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 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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claims 1-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tissler et al. (DE 102009053951 A1) (Tissler).
The applicant has provided the Foreign Patent document, Tissler, with the IDS filed 02/01/2024. The citation of the prior art in this Office Action refers to the provided document.
Regarding claims 1-4, Tissler teaches a catalytic composition comprising a porous support material, rhodium, and at least one additional metal including Sn and Cu, for use in NO reduction and hydrocarbon storage (i.e., a hydrocarbon adsorbent) (Tissler, Abstract, [0044]). Tissler further teaching the open-pore carrier material is preferred to be a zeolite material (i.e., a multipore zeolite) (Tissler, [0013]) corresponding to multiple structural types including EON and MSE (i.e., EON-type zeolite or MSE-type zeolite) (Tissler, [0019], lines 5 & 8).
Given that Tissler discloses a catalytic composition that overlaps the presently claimed hydrocarbon adsorbent, including EON and MSE zeolite structure types, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use the catalytic composition, which is both disclosed by Tissler and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Given that the catalytic composition of Tissler is substantially identical to the hydrocarbon adsorbent as used in the present invention, as set forth above, it is the position of the examiner that the catalytic composition of Tissler would necessarily have a zeolite comprising large linear pores and small pore cages having a maximum ring with an 8 or less, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Tissler further teaches the rhodium being essentially in the pores of the porous support material, preferably at least 90% of the rhodium is in the pores (the inner surface of the zeolite) (i.e., rhodium inside and outside the zeolite framework) (Tissler, Abstract; [0008]; [0023]). Tissler further teaches that the additional metal is introduced into the porous carrier and may be simultaneously impregated with the rhodium solution (Tissler [0044], [0047]). Given that Tissler teaches the rhodium and the additional metal are essentially in the pores of the porous support material (i.e., zeolite), it is the position of the examiner that at least a portion of the rhodium/metal is present in the small pore cages (i.e., the multipore zeolite has at least a portion of the at least one metal present in the small pore cages).
Tissler further teaches the zeolite has a SiO2/Al2O3 modulus (i.e., molar ratio) of 10 to 200 (Tissler, [0018]) and the catalytic composition preferably contains 0.1-10% by weight and more preferably 1.5-3% by weight of the additional metal (Cu/Sn) (Tissler, [0046]). Given the SiO2/Al2O3 modulus range and the weight percentages of the additional metal taught by Tissler, the instantly claimed weight percentages would overlap with the range instantly claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, Tissler teaches the limitations of claim 1, as discussed above. Tissler further teaching the BET surface area of the zeolite material to be 100 m2/g to 1500 m2/g, or preferably 150 m2/g to 100 m2/g, most preferably 200 m2/g to 600 m2/g (Tissler, [0032]).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 6-7, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tissler in view of Nishikawa et al. (JP 6339306 B1) (Nishikawa).
The Examiner provided a machine translation of the description and claims of Nishikawa with the Office Action mailed 03/12/2025. The citation of the prior art in this Office action refers to the previously provided machine translation.
Regarding claims 6-7, Tissler teaches the limitations of claim 1, as discussed above.
Tissler does not explicitly teach the catalytic composition where the zeolite comprises
phosphorous with a P/AI molar ratio of 0.4 or more and 1.1 or less.
With respect to the difference, Nishikawa teaches an exhaust gas purifying
composition (i.e., hydrocarbon adsorbent) which is a BEA-type zeolite containing
phosphorous and zirconium (Nishikawa, p. 2, line 9-1 O; lines 39-45).
Nishikawa further teaching the phosphorous to aluminum molar ratio (P / Al) is
0.5 to 5 (Nishikawa, p. 3, lines 34-35).
Nishikawa expressly teaching the BEA-type zeolite containing phosphorus allows
for the exhaust gas purifying composition to obtain high hydrocarbon adsorption
performance even under severe thermal environments due to the inclusion of the
phosphorous (Nishikawa, p. 3, lines 26-28).
In light of the motivation of Nishikawa, it would have been obvious to one of
ordinary skill in the art before the effective filing date of the claimed invention to include
phosphorous at a P / Al of 0.5 to 5 in the catalytic composition of Tissler, in order to
obtain high hydrocarbon adsorption under severe thermal environments, and thereby
arrive at a range that overlaps that of claim 7.
As set forth in MPEP 2144.05, in the case where the claimed range "overlap or
lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists, In
re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d
1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, Tissler teaches the limitations of claim 1 and 8, as discussed above.
Tissler does not explicitly teach the multipore zeolite has a specific surface area ratio B/A of a BET surface area B thereof after being heat-treated to a BET specific surface area A thereof before being heat-treated, in a range of 0.35 or more and 1 or less, with the heat treatment conditions (1) to (5) detailed in claim 9.
