DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending in the instant application.
Priority
This application is a U.S. national stage entry of PCT international application no. PCT/CN2021/102013, filed on June 24, 2021, which claims the priority of Chinese patent application No. 202010590438.5, filed on June 24, 2020.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 12/23/2022, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election with traverse of Group I (i.e. claims 1-5) in the reply filed by Applicant’s representative Allen Xue on 10/31/2025 is acknowledged. Applicant traverses the lack unity of restriction requirement on the ground that D1 (CN101885493) discloses a method of synthesizing a ZSM-5/ core-shell zeolite molecular sieve without comprising phosphorus and the metal in the core or the shell, wherein the metal is selected from Fe, Co, Ni, Ga, Zn, Cu, Ti, K, Mg or combinations thereof, and is also silent about the NMR characteristics of claim 1 of the present application as well as the technical effects thereof; while D2 (CN103785457) discloses the phosphorus and transition metal-containing β molecular sieve, but not a core-shell molecular sieve with different at least in the 4 aspects. Therefore, β molecular sieve of D2 does not contribute to the technical effects of the present invention.
Applicant’s traverse has been fully considered, but is not persuasive. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). For the instant case, D1 and D2 both teach using zeolite molecular sieve as catalysts for carbohydron cracking. The instantly claimed phosphorus- and metal-containing core-shell molecular sieve is also used as a catalyst for carbohydron cracking. D1, D2, and Applicant’s invention are all used for the same application. D1 teaches a ZSM-5/ core-shell zeolite molecular sieve, and D2 teaches by including phosphorus and transition metal in a zeolite such as β molecular sieve, the catalytic activity of the zeolite for carbohydron cracking gets improved. Therefore, the difference between Applicant’s claim 1 and D1 is further taught and/or suggested by D2. One ordinary skilled in the art would have been motivated to modify the ZSM-5/ core-shell zeolite molecular sieve of D1 by further including phosphorus and transition metal in a zeolite of D2 to further improve its functionality as a catalyst of carbohydron cracking. Accordingly, D1 in view of D2 would have rendered Applicant’s invention obvious.
In terms of Applicant’s argument that D1 is silent about the NMR characteristics of claim 1 of the present application as well as the technical effects thereof, D2 discloses very similar NMR characteristics. Furthermore, the NMR characteristics of claim 1 as well as the technical effects thereof would have been inherited properties of the otherwise obvious product of the zeolite molecular sieve disclosed by D1 in view of D2 because a product is inseparable from its properties. Therefore, the restriction requirement is indeed appropriate, maintained, and made FINAL.
Status of the Claims
Claims 6-20 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) due to the restriction requirement. Claims 1-5 are under examination on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Specifically, claims 1-5 contain the term “preferably”, which renders the claims indefinite because it is unclear whether the narrower scope of the limitation (e.g., a phosphorus content, calculated as P2O5 of preferably 2-8 wt% in claim 1) following the phrase is part of the broader scope of the limitation of the phosphorus content of 1-10 wt%. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The term “preferably” also appears for defining an X-ray diffraction pattern in claim 2; a mass ratio of the core to the shell of the phosphorus- and metal-containing core-shell molecular sieve in claim 3; a proportion of the specific surface area of pores with a pore diameter of 2-50 nm to the total specific surface area in claim 4; and a shell coverage of the core-shell molecular sieve in claim 5. Therefore, claims 1-5 are indefinite.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over CN101885493 (“the `493 publication”) to Kong et al. in view of CN103785457 (“the `457 publication”) to Chen et al.
Applicant’s claim 1 is drawn to a phosphorus- and metal-containing core-shell molecular sieve, having a core composed of a ZSM-5 molecular sieve, and a shell composed of a β-molecular sieve, wherein, based on the dry weight of the phosphorus- and metal-containing core-shell molecular sieve, the core-shell molecular sieve has a phosphorus content, calculated as P2O5, of 1-10 wt%, preferably 2-8 wt%, and a metal content, calculated as metal oxide, of 0.1-10 wt%, preferably 0.2-7 wt%; and the phosphorus- and metal-containing core-shell molecular sieve shows an 27Al MAS NMR with a ratio of the area of a resonance signal peak at a chemical shift of 39+3 ppm to the area of a resonance signal peak at a chemical shift of 54+3 ppm of 0.01-ꝏ : 1, preferably 0.3-ꝏ : 1, and preferably, the metal is selected from Fe, Co, Ni, Ga, Zn, Cu, Ti, K, Mg or combinations thereof.
Determination of the scope and content of the prior art (MPEP §2141.01)
The `493 publication [0002-0004, 0011-0016, and 0036-0038] discloses a ZSM-5/ core-shell zeolite molecular sieve used for catalytic cracking, alkane isomerization, catalytic reforming and toluene disproportionation, and a method for preparing the ZSM-5/ core-shell zeolite molecular sieve thereof.
