DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 26 November 2025 has been entered.
Response to Arguments
Applicant's arguments filed 26 November 2025 have been fully considered but they are not persuasive.
The declaration under 37 CFR 1.132 filed 26 November 2025 is insufficient to overcome the rejection of the claims based upon the Domokos reference as set forth in the last Office action because:
In the declaration, Dr. Zhan establishes that the 1.27 wt% increase in middle distillate production between comparative catalyst B and exemplary catalyst C is significant because it can generate more than one million USD per year for a hydrocracker having a capacity of 30,000 barrels per day (par. 9). Dr. Zhan further contends that Figures 1 & 2 show improved cold flow properties when using catalyst C in comparison to catalyst B (par. 10).
The office appreciates that this tends to show an improvement when comparing catalysts B and C. However, the evidence of record as a whole, including the data provided in the specification and the declaration by Dr. Zhan, is insufficient to patentably distinguish the instant claimed catalyst over the prior art of record (in particular, Domokos).
As a preliminary matter, Applicant has not addressed the very minor difference in performance which exists between comparative catalyst A and exemplary catalyst C. Like catalyst B, catalyst A also differs from exemplary catalyst C in that it does not contain a ZSM-12 component. However, the middle distillate selectivity differs between these two catalysts (A & C) by only 0.31 wt%. As stated in the final office action, this difference is small enough that it would be considered within the margin of error for different experiments using the same catalyst. While Dr. Zhan provides an analysis between catalysts B and C, those containing the largest difference, the declaration fails to explain the data between catalysts A and C and whether the very minor difference in performance amounts to anything of significant value.
Accordingly, there lacks sufficient evidence establishing that the presence of ZSM-12 alone accounts for significant improvements as alleged.
The office reiterates that Domokos discloses the zeolite component being one or more of zeolite Y, ZSM-5, ZSM-12, and zeolite beta, where the zeolite Y is USY (see [0026]-[0027], emphasis added). This is a very finite list of suitable zeolites, including explicit suggestions of combinations of the list. Applicant’s claimed three zeolites are in this small list of Domokos. In fact, Domokos’ list contains only one additional zeolite (ZSM-5) not required by the claims (however, neither is it excluded). Furthermore, Domokos discloses a combination of alumina and ASA as suitable refractory oxide material of the HDC catalyst (see [0032]). Accordingly, the office maintains the position that Domokos provides clear suggestion to include all of the five components as a HDC catalyst base.
Additionally, with respect to Applicant’s arguments, the office notes that Applicant refers to catalysts C and D as “catalysts consistent with the present claims.” However, as pointed out in the final office action, the office respectfully submits that this is not the case as it relates to catalyst D. Catalyst D does not contain a beta zeolite component and is therefore not consistent with the present claims. As such, the data used for comparison by the office include those presented between comparative catalysts A and B with that of exemplary catalyst C (in line with the scope of the instant claims).
Given that the evidence of record, when considered as a whole as it relates to the claimed invention, is insufficient to show unexpected results, the rejection based upon Domokos is maintained.
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 19-27 are rejected under 35 U.S.C. 103 as being unpatentable over Domokos et al (US 2006/0207917).
Regarding claim 19, Domokos discloses a hydrocracking catalyst comprising a base including a zeolite component and a refractory oxide component (see [0001]; [0015]). The zeolite component may be a combination of two or more different zeolite types, wherein suitable zeolites include USY, beta zeolite, and ZSM-12 (see [0024]; [0026]-[0027]). The refractory oxide component may be alumina and amorphous silica-alumina (ASA), including in combination (see [0032]).
Accordingly, Domokos discloses a HDC catalyst base which may include all of the claimed components. While the reference does not explicitly disclose an embodiment with all of the claimed species together in one catalyst, the reference makes very clear that such species may be used in combination. Arriving at a composition as claimed is therefore obvious in light of the Domokos disclosure, would be achieved by routine experimentation, and associated with a reasonable expectation of success.
Regarding claims 20-25, Domokos discloses wherein the zeolite content is in the range of 1 to 85 wt% and the refractory oxide content is in the range of from 0 to 70 wt% (see [0046]-[0047]). Determining the amounts of the individual components within the respective groups amounts to nothing more than routine experimentation for a person of ordinary skill in the art. Absent a showing of criticality of unexpected results, the claimed concentrations of the catalyst components are not considered to patentably distinguish over the cited prior art.
Regarding claim 26, Domokos discloses the catalyst comprising nickel and tungsten (see [0020]; [0139]).
Regarding claim 27, Domokos discloses a total amount of Group VIII (nickel) and Group VIB (tungsten) metals in the range of 25 to 50 wt%, with a molar ratio of Group VIII metal to Group VIB metal in the range of 0.5:1 to 3:1 (see [0043]-[0044]), thus corresponding the concentrations overlapping with those claimed.
Claims 28-34 are rejected under 35 U.S.C. 103 as being unpatentable over Domokos in view of Kijlstra et al (US 2015/0126791).
Regarding claims 28-30, Domokos does not disclose the hydrocracking catalyst comprising a modifying agent.
Kijlstra discloses a hydrocracking catalyst comprising zeolite, refractory oxide, and catalytically active metals (see Abstract). In particular, Kijlstra discloses that inclusion of citric acid can improve naphtha-selective catalytic properties, where citric acid is thought to facilitate metal deposition thereby balancing the hydrogenation activity and the cracking activity (see [0008]).
It would have been obvious to a person of ordinary skill in the art at the time of filing the instant claimed invention to modify the catalyst of Kijlstra to include a citric acid component, as suggested by Kijlstra, in order to balance hydrogenation activity and cracking activity when used in hydrocracking processes.
Regarding claims 31-34, Domokos discloses and/or suggests the catalyst components described above and Kijlstra provides the motivation for including a citric acid modifying agent, all of which applies to the catalyst encompassed by the aforementioned claims. The claims are directed to a product-by-process. 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. The office further notes that preparation techniques in line with those set forth in the claims are known in the art (see Domokos: [0062]; [0138]-[0139]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RENEE ROBINSON whose telephone number is (571)270-7371. The examiner can normally be reached Monday - Thursday 8:00a-5:00p and Friday 8:00a-2:00p.
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/Renee Robinson/Primary Examiner, Art Unit 1772