DETAILED ACTION
Claim(s) 1-3, 5-10, 12-13 and 25 were rejected in Office Action mailed on 01/28/2026.
Applicant filed a response, amended claim(s) 1, 8-9, 16, 22, 27 and 39, and canceled claim 36 on 04/28/2026.
Claim(s) 1-3,5-10,12-13,16,19,22-23,25,27,30 and 39 are pending, and claim(s) 27, 30 and 39 are withdrawn.
Claim(s) 1-3,5-10,12-13, and 25 are rejected.
Claims 16 and 22 are allowed.
Claim 19 and 23 are objected to.
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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5-7 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,227,181 B2 in view of Kubicek et al., Stabilization of zeolite beta for fcc application by embedding in amorphous matrix, Applied Catalysis, 1998 (Kubicek).
The present claims require A fluid catalytic cracking (FCC) additive composition comprising:a first component comprising beta zeolite and a first matrix;a second component comprising ZSM-5 zeolite and a second matrix; andup to about 40 wt% of a third component comprising Y zeolite and a third matrix, based on total weight of the FCC additive composition, wherein the weight ratio of the first component to the second component ranges from about 2:1 to about 9:1;
wherein the additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY.
The patent claims recite a hydrocarbon conversion catalyst blend comprising: (a) a Y zeolite in an amount of 5 to 50 wt. % of said catalyst blend (reading upon third component); (b) a ZSM-5 zeolite in an amount of 5 to 40 wt. % of said catalyst blend (reading upon second component); and (c) a Beta zeolite in an amount of 35 to 70 wt. % of said catalyst blend (reading upon first component), wherein each of said ZSM-5 zeolite, said Beta zeolite, and said Y zeolite is a separate microsphere, wherein weight ratio of the first, second and third components overlaps or encompasses the presently 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).
The patent does not explicitly disclose Beta catalyst is further used with a first matrix.
With respect to the difference, Kubicek teaches the use of zeolite beta for fluidized catalytic cracking application (Kubicek, Title, Abstract). Kubicek specifically teaches embedding crystals of zeolite beta in silica-alumina matrices (Kubicek, Abstract).
As Kubicek expressly teaches, zeolite beta embedded in silica-alumina matrices produces effective catalysts which maintain catalytic activity after treatment under 100% steam.
Kubicek is analogous art as Kubicek is drawn to the use of zeolite beta for fluidized catalytic cracking application.
In light of the motivation of embedding zeolite beta in silica-alumina matrices, it therefore would have been obvious to a person of ordinary skill in the art to embed the Beta zeolite of the patent in a silica-alumina matric, in order to maintain catalytic activity, e.g., upon treatment under steam, and thereby arrive at the claimed invention.
Furthermore, regarding wherein the FCC additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, the recitation is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the patent in view of Kubicek teaches the composition as presently claimed, it is clear that the catalyst composition of the patent in view of Kubicek would be capable of performing the intended use, i.e. as an FCC additive composition and be present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 8, it is suggested to amend “the additive” to “the FCC additive” to be consistent with the phrase “A fluid catalytic cracking (FCC) additive” recited in claim 1, line 1.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7, 9, 13 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Harris et al., US 2013/0066131 A1 (Harris) in view of Kubicek et al., Stabilization of zeolite beta for fcc application by embedding in amorphous matrix, Applied Catalysis, 1998 (Kubicek).
Regarding claims 1-2, Harris teaches a petrochemical FCC catalyst system (Harris, [0017]); a catalyst blend, which comprises, based on the total weight of the catalyst blend, 5-40 wt. % ZSM-5, and 35-70% Beta catalyst (Beta catalyst reads upon a first component), the weight percent for each zeolite, as expressed immediately above and hereafter, including the appended claims, pertains to the active zeolite component and any matrix, binder or additive components (Harris, [0018]);
the ZSM-5 zeolite additive is prepared as a separate microsphere and contains phosphorus stabilized ZSM-5 zeolite, alumina, and kaolin bound together with phosphoric acid (the ZSM-5 zeolite additive reads upon a second component comprising ZSM-5 zeolite and a second matrix) (Harris, [0029]);
5-40 wt. % ZSM-5 (i.e., the second component), and 35-70% Beta catalyst (i.e., the first component) corresponds to a weight ratio of the first component to the second component from 35:40 to 70:5, which encompasses or overlaps the ranges of the presently 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).
