DETAILED ACTION
Claims 1-11 were rejected in the Office Action Mailed 03/12/2025
Applicant filed a response on 06/09/2025
Applicant amended the Specification and the Abstract
Applicant amended Claim 1 to incorporate Claims 4-5, and 10
Applicant amended claims 3, as suggested by the Examiner
Applicant amended claims 9 and 11, as suggested by the Examiner
Applicant amended claim 4
Applicant cancelled claims 5 and 10
Claims 1-4, 6-9, and 11-19 are pending, of which claims 12-19 are withdrawn due to election/restriction
Claims 1-4 6-9, and 11 are rejected
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 .
Examiner’s Note
Upon further consideration of Tissler, it is noted that there was an inadvertent error on the calculation in the 35 USC § 103 rejection over Tissler, as set forth on page 7 of the Office Action mailed 03/12/2025. The correct calculation is provided as set forth below. This Office Action is a second non-final.
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 and rhodium for use in NO reduction and hydrocarbon storage (i.e., a hydrocarbon adsorbent) (Tissler, Abstract). 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 be 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 clear that the catalytic composition of Tissler would inherently 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 teaching 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]). Given that Tissler teaches the rhodium is essentially in the pores of the porous support material (i.e., zeolite), it is clear that at least a portion of the rhodium 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 nodulus (i.e., molar ratio) of 10 to 200 (Tissler, [0018]) and the catalytic composition preferably contains at least 1% by weight rhodium and at most 10% by weight rhodium, preferably at most 8% by weight rhodium, based on the total weight of rhodium and the support material (i.e., zeolite) (Tissler, [0027-0028]). Given the SiO2/Al2O3 nodulus range and rhodium weight percentages of Tissler, it is clear that Tissler teaches the Rh/Al molar ratio to be from 0.03 to 5.12, refer to the calculations below.
Assuming the catalytic composition is 100 g, then 1% by weight Rh would be 1 g Rh and 99 g of zeolite. Using the SiO2/Al2O3 nodulus of 10, the zeolite has a molar mass of 702.76 g (i.e., 10 mols SiO2 x 60.08 g/mol SiO2 = 600.8 g; 1 mol Al2O3 x 101.96 g/mol Al2O3 = 101.96 g Al2O3; 600.8 g SiO2 + 101.96 g Al2O3 = 702.76 g zeolite). From here the mols of Al present in the zeolite and mols of Rh can be calculated to obtain a Rh/Al molar ratio of 0.03.
99
g
z
e
o
l
i
t
e
1
m
o
l
z
e
o
l
i
t
e
702.76
g
z
e
o
l
i
t
e
1
m
o
l
A
l
2
O
3
1
m
o
l
z
e
o
l
i
t
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2
m
o
l
A
l
1
m
o
l
A
l
2
O
3
=
0.2817
m
o
l
s
A
l
1
g
R
h
1
m
o
l
R
h
102.9055
g
R
h
=
0.009717
m
o
l
R
h
0.009717
m
o
l
R
h
÷
0.2817
m
o
l
s
A
l
=
0.03
Assuming the catalytic composition is 100 g, then 8% by weight Rh would be 8 g Rh and 92 g of zeolite. Using the SiO2/Al2O3 nodulus of 200, the zeolite has a molar mass of 12,117.96 g (i.e., 200 mols SiO2 x 60.08 g/mol SiO2 = 12,016 g; 1 mol Al2O3 x 101.96 g/mol Al2O3 = 101.96 g Al2O3; 12,016 g SiO2 + 101.96 g Al2O3 = 12,117.96 g zeolite). From here the mols of Al present in the zeolite and mols of Rh can be calculated to obtain a Rh/Al molar ratio of 5.12.
92
g
z
e
o
l
i
t
e
1
m
o
l
z
e
o
l
i
t
e
12117.96
g
z
e
o
l
i
t
e
1
m
o
l
A
l
2
O
3
1
m
o
l
z
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o
l
i
t
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2
m
o
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A
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1
m
o
l
A
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2
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3
=
0.015
m
o
l
s
A
l
8
g
R
h
1
m
o
l
R
h
102.9055
g
R
h
=
0.0777
m
o
l
R
h
0.0777
m
o
l
R
h
÷
0.015
m
o
l
s
A
l
=
5.12
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 com position 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
In response to the amended claims 1, 3-4, 9, and 11, the previous claim objections are withdrawn.
Applicant's arguments filed 06/09/2025 have been fully considered but they are not persuasive.
Applicant primarily argues:
“Tissler fails to teach or suggest such claim features. Rather, Tissler teaches various types of zeolites, and Tissler explicitly teaches that zeolite materials of the structure type beta (BEA) are particularly preferred. See paragraph [0019] of the machine English translation of Tissler. Tissler uses H-BEA zeolite in example. See paragraph [0092] of Tissler. The BEA-type zeolite is a zeolite with only 12-membered rings and is a non-multipore zeolite, not a multipore zeolite. See paragraph [0057] of the subject specification.”
