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 .
This application is in response to an amendment filed on 04/06/2026.
Claims 1-20 are pending. Applicant has amended claims 1, 6-8, 10-12, added new claims 17-20 and claims 14-16 are withdrawn as non-elected group.
Claim Objections
Claim 18 is objected to because of the following informalities:
It is suggested to amend “ammonium salt and the noble metal” to “the at least one ammonium salt and the at least one noble metal” to ensure proper antecedent basis in the claim 18 line 2.
Appropriate correction is required.
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 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
Claims 1-13 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8 of Bouchy et al (US Patent No.: 10906030 B2, IDS cited reference by applicant) in view of Travers et al (US Patent NO.: 4,789,655, IDS cited reference by applicant).
Bouchy discloses a process for preparing a difunctional (reads on bifunctional) catalyst comprising an acid function constituted by IZM-2 zeolite, a hydrogenating function comprising at least one noble metal from group VIII of the Periodic Table, chosen from platinum and palladium, and a matrix (Col.3 lines 37-43, see claim 1), said process comprising at least the following steps:
i) a step of preparing the support for the bifunctional catalyst by shaping IZM-2 zeolite with a matrix such that the weight percentage of zeolite is between 2% and 30% relative to the weight of the support (see claim 1),
ii) a step of depositing at least one noble metal selected from platinum and palladium by impregnation of the support prepared in step i), enabling a solid to be obtained, with an aqueous solution comprising (Col.3 lines 48-51, see claim 1):
- at least one compound selected from the platinum(II) tetramine salts of formula Pt(NH3)4(OH)2, Pt(NH3)4(NO3)2 or Pt(NH3)4X2, the platinum(IV) hexamine salts of formula Pt(NH3)6X4; the platinum(IV) halopentamine salts of formula (PtX(NH3)s)X3; the platinum N-tetrahalodiamine salts of formula PtX4(NH3)2; and the halogenated compounds of formula H(Pt(acac)2X); the palladium(II) salts Pd(NH3)4SO4 or Pd(NH3)4X2, wherein X is a halogen chosen from chlorine, fluorine, bromine and iodine (reads on claim 1 and 5), and "acac" represents an acetylacetonate group of empirical formula C5H702(Col.3 lines 52-64, see claims 1, 5, 7, 8, reads on claims 1, 5-7).
Bouchy does not explicitly disclose or suggest iii) at least one heat treatment step wherein said solid prepared in step ii) is brought into contact with at least one gas mixture containing oxygen, water, chlorine and/or at least one chlorinated compound.
However, Travers discloses a process for preparing catalyst in particularly to isomerization of n-paraffin (abstract) comprising carrier (reads on support) of mordenite (reads on zeolite), and matrix wherein the mixture is shaped and wherein mordenite content on carrier usually from about 40% to 95% by weight (reads on preparing support of step I, see col.3 lines 1-17) , then at least one group VIII hydrogenating metal, chosen from platinum and palladium (reads on at least one ammoniacal compound is tetramine platinum chloride, see examples), deposited on a carrier comprising mordenite and matrix by impregnation technique obtaining a solid, drying solid by roasting at a temperature 300-600°° C (reads on calcination, col.3 lines 18-20, 30-33) and then subjected to oxychlorination treatment usually consists of heating the solid in the presence of a gas stream containing oxygen and steam by contacting with chlorine and/or with a chlorinated compound in presence of oxygen containing gas and of steam at a temperature of about 200 to 500° C (reads on heat treatment step iii, see Col.3 lines 39-45, 62-67).
Given Bouchy and Travers are both related to catalyst use for isomerization of paraffin, therefore it would have been obvious to one of the ordinary skill in the art before the effective filing date of applicant invention to modify the process of Bouchy with Travers to include the heat treatment step (iii) of Travers which provide improved dispersion of the group VIII metal that gives a very active catalyst in particularly for the isomerization catalyst as taught by Travers (see Col.2 lines 15-17).