Further regarding claim 1, Harris does not explicitly disclose Beta catalyst is further used with a first matrix.
With respect to the difference, Kubicek teaches the use of zeolite beta for fluidized catalytic cracking application (Kubicek, Title, Abstract). Kubicek specifically teaches embedding crystals of zeolite beta in silica-alumina matrices (Kubicek, Abstract).
As Kubicek expressly teaches, zeolite beta embedded in silica-alumina matrices produces effective catalysts which maintain catalytic activity after treatment under 100% steam.
Kubicek is analogous art as Kubicek is drawn to the use of zeolite beta for fluidized catalytic cracking application.
In light of the motivation of embedding zeolite beta in silica-alumina matrices, it therefore would have been obvious to a person of ordinary skill in the art to embed the beta zeolite of Harris in a silica-alumina matric, in order to maintain catalytic activity, e.g., upon treatment under steam, and thereby arrive at the claimed invention.
Further regarding claim 1, regarding wherein the FCC additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, the recitation is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the Harries in view of Kubicek teaches the composition as presently claimed, it is clear that the catalyst composition of the Harries in view of Kubicek would be capable of performing the intended use, i.e. as an FCC additive composition and be present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 3, as applied to claim 1, Harris in view of Kubicek teaches 5-50 wt. % zeolite Y (reading upon the third component), 5-40 wt. % ZSM-5 (reading upon the second component), and 35-70% Beta catalyst (reading upon the first component), which corresponds to a weight ratio of 70:40:5 to 35:5:50, which encompasses or overlaps the range of the presently 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 claims 5-7, as applied to claim 1, Harris in view of Kubicek teaches 5-50 wt. % zeolite Y (reading upon the third component), 5-40 wt. % ZSM-5 (reading upon the second component), and 35-70% Beta catalyst (reading upon the first component), which encompasses or overlaps the ranges of the presently 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 9, as applied to claim 1, Harries in view of Kubicek teaches embedding crystals of zeolite beta in silica-alumina matrices; the ZSM-5 zeolite additive is prepared as a separate microsphere and contains phosphorus stabilized ZSM-5 zeolite, alumina, and kaolin bound together with phosphoric acid (the ZSM-5 zeolite additive reads upon a second component comprising ZSM-5 zeolite and a second matrix) (Harris, [0029]); wherein the Y zeolite is a macroporous, zeolite comprising Y zeolite crystallized as a layer on the surface of a porous alumina-containing matrix (reading upon a third component comprising Y zeolite and a third matrix) (Harris, claim 2).
Regarding claim 13, as applied to claim 1, Harries in view of Kubicek further teaches the phosphorus level on the Beta zeolite is between 1% to 7% P2O5 (reading upon oxidized phosphorus) (Harries, [0047]).
Given that Harries in view of Kubicek does not require a transitional alumina obtained by the calcination of a dispersible boehmite in the Beta zeolite embedded in silica-alumina matrices, therefore it is clear that Harries in view of Kubicek meets the claimed limitation of wherein the first component is substantially free of a transitional alumina obtained by the calcination of a dispersible boehmite.
Regarding claim 25, as applied to claim 1, the claim further limits the third component which is an optional embodiment of claim 1 (i.e. the third component would be 0 wt%, and therefore not required in claim 1) and therefore not required. As such, claim 25 is rejected based on identical/substantially identical reasons as claim 1.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Harris in view of Kubicek as applied to claim 1 above, and further in view of Shu et al., US 8,845,882 B2 (Shu).
