polymer binder has a hydroxyl group in instant application claim 34.
In regard to the instant application claim 27 preamble statement of “for carbonylation of dimethyl ether”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “for carbonylation of dimethyl ether” is regarded as an intended use of the claimed catalyst; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
In addition, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations is of no significance to claim construction, see MPEP 2111.02 II. Therefore, the intended use is not considered a claim limitation.
Regarding the limitations of instant application claim 33, Peters teaches the polymer binder is “methyl-cellulose based binders”, such as “carboxymethylcellulose, methylated cellulose”, see Paras. [0032];[0108]-[0118], Table 1, in an amount of “from 1 wt% to 99 wt%, such as from 1 wt% to 90 wt%, from 1 wt% to 50 wt%, or from 1 wt% to 20 wt% of the polymeric binder (including optional additives)”, the zeolite metal, aluminum, and silicate additive is in an amount “of from 0 wt% to 20 wt% based on the total weight of the polymeric binder”, and the MOF is in an amount “from 1 wt% to 99 wt%, such as from 5 wt% to 99 wt%, from 7 wt% to 99 wt%, or from 10 wt% to 95 wt% of the MOF material”, see Para. [0047];[0052]-[0056], meeting the specific methyl cellulose binder and within the range in instant application claim 33.
Peters does not teach:
The instant application claim 27 limitations of a polymer binder coating a surface of the support, ferrierite zeolite catalyst particles bound to the surface of the support, the ferrierite zeolite catalyst particles, and the ferrierite zeolite catalyst particles having a second density smaller than the first density;
The instant application claims 28, 30, 32, and 33 ferrierite zeolite catalyst particles; and,
The limitations of instant application claim 29.
Rende is in the known prior art field of catalyst compositions to “catalyze various reactions” comprising “an inner core such as a cordierite core and an outer layer comprising a refractory inorganic oxide, a fibrous component and an inorganic binder”, where the “layered composition is prepared by coating the inner core with a slurry comprising the refractory inorganic oxide, fibrous component, an inorganic binder precursor and an organic binding agent such as polyvinyl alcohol”, see Abstract; Paras. [0003];[0009]-[0010];[0015];[0026];[0041];[0050]-[0062], and is applied to teach the same.
Regarding the limitations of instant application claims 27, 28, 30, 32, and 33, Rende teaches a catalyst comprising “an inner core” of “metals, refractory inorganic oxides and silicon carbide” such as “non-limiting examples being aluminas, cordierite, mullite, montmorillonite, silica, zirconia, titania and mixtures thereof’, “zeolites include, but are not limited to, zeolite Y … mordenite”, and “cerium”, i.e., an inner core catalyst mixture of zeolite Y, silica, alumina, montmorillonite, titania, and cerium inherently having a first density, see Paras. [0012];[0015];[0034];[0036] and MPEP 2112. As evidenced by Thangaraju, “an FCC catalyst composition comprising Y type zeolite, silicon oxide, alumina, at least one clay, at least one rare earth metal oxide, and at least one metal oxide” with “a bulk density in the range of 0.65 to 0.80 g/cc”, see Thangaraju, Pg. 3, Lns. 23-25; Pg. 6, Lns. 27-30, i.e., the inner core FCC catalyst of Rende may have a bulk density of 650 kg/m3 to 800 kg/m3, meeting the support having a first density in instant application claim 27;
The inner core is “coated with a layer of a refractory inorganic oxide which is different from the inorganic oxide which may be used as the inner core and will be referred to as the outer refractory inorganic oxide”, such as ferrierite zeolite, with “an apparent bulk density of about 0.2 g/ml to about 1.8 g/ml”, applied using a slurry of “an organic bonding agent which aids in the adhesion of the layer material to the inner core”, such as “but are not limited to polyvinyl alcohol (PVA), hydroxy propyl cellulose, methylcellulose and carboxy methylcellulose”, see Paras. [0015]-[0017];[0020], meeting:
A polymer binder coating a surface of the support; and ferrierite zeolite catalyst particles bound to the surface of the support and the ferrierite zeolite catalyst particles in instant application claim 27;
The ferrierite zeolite catalyst particles having a second density smaller than the first density in instant application claim 27; and,
The specific ferrierite zeolite catalyst particles in instant application claim 28, in instant application claim 30, instant application claim 32, and in instant application claim 33.
Regarding the limitations of instant application claim 29, Rende teaches a “spherical inner core is preferred”, where the inner core is coated with ferrierite with the slurry “by means such as rolling, dipping, spraying, etc.”, such as “using a fixed fluidized bed of inner core particles and spraying the slurry into the bed to coat the particles evenly”, and the catalytic components are dispersed on the surface of the outer layer of the catalyst, i.e., ferrierite is the shell coated over the core, see Paras. [0014]-[0017];[0022];[0036], meeting the limitations in instant application claim 29.
Peters and Rende do not teach the limitations of instant application claim 37.
Regarding the limitations of instant application claim 37, Rende teaches an inner core catalyst mixture of zeolite Y, silica, alumina, montmorillonite, titania, and cerium inherently having a first density, see Paras. [0012];[0015];[0034];[0036] and MPEP 2112.
