Prosecution Insights
Last updated: August 16, 2026
Application No. 18/037,179

DEHYDRATION OF LACTIC ACID AND RELATED COMPOUNDS IN SOLID ACIDS VIA MULTIFUNCTIONAL FLEXIBLE MODIFIERS

Non-Final OA §102§103§112
Filed
May 16, 2023
Priority
Nov 17, 2020 — provisional 63/114,758 +1 more
Examiner
CUTLIFF, YATE KAI RENE
Art Unit
1692
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Regents of the University of Minnesota
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allowance Rate
1037 granted / 1299 resolved
+19.8% vs TC avg
Strong +24% interview lift
Without
With
+24.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 2m
Avg Prosecution
35 currently pending
Career history
1316
Total Applications
across all art units

Statute-Specific Performance

§101
3.9%
-36.1% vs TC avg
§103
38.2%
-1.8% vs TC avg
§102
13.0%
-27.0% vs TC avg
§112
34.6%
-5.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1299 resolved cases

Office Action

§102 §103 §112
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 . Election/Restrictions Applicant’s election without traverse of Group III, the species of the compound of Fig. 1 where R = H and R11 = propyl, an example being compound in Table 5, in the reply filed on March 27, 2025 is acknowledged. Applicant’s election without traverse of Group III and species of March 27, 2025; and the solid acid catalyst of zeolite, in the reply filed on June 4, 2026 is acknowledged. Claims 7, 9,15,17, 18, 62, 63,64 and 71 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 4, 2026. Clams 1 – 3, 5, 12, 13, 16, 19 – 21 and 70 are under examination. Claim Objections Clams 1 – 3, 5, 7, 9, 12 – 21, 62 – 64, 70 and 71 are pending. Clams 7, 9, 14, 15, 17, 18, 62 – 64 and 71 are withdrawn. Clams 1 – 3, 5, 12, 13, 16, 19 – 21 and 70 are rejected. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 1 – 3, 5, 12, 13, 16, 19 – 21 and 70 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. Claim 1 recites the limitation “a solid acid catalyst comprising a multiplicity of acid sides on the surface”. This language is indefinite and encompass any solid, including for example polyacids or resins comprising acidic functionalities. Claim 1 recites the limitation “a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from a Bronsted acid site of the multiplicity of acid sites”. This limitation is indefinite and lacks clarity because one skilled in the art will not be able to distinguish what is covered by this definition and what is not. Specifically, as regards the term "multifunctional component, it is not clear whether it relates to a single molecule, which should comprise said at least two functional groups, or whether it concerns also mixtures of different compounds comprising the functional groups. The latter opens a way towards very broad interpretation of said component, as it may encompass also mixtures comprising for example, monofunctional amines and water, or alcohols etc. Claim 1 recites the limitation “a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from a Bronsted acid site of the multiplicity of acid sites”. This limitation is indefinite and lacks clarity because it is not clear when and what functional group is “configured” to accept a proton from a Bronsted acid site. Claim 1 is indefinite and lacks clarity, since the requirement that the multifunctional component is coupled to the surface of the solid acid catalyst cannot be verified by one skilled in the art. Claim 16 lacks clarity for incorporating by reference to FIG. 16. In this instance the Examiner concludes that there is a practical way to define the invention within the claim. Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). Claim 19 references “a multifunctional component”. The claim lacks clarity because claim 1 already references ““a multifunctional component”. If this is the same component as claim 1, it is suggested that the “a” be replaces with “the”. Claims 2, 3, 5, 12, 13, 16, 19 – 21 and 70 are rejected for being dependent upon a rejected base claim. Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. Claims 1 – 3, 5, 12, 13, 16, 19 – 21 and 70 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a composition comprising a Na-FAU zeolite loaded with 4,4’trimehtylenedipyridine (4,4’TMDP) or 1,2-bis(4-pyridyl)ethane, does not reasonably provide enablement for a composition comprised of any solid acid catalyst with multiple acid sites on the surface and any multifunctional component. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. The test for enablement is whether one skilled in the art could make and use the claimed invention from the disclosures in the specification coupled with information known in the art without undue experimentation (United States v. Telectronice, 8, USPQ2D 1217 (Fed. Cir, 1988). Whether undue experimentation is needed is not based upon a single factor but rather in a conclusion reached by weighing many factors. The factors to be considered in determining whether a disclosure meets the enablement requirements of 35 U.S.C. 112, first paragraph, have been described in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir., 1988). The court in Wands states, “Enablement is not precluded by the necessity for some experimentation, such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue’, not ‘experimentation’” (Wands, 8 USPQ2sd 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations” (Wands, 8 USPQ2d 1404). Among these factors are: (1) the nature of the invention; (2) the breadth of the claims; (3) the state of the prior art; (4) the predictability or unpredictability of the art; (5) the relative skill of those in the art; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary. While all of these factors are considered, a sufficient amount for a prima facie case is discussed below. (1) The nature of the invention and (2) the scope of the claims: The nature of the claims are drawn to a composition designed to act as a catalyst comprised of a solid acid catalyst comprising a multiplicity of acid sites on the surfaces; and a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from a Bronsted acid site of the multiplicity of acid sites. The scope of the invention in the claims is such that the solid acid catalyst covers any solid including polyacids or resins having acidic functionalities. While the multifunctional component can be a single molecule or not; or mixtures of different compounds comprising functional groups. Additonally, dependent claim 3 recites that the solid acid catalyst is a zeolite. (3) The state of the prior art: Shen discloses a composition (Abstract, series of acid-base bifunctional Sn-Beta- NH2 catalysts) comprising: a solid acid catalyst comprising a multiplicity of acid sites on the surfaces (pp. 18990, Col. 1, Para. 3, By post-grafting organoamines with the surface silanol groups of the zeolite materials, highly stable catalysts containing solid acid and base catalytic sites could be synthesized; pp. 18992, Col. 2, Para. 2, Sn-Beta zeolite, equipped with Lewis acid sites, could be an acid-base bifunctional catalyst by simply modifying with APTMS (3-Aminopropyltrimethoxysilane); and a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from an acid site of the multiplicity of acid sites (pp. 18990, Col. 1, Para. 3, By post-grafting organoamines with the surface silanol groups of the zeolite materials, highly stable catalysts containing solid acid and base catalytic sites could be synthesized; pp. 18992, Col. 2, Para. 2, Sn-Beta zeolite, equipped with Lewis acid sites, could be an acid-base bifunctional catalyst by simply modifying with APTMS (3- Aminopropyltrimethoxysilane); see also pp. 18991, Fig. 1, Sn-Beta catalyst surface grafted with 3-Aminopropyltrimethoxysilanes). (RSC Advances, 2019). Murphy discloses (Experimental section) a composition comprising solid acid catalyst (NaHY zeolite) and components comprising functional groups which can accept proton from a Bronsted acid site (pyridine added into the reaction mixture, water, methyl lactate). Further, Murphy discloses a method of dehydrating methyl lactate, comprising contacting solid acid (NaHY zeolite) with the reactant (methyl lactate), wherein a multifunctional component (pyridine, methyl lactate, water) is coupled to the surfaces of solid acid, and dehydrating the methyl lactate to methyl acrylate. The method comprised providing a fluid comprising the multifunctional component to a vessel containing the solid acid catalyst (reactor tube). The fluid comprised solvent and the reactant (mixture of methyl lactate, water and pyridine). (see Entire document) (ACS Catalysis, 2016) Valyocsik discloses a method is described for synthesizing crystalline zeolite ZSM-35, which can be used as a catalyst in hydrocarbon conversion. A reaction mixture is prepared which contains sources of an alkali metal oxide, an organic N-containing cation, SiO2, Al2O3, and water. It has the mole ratios: SiO2/Al2O3 10-50, H2O/SiO2 5-200, OH-/SiO2 0.01-2, M/SiO2 0.01-3, and R-SiO2 0.02-2, where R is bis(N-methylpyridyl)ethylinium cation and M is an alkali metal ion. The mixt. is maintained at 80-250° until crystals of the silicate are formed. (US 4,584,286; Summary). (4) the predictability or unpredictability of the art: Chemistry is unpredictable. In reMarzocchi, 439 F2d 220, 169 USPQ 367 para. 3. However, the "predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or know results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. MPEP 2164.03. The state of the art fails to support the proposition that catalysts to facilitate specific transformations can be made without undue experimentation, when it is recognized in the art that the catalytic arts remain highly unpredictable. For example, Paulik et al (US 4,792,620 12-20-1988) teaches (Col. 4:39-44) that: "It will be noted, however, that catalysis is basically an inexact science, that is, an empirical art, unenlightened by rules decreeing certainty and predictability.". Additionally, Knorpp states that zeolites are composed of silicon and aluminum atoms that are tetragonally coordinated (T-sites) to oxygen. These T-sites are arranged in a variety of ways that allow for over 232 zeolite structures. They differ from each other in pore size and the connectivity of each pore. Due to the different charges on the silicon and aluminum, when aluminum is in the structure it produces a negative charge. This negative charge is balanced by a cation, and in a reaction such as methane to methanol conversion, this cation and associated oxygen form the active site. (pp. 2806, rt. col. last