Regarding claim 8, as applied to claim 1, Harries in view of Kubicek does not explicitly disclose the catalyst further comprising wherein an average particle size of the first component ranges from about 30 to about 250 micrometers, and an average particle size of the second component ranges from about 30 to about 250 micrometers, and an average particle size of the third component ranges from about 30 to about 250 micrometers.
With respect to the difference, Shu teaches FCC catalyst for olefin production (Shu, Abstract). Shu specifically teaches FCC catalysts normally consist of a range of extremely small spherical particles. Commercial grades normally have average particle sizes ranging from about 20 µm to 150 µm, preferably from about 50 µm to about 100 µm (Shu, column 1, 2nd paragraph from bottom).
Shu is analogous art as Shu is drawn to FCC catalyst for olefin production.
In light of the disclosure of Shu, it therefore would have been obvious to a person of ordinary skill in the art to produce the catalyst of Harris in view of Kubicek, wherein ZSM-5, Beta catalyst and zeolite Y each has an average particle size ranging from about 20 µm to 150 µm, preferably from about 50 µm to about 100 µm, and yield expected results, and thereby arrive at the claimed invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Harris in view of Kubicek as applied to claim 1 above, and further in view of Zafari et al., Application of zeolitic additives in the fluid catalytic cracking, Journal of Nanostructures, 2013 (Zafari).
Regarding claim 10, as applied to claim 1, Harries in view of Kubicek does not explicitly disclose the catalyst further comprising at least one additional component that is compositionally different from the first component, the second component, and the third component, wherein the at least one additional component comprises a zeolite selected from zeolites with the structure BEA, MSE, -SVR, FAU, MOR, CON, SOF, MFI, IMF, FER, MWW, MTT, TON, EUO, MRE, NAT CHA, or a combination thereof.
With respect to the difference, Zafari teaches application of zeolites in fluid catalytic cracking (Zafari, Abstract). Zafari specifically teaches the use of several zeolitic additives for the production light olefins and reduction of pollutants (Zafari, Abstract); medium pore-size zeolites other than ZSM-5 were investigated as an FCC additive include MCM-22 (Zafari, page 212, left column, bottom paragraph).
As Zafari expressly teaches, MCM-22 gives a similar increase in propene yield at lower loss in gasoline yield compared to ZSM-5 (Zafari, page 212, left column, bottom paragraph).
Zafari is analogous art as Zafari is drawn to application of zeolites in fluid catalytic cracking.
In light of the motivation of using MCM-22 zeolite (i.e., MWW zeolite) as catalytic additives as taught by Zafari, it therefore would have been obvious to a person of ordinary skill in the art to use MCM-22 (i.e., MWW zeolite), to supplement or partially replace or in conjunction with the catalyst of Harris in view of Kubicek, in order to achieve increase in propene yield, and thereby arrive at the claimed invention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Harries in view of Kubicek as applied to claim 1 above, and further in view of Kirker et al., US 4,724,066 (Kirker).
Regarding claim 12, as applied to claim 1, Harries in view of Kubicek further teaches for example, for the beta zeolite embedded in the silica-alumina matrices, zeolite is 50 wt.% (Kubicek, page 161, Table 1).
Harries in view of Kubicek does not explicitly disclose wherein the first component comprises aluminum phosphate (AlPO4) or amorphous aluminum phosphate at an amount of about 1 wt% to about 25 wt%, based on total weight of the first component.
With respect to the difference, Kirker teaches a catalyst comprising zeolite Beta (Kirker, Abstract). Kirker specifically teaches the catalyst further comprises aluminum phosphate (Kirker, Abstract); the zeolite may constitute from about 5 to about 95 weight percent of the total weight of the zeolite plus the aluminum phosphate (i.e., alumina phosphate constitutes about 5 to about 95 weight percent of the total weight of the zeolite plus the aluminum phosphate) (Kirker, paragraph spanning columns 8-9).