With respect to the difference, Nishikawa teaches a phosphorous-containing BEA
type zeolite that is subjected to a heat treatment conducted at 980 °C for 25 hours in a 10 volume% H2O atmosphere. Additionally teaching a cycle of model gas at 3 L/min for
80 sec and air at 3 L/min for 20 sec, alternately flowed with the model gas being a
composition of C3H6 at 70 mL/min, 02 at 70 mL/min, and N2 for the balance (Nishikawa,
p. 10, lines 41-47). After heat-treatment the specific surface area of the specific surface
represented by A/B x 100 (%) is 35% or more, where B is the specific surface area of
the state before carrying out the heat-treatment and A is the specific surface area after
heat treatment (i.e., specific surface area ratio B/A of a BET surface area B thereof after
being heat-treated to a BET specific surface area A thereof before being heat-treated, in
a range of 0.35 or more and 1 or less) (Nishikawa, p. 4, lines 39-41).
Nishikawa expressly teaching the phosphorous-containing BEA type zeolite
having a specific surface area retention rate RS of 35 % (i.e., A/Bx 100) or more is
preferable because it can maintain the hydrocarbon adsorbing performance because of
its high thermal durability (Nishikawa, p. 5, lines 7-9).
In light of the motivation of using zeolite having a specific surface area retention
rate RS of 35 % (i.e., A/B x 100) or more, as taught by Nishikawa, it would have been
obvious to one of ordinary skill in the art before the effective filing date of the claimed
invention to prepare the catalyst composition of Tissler, with having a specific surface
area retention rate RS of 35 % (i.e., A/Bx 100) or more, as taught by Nishikawa, in
order to maintain the hydrocarbon adsorption performance of the catalytic composition
due to high thermal durability in Tissler.
While Nishikawa does not explicitly disclose the heat treatment temperature of
850 °C as presently claimed, it has long been an axiom of United States patent law that
it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) ("The normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed set of
percentage ranges is the optimum combination of percentages."); In re Boesch, 617
F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d
454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by routine
experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good'
can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art before the effective
filing date of the presently claimed invention to vary the specific surface area retention
rate, including over the presently claimed, in order to achieve desired thermal durability,
and thereby arrive at the claimed invention.
Regarding claim 11, Tissler teaches the limitations of claim 1 and 10, as discussed above.
Tissler does not explicitly teach the MSE-type zeolite has a peak intensity at a
diffraction angle position of 21.7° ± 1.0°, which represents the (420) plane, in an X-ray
diffraction spectrum, and has a peak intensity ratio D/C of a peak intensity D of the
(420) plane thereof after being heat-treated to a peak intensity C of the (420) plane
thereof before being heat-treated, in a range of 0.3 or more and 1.5 or less, with the
heat treatment conditions (1) to (5) detailed in claim 11.
With respect to the difference, Nishikawa teaches a phosphorous-containing
BEA type zeolite that is subjected to a heat treatment conducted at 980 °C for 25 hours
in a 10 volume% H2O atmosphere. Additionally teaching a cycle of model gas at 3 L/min
for 80 sec and air at 3 L/min for 20 sec, alternately flowed with the model gas being a
composition of C3H6 at 70 mL/min, 02 at 70 mL/min, and N2 for the balance (Nishikawa, p. 10, lines 41-47). After heat-treatment the retention Ratio of Crystallite diameter (Rd) represented by X/Y x 100 (%) where X is the crystallite diameter before the heat treatment and Y is the crystallite diameter after the heat treatment. Further teaching the crystalline diameter is determined by X-ray diffraction measurements using the halfwidth of the main peak of the zeolite (Nishikawa, p. 12, line 28-39), wherein the Rd is 50 % or more.
Nishikawa expressly teaching having a crystalline diameter retention rate (Rd) of
50 % or more is preferable because it can maintain the hydrocarbon adsorption
performance due to high thermal durability (Nishikawa, p. 5, lines 27-29).
In light of the motivation of using zeolite with a crystalline diameter retention rate
(Rd) of 50 % or more, as taught by Nishikawa, it would have been obvious to one of
ordinary skill in the art before the effective filing date of the claimed invention to prepare
the MSE-type zeolite in Tissler, with a crystalline diameter retention rate (Rd) of 50 % or
more, in order to have a high crystalline diameter retention rate leading to high thermal
stability and maintained hydrocarbon adsorption in Tissler.
While Nishikawa does not explicitly disclose the heat treatment temperature of
850 °C as presently claimed, it has long been an axiom of United States patent law that
it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) ("The normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed set of
percentage ranges is the optimum combination of percentages."); In re Boesch, 617
F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d
454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by routine
experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good'
can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art before the effective
filing date of the presently claimed invention to vary crystalline diameter retention rate
(Rd), including over the presently claimed, to achieve high thermal durability, and
thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
Applicant argues that Tissler does not teach or suggest containing the metals now claimed into the porous carrier material without containing rhodium. Weith respect to the secondary reference, Applicant argues that Nishikawa does not contain phosphorous without zirconium and that the instantly claimed invention excludes zirconium. These arguments have been considered but are not persuasive. The arguments are not commensurate in scope with the instant claims. The instant claims do not preclude the addition of rhodium or zirconium to the catalyst. They do not preclude the addition of the Cu/Sn in oxide form. Please note the comprising language which opens the claim to additional materials and metals, even in major amounts.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA ANN JOHNSON whose telephone number is (571)272-1176. The examiner can normally be reached Monday - Friday, 6am - 2pm.
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/CHRISTINA A JOHNSON/Primary Examiner, Art Unit 1742
