DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
The Claims are not amended.
Response to Arguments
Applicant's arguments filed 3/10/26 have been fully considered but they are not persuasive.
The remarks argue on pages 7-8, the following:
The Office Action relies on the Sigma-Aldrich "Tetraethyl orthotitanate" reference (hereinafter, "Sigma-Aldrich") to establish that tetraethyl orthotitanate used in Mueller is "colorless" and thus, allegedly, would inherently satisfy the APHA color number limitation of the claims. However, Sigma-Aldrich is an after-dated reference, published in 2024, whereas Applicant's effective filing date is 2022.
Under U.S. patent law, only references that qualify as prior art under 35 U.S.C. § 102 may be used in an obviousness rejection under 35 U.S.C. § 103.
Since Sigma-Aldrich is dated 2024 and Applicant's filing date is in 2022, Sigma-Aldrich does not qualify as prior art. Accordingly, its disclosure cannot be used to show what was known or obvious prior to Applicant's filing date. The Office Action's reliance on Sigma-Aldrich to characterize the properties of tetraethyl orthotitanate or to support any inherency argument is therefore improper and must be withdrawn.
Even if, arguendo, Sigma-Aldrich were proper prior art (which it is not), Applicants further traverse for at least the following reasons:
The Office Action asserts that since Sigma-Aldrich describes tetraethyl orthotitanate as"colorless," this necessarily means it has an APHA color number 300. However, "colorless" isa qualitative description and does not inherently or necessarily mean that every commercialsource of tetraethyl orthotitanate will always have an APHA color number 300. The APHAcolor scale is a quantitative analytical specification, and the mere mention of "colorless" does not establish the required identity or overlap.
The Office bears the burden of providing evidence or a sound technical rationale that the prior art product necessarily or inherently possesses the claimed property. To establish that a missing claim limitation is inherent, the Examiner must provide rationale or evidence making "clear that the missing descriptive matter is necessarily present in the thing described in the reference." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). As such, inherency may not be established by probabilities or possibilities and the mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. See also In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) ("The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish inherency of that result or characteristic."). This requirement that rationale or evidence be provided by the Examiner is separate and in addition to the requirement that the Examiner base the rejection on a reference that teaches a product appearing to be substantially identical to the claimed product. MPEP 2112(IV). Here, there is
no evidence that the tetraethyl orthotitanate used in Mueller had an APHA color number < 300. In fact, there is no indication Mueller considered the APHA color number at all, nor that this characteristic was recognized or relevant in the art at the time. Applicant's specification establishes that the APHA color number < 300 is critical to the claimed invention, impacting the performance and properties of the resulting zeolite.
The Office Action provides no evidence that a person of ordinary skill would have been motivated to select a titanium source based on APHA color number or that the property was recognized as desirable or relevant prior to the effective filing date. Without such motivation,there is no prima facie case of obviousness for selecting a source with APHA color number 300.
The remarks are respectfully not persuasive. Applicant first argues that the date of the Sigma-Aldrich reference has a date published after the effective filing date of the current application. However, since this reference was relied upon for evidenciary purposes and not for art/prior art purposes, the date of the reference is not required. See section 2124, where it states that: in certain circumstances, references cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. Some specific examples in which later publications showing factual evidence can be cited include situations where the facts shown in the reference are evidenced "that, as of an application’s filing date, undue experimentation would have been required, In re Corneil, 347 F.2d 563, 568, 145 USPQ 702, 705 (CCPA 1965).
In this case, Mueller describes use of a tetraethyl orthotitanate precursor for the titanium component of the zeolite (see example 1). Sigma-Alrich was relied upon to describe the properties of this composition, which includes that this is a colorless compound.
Next, Applicant argues that there is no evidenced that the tetrethyl orthotitanate used in Mueller has an APHA color number of equal to or less than 300.
The attached reference from Fischer Scientific describes a compound with a APHA or Hazen number of 300 (see title). According to the specification below, the color of this compound is a brown/yellow or yellow. The claims describe a color of 300 or less, which according to Fischer Scientific is a brown/yellow or yellow. Therefore, a colorless color of tetraethyl orthotitanate would have an APHA value of less than 300 since a APHA value of 300 is a brown/yellow or yellow color.
Applicant then argues that Mueller does not indicate any consideration of the APHA color number of the titanium precursor used. This is agreed. However, it has been held by the courts that 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).
Next, page 8 argues the following:
The Office further asserts that Mueller describes zeolite structures made of titanium silicate crystals with an MFI structure (see Mueller, page 5, line 1 of the attached machine translation), and that it teaches the use of tetraethyl orthotitanate as a titanium source, obtained from a commercial supplier, as referenced in example 1 (Mueller, example 1, and cross-reference to EP-A-376 453). However, a careful review of Mueller confirms that it merely states in example 1: "tetraethyl orthotitanate (Aldrich Chemical Company)." There is no further specification or pointer in Mueller to the use of a titanium source with an APHA colour number of< 300, as required by present claim 1. The mere mention of a commercial source without any indication of the APHA colour number provides no teaching or motivation to select a titanium compound of such specified purity.