Regarding claim 2, Bouchy discloses step (i) is performed by blending extrusion (see claim 2).
Regarding claim 3, Bouchy discloses matrix used in step (i1) is alumina (see claim 3).
Regarding Claim 4, Bouchy discloses wherein the support obtained in step (i) is subjected to drying step performed at a temperature between 50 to 180° C (see claim 4).
Regarding claims 8-9 and claims 17-18, Bouchy discloses aqueous solution also contains at least one ammonium salt selected from ammonium nitrate NH4NO3, ammonium chloride NH4Cl, ammonium hydroxide NH4OH, ammonium bicarbonate NH4HCO3 and ammonium acetate NH4H3C2O2, alone or as a mixture (see claim 1) and the mole ratio between the ammonium salt and noble metal being between 0.1 and 400 (see claim 1).
Regarding claim 10, Travers discloses heat treatment performed at 200 to 500° C (reads on heat treatment step iii, see Col.3 lines 39-45, 62-67).
Regarding claim 11, Travers discloses wherein inorganic chlorinated compounds chosen from hydrochloric acid (Col.4 lines 8-13).
Regarding Claim 12, Travers discloses solid is brought into contact with a gas containing oxygen and at least one chlorinated compound is used for the heat treatment until desired temperature is reached (Col.3 lines 62-68 thru col.4 lines 1-13).
Regarding claim 13, Travers discloses temperature for performing step iii) is 200-500° C (col.3 lines 39-45 and 62-67).
Regarding claims 19-20, Travers discloses wherein organic chlorinated compounds chosen from carbon tetrachloride, dichloropropane, dichloroethane or chloroform (Col.4 lines 8-13).
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.
Claims 1-13 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bouchy et al (US PGPUB No.: 20190168195, IDS cited reference by applicant) in view of Travers et al (US Patent NO.: 4,789,655, IDS cited reference by applicant).
As per claims 1, 5-7, Bouchy discloses a process for preparing a difunctional (reads on bifunctional) catalyst comprising an acid function constituted by IZM-2 zeolite, a hydrogenating function comprising at least one noble metal from group VIII of the Periodic Table, chosen from platinum and palladium, and a matrix (paragraph 0016), said process comprising at least the following steps:
i) a step of preparing the support for the catalyst by shaping IZM-2 zeolite with a matrix such that the weight percentage of zeolite is advantageously between 1% and 50% relative to the weight of the support (see paragraph 0017, reads on 2-30 wt.% of IZM-2, see MPEP 2144.05),
ii) a step of depositing the at least one noble metal selected from platinum and palladium by impregnation of the support prepared in step i), enabling a solid to be obtained, with an aqueous solution comprising (paragraph 0018):
- at least one compound chosen from the platinum(II) tetramine salts of formula Pt(NH3)4(OH)2, Pt(NH3)4(NO3)2 or Pt(NH3)4X2, the platinum(IV) hexamine salts of formula Pt(NH3)6X4; the platinum(IV) halopentamine salts of formula (PtX(NH3)s)X3; the platinum N-tetrahalodiamine salts of formula PtX4(NH3)2; and the halogenated compounds of formula H(Pt(acac)2X); the palladium(II) salts Pd(NH3)4SO4 or Pd(NH3)4X2, wherein X is a halogen selected from chlorine, fluorine, bromine and iodine, and "acac" represents an acetylacetonate group of empirical formula C5H702, (paragraph 0019, reads on claims 1, 5-7), and
iii) calcination (reads on heat treatment) is carried under a dry air flow out at a temperature between 2000 C and 11000 C (see paragraphs 0051-0052).
Bouchy does not explicitly disclose or suggest iii) at least one heat treatment step wherein said solid prepared in step ii) is brought into contact with at least one gas mixture containing oxygen, water, chlorine and/or at least one chlorinated compound.