As Kirker expressly teaches, when used in sufficient amounts, the aluminum phosphate component ma enhance the catalyst lifetime (Kirker, column 8, bottom paragraph).
Kirker is analogous art as Kirker is drawn to a catalyst comprising zeolite Beta.
In light of the motivation of using aluminum phosphate with beta zeolite, as taught by Kirker, it therefore would have been obvious to a person of ordinary skill in the art to include aluminum phosphate in the beta zeolite embedded silica-alumina matrices, of Harris in view of Kubicek, wherein alumina phosphate constitutes about 5 to about 95 weight percent of the total weight of the zeolite plus the aluminum phosphate, which corresponds to, for example, 2.5 to 47.5 weight percent of the total weight of zeolite embedded silica-alumina matrices plus the aluminum phosphate, which overlaps the range of the presently claimed, in order to improve catalyst lifetime.
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).
Allowable Subject Matter
Claims 16 and 22 are allowed.
Claims 19 and 23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 16, 19, and 22-23, none of Harris, Kubicek, Zafari, or Kirker teaches or suggests wherein the zeolite surface area (ZSA) of the first component ranges from about 50 m2/g to about 300 m2/g, and wherein the steamed zeolite surface area (SZSA) of the first component ranges from about 50 m2/g to about 300 m2/g, after steaming in 100% steam at 1450 °F for 24 hours; or wherein at least about 65% of the ZSA of the first component is maintained after steaming in 100% steam at 1450 °F for 24 hours, wherein the Bronsted acidity of the first component ranges from about 10 µmol/g to about 65 µmol/g, and wherein an air jet attrition rate (AJAR) of the first component is less than about 5 wt%/hr; or wherein the second component has a MSA of the ZSM-5 zeolite ranging from about 80 m2/g to about 190 m2/g, and wherein the second component has a specific pore volume of about 0.02 cm3/g to about 0.20 cm3/g.
Response to Arguments
In response to the amended claims, the previous claim objections are withdrawn. However, the amended necessitates a new set of claim objections as set forth above.
In response to the amended claim 8, it is noted that Harris in view of Kubicek would not meet the claim 8. Therefore, the previous 35 U.S.C. 103 rejections over claim 8 is withdrawn from the record. However, the amendments necessitate a new set of rejections over Harris in view of Kubicek and Shu as set forth above.
Applicant primarily argues:
“As presently amended, claim 1 requires that the additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY. This is supported by the entirety of the original disclosure, especially at Paragraphs [0030] and [0150].
Such a low level of the beta zeolite component is not taught by the claims of Harris, and is not suggested by the claims of Harris, and is indeed taught-away by the claims of Harris. The present content of the beta zeolite component can never exceed about 30 weight percent, since the the additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition. In contrast, the beta zeolite component of the claims of Harris can never be less than 35 weight percent of Harris' catalyst blend.
Thus, no prima facie case of obviousness exists based on the claims of Harris, relative to the instant claims, and therefore, there is no basis for the nonstatutory double patenting rejection. Kubicek does not remedy the deficiencies of the claims of Harris, as this secondary reference merely teaches the use of zeolite beta for fluidized catalytic cracking application and specifically teaches embedding crystals of zeolite beta in silica-alumina matrices. However, there is no teaching in Kubicek which would motivate one to modify the claims (or claims' "teachings") to contravene their limit of the beta zeolite component of the claims of Harris always being greater than 35 weight percent of Harris' catalyst blend.”
Remarks, p. 8-9
The Examiner respectfully traverses as follows:
Regarding wherein the FCC additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, the recitation is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the patent in view of Kubicek teaches the composition as presently claimed, it is clear that the catalyst composition of the patent in view of Kubicek would be capable of performing the intended use, i.e. as an FCC additive composition and be present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention, as set forth above on pages 5-6.
Applicant further argues:
“As presently amended, claim 1 requires that the additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY.