It is further noted that Mueller itself identifies example 1 as a comparative example. It is established case law that a skilled person would not regard a comparative example as a basis for modifying the technical teaching or as a pointer towards the solution of the present invention. Therefore, example 1 in Mueller cannot be used as a valid starting point for the assessment of inventive step.
Moreover, none of the cited prior art, including Mueller, provides any indication or
suggestion that reducing the APHA colour number of the titanium-containing alcoholate to < 300 would impart improved catalytic properties to the titanium-containing zeolites produced therefrom. In contrast, the application as filed provides experimental evidence demonstrating that zeolites synthesized with titanium alcoholates having an APHA colour number < 300 exhibit superior catalytic performance, in particular increased selectivity.
The remarks are respectfully not persuasive. As mentioned in the rejection, Mueller does not state the APHA color number. Sigma-Alrich was supplemented to show this. As explained earlier, the courts have held that 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).
Furthermore, even if the reference uses the composition as a comparative example, the courts have held that disparaging references still disclose the knowledge in the art at the time of the filing date. “A reference is no less anticipatory if, after disclosing the invention, the reference then disparges it. The question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis”. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998)
Next, the remarks argue on page 9, the following:
Surprisingly, it has been found in the context of the present invention that the presence of specific coloured impurities at certain levels is detrimental to zeolite synthesis. Anatas (or extra- framework Ti) formation, which increases with higher APHA colour number, can be avoided by maintaining the APHA colour number at < 300. This is confirmed by the experimental section of the application. The APHA colour number is thus not simply an arbitrary measure of purity, but an essential feature that enables the production of titanium-containing zeolites with the desired properties, specifically by avoiding anatas formation and optimizing catalytic performance. The selection of the APHA threshold is therefore purposive and not arbitrary.
As mentioned earlier, it has been held by the courts that 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).
Next, the remarks argue the following:
It must also be emphasized that titanium alcoholates such as Ti(OEt)4, Ti(OPr)4, and Ti(OBu)4 are highly dynamic and reactive chemicals. Even if these are supplied as colourless, their APHA value can readily exceed 300 by the time they are employed in a reaction, since the APHA colour is not attributable to a consistent impurity within the product but can change due to various factors. As explained in the PCT application (see page 4, lines 20-29), citing to the PCT.
These remarks are respectfully not persuasive. The specification states that aldol condensation products contribute to the color and interfere in the synthesis of the zeolitic material (see published specification, para. 14). Also, in example 1 of the specification, tests were conducted to show the correlation between APHA color and organic impurities (see published specification, para. 135-136). It was shown that the organic impurities were related to the impurities in the sample (see table 1), where the lower the impurities, the lower the APHA number.
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.
Claim(s) 15, 17, 25, 29, 30, 31, 32, 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mueller (EP 0543247), English translation, and in view of by Sigma-Aldrich “Tetraethyl orthotitanate”.
Claim 15 is a composition claim with product-by-process features. Therefore, the product-by-process features will be treated below.
Mueller describes a zeolite structure made up of titanium silicate crystals (title) with an MFI structure (page 3, last para). The zeolite includes a SiO2-containing mixture (abstract) with the titanium compound (abstract). This would result in a zeolite with Si, O and Ti.
The rest of the claim include product-by-process features. Nonetheless, Mueller teaches use of tetraethyl orthotitanate as the titanium source obtained from a commercial source (see example 1).
As to the APHA color number, Sigma-Alrich, a commercial seller of chemical compounds, describes the properties of the tetraethyl orthotitanate (see attached). The reference explains that tetraethyl orthotitanate has a colorless appearance (see section 9.1, a, color).
Therefore, since tetraethyl orthotitanate is known to have a colorless appearance, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ commercially available source of tetraethyl orthotitanate, which Sigma-Alrich explains is colorless for use in the production of the MFI of Meuller because Meuller describes obtaining this compound commercially and Sigma-Alrich describes its known properties.
Although Meuller does not explicitly teach that the APHA color number of the titanium containing compound is less than or equal to 300, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Mueller and Sigma-Alrich meets the requirements of the claimed product, Mueller and Sigma-Alrich clearly meets the requirements of the present claim.
As to Claim 17, the compound made in Mueller uses only tetraethyl orthotitanate as the titanium source in example 1. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the Ti compound used is about 100% of the overall weight of the Ti containing compound used.
As to Claim 25, Mueller explains in the prior art that it is known to take titanium zeolite and combine it with inert binders in a molding step to make a new product (page 2, para. 5).
As to Claims 29, 30 and 31, these are all intended use claims. Therefore, since Meuller describes the same composition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would be able to be used in the same way.
As to Claim 32, Meuller describes formation of an MFI zeolite (see above). Since their zeolite is a titanium silicate (see example 1), It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that it would be substantially free of titanium oxide in the anatase-form.
As to Claim 33, the claims further limits the zeolite to be a MWW-framework, which is an optional embodiment of claim 15 (i.e. MFI or MWW) and therefore not required. As such, claim 33 is rejected based on identical/substantially identical reasons as claim 15.
Conclusion
THIS ACTION IS MADE FINAL. 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 SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fung Coris can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 April 15, 2026
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