Remarks, p. 12
The Examiner respectfully traverses as follows:
While applicant pointed to [0019], [0057], and [0092] where BEA is preferred and H-BEA is used as a specific example, however, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Further, while BEA-type zeolite may be a preferred embodiment, however, it is noted that EON-type zeolite or MSE-type zeolite may be used.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
Finally, the fact remains, Tissler teaches using EON or MSE (Tissler, [0019], lines 5 & 8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose EON or MSE zeolite structural types in the hydrocarbon adsorbent, absent evidence to the contrary. See item #5 above.
Applicant further argues:
“Tissler does not teach or suggest multipore zeolites as having large linear pores and small pore cages having a maximum ring with an 8 or less. Tissler states "According to the invention, the rhodium is essentially located in the pores of the zeolite material, i.e. the inner surface.” See paragraph [0023] of machine English translation of Tissler. However, Tissler does not teach or suggest whether the holes in which the rhodium is located are large linear pores or small pore cages having a maximum ring with an 8 or less.”
Remarks, p. 12
The Examiner respectfully traverses as follows:
While applicant argues that Tissler does not teach or suggest multipore zeolites as having large linear pores and small pore cages having a maximum ring with an 8 or less, however, it is known to those of ordinary skill in the art that EON and MSE zeolite structural types as taught by Tissler (Tissler, [0019], lines 5 & 8) contain large linear pores and small pore cages having a maximum ring with an 8 or less. See item #5 above.
Further applicant argues that Tissler does not teach or suggest whether the rhodium is located in the large pores or the small pore cages having a maximum ring with an 8 or less, however, it is recognized by those of ordinary skill in the art that the rhodium is located in the pores of the zeolite material as taught by Tissler, therefore it is clear the rhodium is located in both the large linear pores and the small pore cages, absent evidence to the contrary. See item #5 above.
Applicant further argues:
“Tissler does not teach or suggest that the metal/Al ratio, which is the molar ratio of the at least one metal to Al contained in the multipore zeolite, is in a range of 0.05 or more and 2.5 or less.”
Remarks, p. 12
The Examiner respectfully traverses as follows:
Tissler does teach having a Rh/Al molar ratio to be from 0.03 to 5.12, which overlaps the presently claimed range. See item #5 above.
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).
Applicant further argues:
"Nishikawa also fails to teach or suggest the claim invention because Nishikawa does not teach or suggest at least the following: 1) the multipore zeolite has large linear pores and small pore cages having a maximum ring with an 8 or less; and 2) the multipore zeolite has at least a portion of the at least one metal present in the small pore cages. Nishikawa does not teach or suggest multipore zeolites."
Remarks, p. 12-13
The Examiner respectfully traverses as follows:
Nishikawa is only used as teaching reference in order to teach the addition of phosphorous to a hydrocarbon adsorbent. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference...Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant further argues:
"In addition, the claimed invention can provide unexpected results sufficient to establish unobviousness within the meaning of 35 U.S.C. § 103."
Remarks, p. 13
The Examiner respectfully traverses as follows:
While applicant points to paragraph [0103] of the specification, Examples 1, 2, and 4, Table 1, Examples 5 to 12, and Table 2, the data is unpersuasive, given that the data is not commensurate in scope with the scope of the claims. Specifically, the data only show specific hydrocarbon adsorbents comprising a multipore zeolite containing specific type of metal (i.e., Cu or Cs) outside of the zeolite framework, the hydrocarbon adsorbent having a specific content ratio of the metal and specific metal/Al ratio (i.e., 0.22), wherein the multipore zeolite has specific large linear pores and specific small pore cages having a specific number of rings, and wherein the multipore zeolite has a specific portion of the specific type metal present in the small pore cages, while the claims broadly recites a hydrocarbon adsorbent comprising a multipore zeolite containing at least one metal selected from the group consisting of Li, Na, K, Rb, Cs, Ca, Sr, Ba, Mn, Ni, Cu, Zn, Ga, Rh, Pd, Ag, Sn, Sc and Pt outside the zeolite framework, the hydrocarbon adsorbent having a content ratio of at the least one metal of 9% by mass or less relative to the multipore zeolite containing the at least one metal, and a metal/Al ratio, which is a molar ratio of the at least one metal to Al contained in the multipore zeolite, in a range of 0.05 or more and 2.5 or less, wherein the multipore zeolite has any size of large linear pores and any size of small pore cages having a maximum ring with an 8 or less, and wherein the multipore zeolite has at least a portion of the at least one metal present in the small pore cages.
Further, the data does not show using the upper and the lower ends of the content ratio of the at least one metal relative to the multipore zeolite containing the at least one metal, and a metal/Al ratio, and the number of rings of the small pore cages.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Conclusion
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/T.M.D./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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