However, Travers discloses a process for preparing catalyst in particularly to isomerization of n-paraffin (abstract) comprising carrier (reads on support) of mordenite (reads on zeolite), and matrix wherein the mixture is shaped and wherein mordenite content on carrier must be 40% by weight (reads on preparing support of step I, see col.3 lines 1-17) , then at least one group VIII hydrogenating metal, chosen from platinum and palladium (reads on at least one ammoniacal compound is tetramine platinum chloride, see examples), deposited on a carrier comprising mordenite and matrix by impregnation technique obtaining a solid, drying solid by roasting at a temperature 300-600° C (reads on calcination, col.3 lines 18-20, 30-33) and then subjected to oxychlorination treatment usually consists of heating the solid in the presence of a gas stream containing oxygen and steam by contacting with chlorine and/or with a chlorinated compound in presence of oxygen containing gas and of steam at a temperature of about 200 to 500° C (reads on heat treatment step iii, see Col.3 lines 39-45, 62-67). 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).
Given Bouchy and Travers are both related to catalyst use for isomerization of paraffin, therefore it would have been obvious to one of the ordinary skill in the art before the effective filing date of applicant invention to modify the process of Bouchy with Travers to include the heat treatment step (iii) of Travers which provide improved dispersion of the group VIII metal that gives a very active catalyst in particularly for the isomerization catalyst as taught by Travers (see Col.2 lines 15-17).
Regarding claim 2, Bouchy discloses step (i) is performed by blending extrusion (see paragraphs 0040-0041).
Regarding claim 3, Bouchy discloses matrix used in step (i1) is alumina (see paragraph 0035).
Travers discloses matrix is alumina (Col.3 lines 1-5).
Regarding Claim 4, Bouchy discloses wherein the support obtained in step (i) is subjected to drying step performed at a temperature between 50 to 180° C (see paragraphs 0048-0049). 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 claims 8-9 and 17-18, Bouchy discloses aqueous solution also contains at least one ammonium salt not containing any noble metals, chosen from ammonium nitrate NH4NO3, ammonium chloride NH4Cl, ammonium hydroxide NH4OH, ammonium bicarbonate NH4HCO3 and ammonium acetate NH4H3C2O2, alone or as a mixture (see paragraph 0061) and the mole ratio between the ammonium salt and noble metal being between 0.1 and 400 (paragraph 0062). 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 10, Travers discloses heat treatment performed at 200 to 500° C (reads on heat treatment step iii, see Col.3 lines 39-45, 62-67). 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 11, Travers discloses wherein inorganic chlorinated compounds chosen from hydrochloric acid(Col.4 lines 8-13).
Regarding Claim 12, Travers discloses solid is brought into contact with a gas containing oxygen and at least one chlorinated compound is used for the heat treatment until desired temperature is reached (Col.3 lines 62-68 thru col.4 lines 1-13).
Regarding claim 13, Travers discloses temperature for performing step iii) is 200-500° C (col.3 lines 39-45 and 62-67). 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 claims 19-20, Travers discloses wherein organic chlorinated compounds chosen from carbon tetrachloride, dichloropropane, dichloroethane or chloroform (Col.4 lines 8-13).
Response to Arguments
9. Applicant’s arguments, see applicant remarks on pages 6-11, filed on 07/03/2026 with respect to the rejections of Claims 1-13 under 35 U.S.C. § 103 Bouchy et al. (US PG PUB No.: 20190168195-patented as 10906030) and Travers et al. (US 4,789,655) and double patenting rejection of claims 1-5 and 7-8 of Bouchy et al. (US Patent 10906030) and Travers et al. (US 4,789,655) is not persuasive and therefore the rejections have been maintained.
Applicant mainly argues Travers provides no suggestion of using oxychlorination treatment to treat catalyst containing other zeolite material such as a zeolite IZM-2 as used in the Bouchy process and further provides no suggestion using the oxychlorination treatment to treat catalyst containing lower amounts of zeolite material as recited in independent claim 1.