Thangaraju is in the known prior art field of “an FCC catalyst composition and a process for its preparation”, see Abstract, where ““fluid catalytic cracking” (FCC) is used to convert the high-boiling, high-molecular weight hydrocarbon fractions of petroleum crude oils to more valuable gasoline, olefinic gases and other products”, see Pg. 2, Lns. 14-24, the FCC catalyst comprises “Y type zeolite, silicon oxide, alumina, at least one clay, at least one rare earth metal oxide, and at least one metal oxide”, see Pg. 3, Lns. 23-25, and is applied to teach the same.
Regarding the limitations of instant application claim 37, Thangaraju teaches “an FCC catalyst composition comprising Y type zeolite, silicon oxide, alumina, at least one clay, at least one rare earth metal oxide, and at least one metal oxide” with “a bulk density in the range of 0.65 to 0.80 g/cc”, see Pg. 3, Lns. 23-25; Pg. 6, Lns. 27-30, i.e., the inner core FCC catalyst of Rende may have a bulk density of 650 kg/m3 to 800 kg/m3, meeting within the range of the first density in instant application claim 37.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the binder and zeolite particles of Peters to use the binder incorporating ferrierite zeolite particles to cover an inner core having a density larger than the zeolite particles as taught by Rend and Thangaraju with a reasonable predictability of success for the purpose of efficiently improving the porosity, activity, attrition resistance, and selectivity of the catalyst and improving the adhesion of ferrierite zeolite additives to the catalyst, see Rende, Paras. [0015];[0020];[0050];[0061]; Thangaraju, Pg. 5, Lns. 21-22; Pg. 12, Lns. 3-6.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the binder and zeolite particles of Peters by applying the known technique of the binder incorporating ferrierite zeolite particles to cover an inner core having a density larger than the zeolite particles as taught by Rend and Thangaraju with a reasonable predictability of success for the purpose of efficiently improving the porosity, activity, attrition resistance, and selectivity of the catalyst and improving the adhesion of ferrierite zeolite additives to the catalyst, see Rende, Paras. [0015];[0020];[0050];[0061]; Thangaraju, Pg. 5, Lns. 21-22; Pg. 12, Lns. 3-6; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Peters, Rend and Thangaraju all teach zeolite catalysts within the conversion of carbohydrates into useful chemicals and fuels industry, a person of ordinary skill in the art has good reason to modify Peters by relying upon Rend and Thangaraju before the effective filing date of the claimed invention for knowledge generally available within the conversion of carbohydrates to useful chemicals and fuels art regarding the catalyst, see MPEP 2143 B & G and 2141, for the benefit of efficiently improving the porosity, activity, attrition resistance, and selectivity of the catalyst and improving the adhesion of ferrierite zeolite additives to the catalyst, see Rende, Paras. [0015];[0020];[0050];[0061]; Thangaraju, Pg. 5, Lns. 21-22; Pg. 12, Lns. 3-6; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as catalyst binder coating of ferrierite zeolite particles, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Peters and Thangaraju do not teach:
The instant application claim 27 limitations of wherein a size of the support is in a range of 50 to 150 micron and a size of each of the ferrierite zeolite catalyst particles is in a range of 100 nm to 1 micron; and,
The limitations of instant application claim 36.
Regarding the limitations of instant application claim 27, Rende teaches the “inner core whether spherical or not has an effective average diameter of about 0.05 mm to about 15 mm and preferably from about 0.5 mm to about 10 mm.”, i.e., about 50 micron to about 10,000 micron, see Para. [0014], meeting within the range of the size of the support in instant application claim 27.
Abrevaya is in the known prior art field of ferrierite zeolite catalysts for the conversion of hydrocarbons into useful fuels and chemicals comprising a molecular sieve, a desired silica to alumina ratio, pore size, and crystal size “to limit production of aromatics in the cracking process”, see Abstract; Paras. [0002]-[0005];[0022]-[0025];[0030];[0036];[0052], and is applied to teach the same.
Regarding the limitations of instant application claims 27 and 36, Abrevaya teaches the ferrierite catalyst “is a crystal having substantially non-intersecting channels where the crystal has a dimension between 0.1 micrometers and 0.3 micrometers” “further comprises a composition with a silicon to aluminum ratio from 20 to 200”, such as “the low ratio ferrierite with relatively large crystallite size of 1-2 micrometers, with a low ratio ferrierite having a small crystallite size of 0.2 micrometers”, see Paras. [0007]-[0009];[0022];[0051]-[0052]; Table 4, meeting:
Within the ferrierite particle Si/Al range in instant application claim 36; and,
Within the size range of the ferrierite particle in instant application claim 27.
Peters and Thangaraju do not teach:
The instant application claim 27 limitations of wherein a ratio between the size of the support and the size of each of the ferrierite zeolite catalyst particles is in a range of 150:1 to 500:1.