The `457 publication [0002] discloses a cracking aid for increasing the concentration of low-carbon olefins in catalytic cracking liquefied petroleum gas, and more specifically, to a cracking aid comprising phosphorus-containing and transition metal β-zeolites. The `457 publication [0013] discloses a cracking aid containing phosphorus and transition metals increases the concentration of low-carbon olefins in catalytic cracking. When applied to catalytic cracking, the aid can increase the concentration of ethylene in catalytic cracking dry gas and increase the concentration of propylene and isobutylene in liquefied petroleum gas. The `457 publication [0014] discloses the phosphorus content (based on P2O5) is 1-10 wt%, the metal content (based on metal oxides) is 0.5-10 wt%, and 27Al MAS NMR of the molecular sieve, the ratio of the peak area of the resonance signal with a chemical shift of 40+3 ppm to the peak area of the resonance signal with a chemical shift of 54+3 ppm is greater than or equal to 1. The `457 publication [0044] further discloses the metal is selected from one or more of Fe, Co, Ni, Cu, Mn, Zn, and Sn.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between Applicant’s claim 1 and the `493 publication is that the prior art does not teach the ZSM-5/ core-shell zeolite molecular sieve further comprising phosphorus-containing and metal components in the zeolites.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, claim 1 would have been obvious over the `493 publication because the difference is further taught and/or suggested by the `457 publication. The `457 publication [0002] discloses a cracking aid for increasing the concentration of low-carbon olefins in catalytic cracking liquefied petroleum gas, and more specifically, to a cracking aid comprising phosphorus-containing and transition metal zeolites. In addition, the `457 publication [0013] discloses a cracking aid containing phosphorus and transition metals increases the concentration of low-carbon olefins in catalytic cracking. When applied to catalytic cracking, the aid can increase the concentration of ethylene in catalytic cracking dry gas and increase the concentration of propylene and isobutylene in liquefied petroleum gas. The `457 publication [0014] discloses the phosphorus content (based on P2O5) is 1-10 wt%, the metal content (based on metal oxides) is 0.5-10 wt%, and 27Al MAS NMR of the molecular sieve, the ratio of the peak area of the resonance signal with a chemical shift of 40+3 ppm to the peak area of the resonance signal with a chemical shift of 54+3 ppm is greater than or equal to 1. The `457 publication [0044] discloses the metal is selected from one or more of Fe, Co, Ni, Cu, Mn, Zn, and Sn. In terms of the 27Al MAS NMR of the molecular sieve, the chemical shift of 40+3 ppm disclosed by the `457 publication is very close to the chemical shift of 39+3 ppm cited in Applicant’s claim 1, considering the standard deviation of + 3 ppm.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). For the instant case, the `493 publication and the `457 publication both teach using zeolite molecular sieve as catalysts for carbohydron cracking. The instantly claimed phosphorus- and metal-containing core-shell molecular sieve is also used as a catalyst for carbohydron cracking. Therefore, the `493 publication and the `457 publication and Applicant’s invention are all used for the same application. The `493 publication teaches a ZSM-5/ core-shell zeolite molecular sieve, and the `457 publication teaches by including phosphorus and transition metal in a zeolite such as β molecular sieve (but not limit to β molecular sieve), the catalytic activity of the zeolite for carbohydron cracking gets improved. Therefore, the difference between Applicant’s claim 1 and the `493 publication is further taught and/or suggested by the `457 publication. One ordinary skilled in the art would have been motivated to modify the ZSM-5/ core-shell zeolite molecular sieve of the `493 publication by further including phosphorus and transition metal in a zeolite of the `457 publication to further improve its functionality as a catalyst of carbohydron cracking. Therefore, the `493 publication in view of the `457 publication would have rendered Applicant’s claim 1 obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3 of co-pending U.S. Patent Application No. 18/002,322 (“the `322 application”) published as US20230347330 in view of CN103785457 (“the `457 publication”) to Chen et al.
Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s claims 1-5 are drawn to a phosphorus- and metal-containing core-shell molecular sieve, having a core composed of a ZSM-5 molecular sieve, and a shell composed of a β-molecular sieve, wherein, based on the dry weight of the phosphorus- and metal-containing core-shell molecular sieve, the core-shell molecular sieve has a phosphorus content, calculated as P2O5, of 1-10 wt%, preferably 2-8 wt%, and a metal content, calculated as metal oxide, of 0.1-10 wt%, preferably 0.2-7 wt%; while claims 1-3 of the `322 application are drawn to a ZSM-5/ core-shell molecular sieve, comprising a core composed of at least two crystal grains of ZSM-5 molecular sieve and a shell composed of a plurality of crystal grains of R molecular sieve, the ZSM-5 molecular sieve grains having an average grain size of 0.05-15 μm, preferably 0.1-10 μm, the core-shell molecular sieve having a shell coverage of 50-100%, preferably 80-100%, a shell thickness of 10-2000 nm, preferably 50-2000 nm, and an average grain size of the β molecular sieve grains in the shell of 10-500 nm, preferably 50-500 nm, wherein a ratio of a height of a diffraction peak at 2θ = 22.4° to a height of a diffraction peak at 2θ = 23.1° in an X-ray diffraction pattern of the ZSM-5/β core-shell molecular sieve is 0.1-10 : 1, preferably 0.1-5: 1.
The difference between Applicant’s claims 1-5 and claims 1-3 of the `322 application is that claims 1-3 of the `322 application do not teach the ZSM-5/ core-shell zeolite molecular sieve further comprising phosphorus-containing and metal components in the zeolites. However, the difference is further taught and/or suggested by the `457 publication. The `457 publication [0002] discloses a cracking aid for increasing the concentration of low-carbon olefins in catalytic cracking liquefied petroleum gas, and more specifically, to a cracking aid comprising phosphorus-containing and transition metal zeolites. In addition, the `457 publication [0013] discloses a cracking aid containing phosphorus and transition metals increases the concentration of low-carbon olefins in catalytic cracking. One ordinary skilled in the art would have been motivated to modify the ZSM-5/ core-shell zeolite molecular sieve of the `322 application by further including phosphorus and transition metal in a zeolite of the `457 publication to further improve its functionality as a catalyst of carbohydron cracking. Similar detail analysis is also can be found in the 103(a) rejection above. Therefore, claims 1-3 of the `322 application in view of the `457 publication would have rendered Applicant’s claims 1-5 obvious.
Conclusions
Claims 1-5 are rejected.
Claims 6-20 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731