Such a low level of the beta zeolite component is not taught by the claims or disclosure of Harris, and is not suggested by the claims or disclosure of Harris, and is indeed taught-away by the claims and disclosure of Harris.
Harris is limited to a hydrocarbon conversion catalyst which comprises, based on the total weight of the catalyst, a blend of: (a) 5 to 50 wt.% of a Y zeolite; (b) 5 to 40 wt.% of a ZSM-5 zeolite; and (c) 35 to 70 wt.% of a Beta zeolite. See, e.g., Harris' page 6 and its claim 1.
The present content of the beta zeolite component can never exceed about 30 weight percent, since the the additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition. In contrast, the beta zeolite component of the disclosure of Harris can never be less than 35 weight percent of Harris' catalyst blend.
Thus, no prima facie case of obviousness exists based on the disclosure of Harris, relative to the instant claims, and therefore, there is no basis for the obviousness rejection. Kubicek does not remedy the deficiencies of the disclosure of Harris, as this secondary reference merely teaches the use of zeolite beta for fluidized catalytic cracking application and specifically teaches embedding crystals of zeolite beta in silica-alumina matrices. However, there is no teaching in Kubicek which would motivate one to modify the disclosure of Harris to contravene its limit of the beta zeolite component of Harris always being greater than 35 weight percent of Harris' catalyst blend.
Moreover, there is no teaching or suggestion in Harris to operate outside its explicitly noted ranges. One of ordinary skill in the art would never seek to "optimize" outside of the ranges of the prior art. Thus, for at least this reason, the combination of teachings of the references do not attain a prima facie case of obviousness. It is respectfully requested that the Examiner reconsider this rejection and withdraw it.”
Remarks, p. 10
The Examiner respectfully traverses as follows:
Rregarding wherein the FCC additive composition is present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, the recitation is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the Harries in view of Kubicek teaches the composition as presently claimed, it is clear that the catalyst composition of the Harries in view of Kubicek would be capable of performing the intended use, i.e. as an FCC additive composition and be present in a FCC catalyst composition in an amount ranging from about 1 wt % to about 30 wt % based on total weight of the FCC catalyst composition, balance of the FCC catalyst composition being a base catalyst composition comprising zeolite Y, dealuminated zeolite Y, silica-enriched dealuminated zeolite Y, REY, USY, CREY, or REUSY, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention, as set forth above on pages 9-10.
Applicant further argues:
“Zafari also does not cure the deficiency of Harris, even taking into consideration all the teachings of Harris combined with Kubicek and Zafari. Zafari merely teaches the use of several zeolitic additives for the production light olefins and reduction of pollutants (Zafari, Abstract); medium pore-size zeolites other than ZSM-5 were investigated as an FCC additive include MCM- 22 (Zafari, page 212, left column, bottom paragraph). However, there is no teaching in Zafari which would motivate one to modify the disclosure of Harris to contravene its limit of the beta zeolite component of Harris always being greater than 35 weight percent of Harris' catalyst blend.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
It is noted that while Zafari does not disclose all the features of the present claimed invention, Zafari is used as teaching reference, namely using MCM-22 zeolite (i.e., MWW zeolite) as catalytic additives, in order to increase in propene yield (Zafari, page 212, left column, bottom paragraph), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Kirker also does not cure the deficiency of Harris, even taking into consideration all the teachings of Harris combined with Kubicek and Kirker. Kirker merely teaches a catalyst comprising zeolite Beta which further comprises aluminum phosphate However, there is no teaching in Kirker which would motivate anyone to modify the disclosure of Harris to contravene its limit of the beta zeolite component of Harris always being greater than 35 weight percent of Harris' catalyst blend.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
It is noted that while Kirker does not disclose all the features of the present claimed invention, Kirker is used as teaching reference, namely using aluminum phosphate with beta zeolite, in order to enhance the catalyst lifetime (Kirker, column 8, bottom paragraph), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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