Regarding the final ratio limitation in instant application claim 27, Rende teaches the size of the support is about 50 micron to about 10,000 micron, see Rende, Para. [0014], and Abrevaya teaches the size of the ferrierite catalyst particles are 0.2 micron to 1 micron, see Paras. [0051]-[0052]; Table 4, meeting within the ratio range of support to ferrierite particles in instant application claim 27.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the catalyst size and zeolite particles of Peters to use the catalysts support size of Rende and the ferrierite Si/Al ratio and particle size as taught by Abrevaya with a reasonable predictability of success for the purpose of efficiently improving the conversion of hydrocarbons with catalytic “zeolites having pores of sufficient size to admit molecules from the [hydrocarbon] feed while not too large to promote the formation of aromatics or hydrogen transfer reactions with large transition states”, see Abrevaya, Paras. [0023];[0033];[0052].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the catalyst size and zeolite particles of Peters by applying the known technique of the catalysts support size of Rende and the ferrierite Si/Al ratio and particle size as taught by Abrevaya with a reasonable predictability of success for the purpose of efficiently improving the conversion of hydrocarbons with catalytic “zeolites having pores of sufficient size to admit molecules from the [hydrocarbon] feed while not too large to promote the formation of aromatics or hydrogen transfer reactions with large transition states”, see Abrevaya, Paras. [0023];[0033];[0052]; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Peters, Rende, and Abrevaya all teach zeolite catalysts within the conversion of carbohydrates into useful chemicals and fuels industry, a person of ordinary skill in the art has good reason to modify Peters by relying upon Rende and Abrevaya before the effective filing date of the claimed invention for knowledge generally available within the conversion of carbohydrates to useful chemicals and fuels art regarding the catalyst, see MPEP 2143 B & G and 2141, for the benefit of efficiently improving the conversion of hydrocarbons with catalytic “zeolites having pores of sufficient size to admit molecules from the [hydrocarbon] feed while not too large to promote the formation of aromatics or hydrogen transfer reactions with large transition states”, see Abrevaya, Paras. [0023];[0033];[0052]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as a zeolite Si/Al ratio, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
Changes in configuration, shape, and/or size, such as the size of the catalyst particles, is a matter of choice which a person of ordinary skill in the art would have found obvious, such as finding the optimal of the catalyst for the preferred pore size, absent persuasive evidence that the particular configuration as claimed was significant, see MPEP 2144.04 IV.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as catalyst size, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Peters et al. (WO2021107992, published 03 June 2021, hereinafter Peters) in view of Rende et al. (US20100092681, published 15 April 2010, hereinafter Rende) and Thangaraju Murugan et al. (WO2021064703, published 08 April 2021, hereinafter Thangaraju), in further view of Abrevaya et al. (WO2006098712, published 21 September 2006, hereinafter Abrevaya), as applied to claims 27-34, 36, and 37 in the 35 USC 103 rejection above, in further view of Ghosh et al. (US20140080696, published 20 March 2014, hereinafter Ghosh).
Peters, Rende, Thangaraju, and Abrevaya do not teach the limitations of instant application claim 35.
Ghosh is in the known prior art field of a catalyst for the conversion of hydrocarbons into useful chemicals and fuels produced by “forming a zeolite shaped body is carried out by preparing an aqueous mixture containing a zeolite, a silica binder material and an extrusion aid”, where the “extrusion aid is at least one of PVAc-PVA1 (80-89) and polyacrylamide”, see Abstract; Para. [0044], the zeolite is ferrierite, see Para. [0036], and is applied to teach the same.
Regarding the limitations of instant application claim 35, Ghosh teaches the molecular weight of the binder, such as PVA containing binders, is “from 500 to 500,000, and in others the PVAc-PVA1 (80-89) may have an average molecular weight (MW) of from 10,000 to 200,000”, see Paras. [0007];[0050];[0060]-[0061]; Tables 1-2, meeting within the range for PVA binder molecular weight in instant application claim 35.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the binder and zeolite particles of Peters to use the PVA binder molecular weights as taught by Ghosh with a reasonable predictability of success for the purpose of efficiently increasing “the mechanical or crush strength of the [catalyst] made from the zeolite”, see Ghosh, Paras. [0050]-[0051];[0060]-[0061]; Tables 1-2.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the binder and zeolite particles of Peters by applying the known technique of the PVA binder molecular weights as taught by Ghosh with a reasonable predictability of success for the purpose of efficiently increasing “the mechanical or crush strength of the [catalyst] made from the zeolite”, see Ghosh, Paras. [0050]-[0051];[0060]-[0061]; Tables 1-2; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Peters and Ghosh both teach zeolite catalysts with PVA binders within the conversion of carbohydrates into useful chemicals and fuels industry, a person of ordinary skill in the art has good reason to modify Peters by relying upon Ghosh before the effective filing date of the claimed invention for knowledge generally available within the conversion of carbohydrates to useful chemicals and fuels art regarding the catalyst PVA binder, see MPEP 2143 B & G and 2141, for the benefit of efficiently increasing “the mechanical or crush strength of the [catalyst] made from the zeolite”, see Ghosh, Paras. [0050]-[0051];[0060]-[0061]; Tables 1-2; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as the molecular weight of PVA, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the molecular weight of the PVA, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Conclusion
No claims are allowed.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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