However, examiner Travers the applicant’s argument and the fact remains Bouchy discloses a process for preparing a difunctional (reads on bifunctional) catalyst comprising an acid function constituted by IZM-2 zeolite, a hydrogenating function comprising at least one noble metal from group VIII of the Periodic Table, chosen from platinum and palladium, and a matrix (paragraph 0016), said process comprising at least the following steps: i) a step of preparing the support for the catalyst by shaping IZM-2 zeolite with a matrix such that the weight percentage of zeolite is advantageously between 1% and 50% relative to the weight of the support (see paragraph 0017), ii) a step of depositing at least one noble metal selected from platinum and palladium by impregnation of the support prepared in step i), enabling a solid to be obtained, with an aqueous solution comprising (paragraph 0018):- at least one compound selected from the platinum(II) tetramine salts of formula Pt(NH3)4(OH)2, Pt(NH3)4(NO3)2 or Pt(NH3)4X2, the platinum(IV) hexamine salts of formula Pt(NH3)6X4; the platinum(IV) halopentamine salts of formula (PtX(NH3)s)X3; the platinum N-tetrahalodiamine salts of formula PtX4(NH3)2; and the halogenated compounds of formula H(Pt(acac)2X); the palladium(II) salts Pd(NH3)4SO4 or Pd(NH3)4X2, wherein X is a halogen selected from chlorine, fluorine, bromine and iodine, and "acac" represents the acetylacetonate group of empirical formula C5H702, (paragraph 0019, reads on claims 1, 5-7), and iii) calcination (reads on heat treatment) is carried under a dry air flow out at temperature between 2000 C and 11000 C (see paragraphs 0051-0052).
Bouchy does not explicitly disclose or suggest iii) at least one heat treatment step wherein said solid prepared in step ii) is brought into contact with at least one gas mixture containing oxygen, water, chlorine and/or at least one chlorinated compound but however, Travers is relied on for oxychlorination treatment usually consists of heating the solid in the presence of a gas stream containing oxygen and of steam by contacting with chlorine and/or with a chlorinated compound in presence of oxygen containing gas and of steam at a temperature of about 200 to 500° C (reads on heat treatment step iii, see Col.3 lines 39-45, 62-67, abstract). Travers is not relied for teaching of IZM-2 zeolite, but Travers does disclose mordenite zeolite as broadly and is not relied for teaching of lower amounts of zeolite material such as IZM-2. But Bouchy discloses specifically IZM-2 zeolite and also discloses amount of IZM-2 zeolite as disclosed above. Further applicant’s argument related to Travers teaching isomerizing paraffin content with 4-7 carbon atoms per molecule but no teaching of having between 9-25 carbon atoms as in process of Bouchy. However, Travers discloses 4-7 carbon atoms as an example and further is not required by presently claimed limitation but if applicant believes criticality of this component then needs to be incorporated in the presently claimed limitation. Further, if applicant believe the process of Travers is not combinable with Bouchy then applicant needs to show unexpected results. Therefore applicant’s argument is not persuasive.
In addition, it is noted that while Travers does not disclose all the features of the present claimed invention. Travers is used as teaching reference, namely for a step iii of at least one heat treatment steps wherein said solid brought into contact with at least one gas mixture containing oxygen, water and chlorine and/or at least one chlorinated compound (see abstract, col.3) in order to provide improved dispersion of the group VIII metal that gives a very active catalyst in particularly for the isomerization catalyst as taught by Travers (see Col.2 lines 15-17), and therefore, it is not necessary for these secondary reference (Travers) to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA1981). Rather these references teach a certain concept, and in combination with the primary reference (Bouchy), discloses the presently claimed invention. Therefore the rejections of 103 and double patenting is maintained.
Further, amendment to the claims overcomes claim objections of record but new claims added by applicant necessitated new claim objection as set forth above.
Further, amendment to the claims overcomes 112(b) rejections of record.
Double patenting rejections is maintained as set forth above.
Conclusion
10. 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.
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 09/14/2026
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