para. to pp. 2807 ln 4). (5) The relative skill of those in the art: I believe that a person of ordinary skill in the art would have had any one of the following: (i) a Ph.D. degree in Chemistry or Chemical Engineering or a related field, and about 3 years total of practical experience; (ii) a Masters degree in Chemistry or Chemical Engineering or a related field, and about 5 years total of practical experience; (iii) a Bachelors degree in Chemistry or Chemical Engineering or a related field, and about 10 years total of practical experience. These descriptions are approximate, and a higher level of education or specific skill might make up for less experience, and vice-versa. (6) The amount of direction or guidance presented: The Applicant has only provided guidance for ex situ preparation of the composition wherein the solid acid catalyst is zeolite Na-FAU loaded with 4,4’trimehtylenedipyridine (4,4’TMDP) or 1,2-bis(4-pyridyl)ethane. ([00139] – [00142]). The specification provides not guidance for a composition comprised of any solid acid catalyst with multiple acid sites on the surface and any multifunctional component. (7) the presence or absence of working examples: Other than what is mentioned in (6), the specification has provided guidance for in situ catalyst activity wherein methyl lactate and 1,2-bis(4-pyridyl)ethane are introduced to the calcined Na-FAU catalyst bed. ([00136] – [00137]). However, the specification does not provide a composition comprised of any solid acid catalyst or any zeolite, with multiple acid sites on the surface and any multifunctional component. (8) The quantity of experimentation necessary: Considering the state of the art as discussed by the references above, particularly with regards to preparing a composition to act as a catalyst and the high unpredictability in the art as evidenced therein, and the lack of guidance provided in the specification, one of ordinary skill in the art would be burdened with undue experimentation to practice the invention commensurate in the scope of the claims. The examiner understands that there is no requirement that the specification disclose every possible embodiment if there is sufficient guidance given by knowledge in the art (See M.P.E.P. § 2164.05(a) “[t]he specification need not disclose what is well-known to those skilled in the art and preferably omits that which is well-known to those skilled and already available to the public. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81,94 (Fed. Cir. 1986), cert, denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481,489 (Fed. Cir. 1984).”). However, the instant case goes beyond what is known in the art, because the specification does not offer any guidance on how one of ordinary skill would go about practicing the invention for the identification, preparation and use of a composition of any solid acid catalyst, possibly any zeolite, comprising a multiplicity of acid sites on the surface and any multifunctional component coupled to the surface of the solid acid catalyst, other than those specifically disclosed in the specification. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 1, 3, 19 and 20 are rejected under 35 U.S.C. 10(a)(1) as being anticipated by Shen et al. (RSC Advances). The rejected claim covers, inter alia, to a composition designed to act as a catalyst comprised of a solid acid catalyst comprising a multiplicity of acid sites on the surfaces; and a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from a Bronsted acid site of the multiplicity of acid sites. Dependent claim 3 further limits the solid acid catalyst to zeolite. Dependent claim 19 further limits the geometrical flexibility angle of the multifunctional component. Dependent claim 20 further limits the geometrical flexibility angle of the multifunctional component. However, Shen discloses a composition (Abstract, series of acid-base bifunctional Sn-Beta- NH2 catalysts) comprising: a solid acid catalyst comprising a multiplicity of acid sites on the surfaces (pp. 18990, Col. 1, Para. 3, By post-grafting organoamines with the surface silanol groups of the zeolite materials, highly stable catalysts containing solid acid and base catalytic sites could be synthesized; pp. 18992, Col. 2, Para. 2, Sn-Beta zeolite, equipped with Lewis acid sites, could be an acid-base bifunctional catalyst by simply modifying with APTMS (3-Aminopropyltrimethoxysilane); and a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from an acid site of the multiplicity of acid sites (pp. 18990, Col. 1, Para. 3, By post-grafting organoamines with the surface silanol groups of the zeolite materials, highly stable catalysts containing solid acid and base catalytic sites could be synthesized; pp. 18992, Col. 2, Para. 2, Sn-Beta zeolite, equipped with Lewis acid sites, could be an acid-base bifunctional catalyst by simply modifying with APTMS (3- Aminopropyltrimethoxysilane); see also pp. 18991, Fig. 1, Sn-Beta catalyst surface grafted with 3-Aminopropyltrimethoxysilanes). Also, Shen discloses the solid acid catalyst being zeolite. (claim 3) (pp. 18990, left col. Catalyst synthesis). Further, by post-grafting organoamines with the surface silanol groups of the zeolite materials, highly stable catalysts containing solid acid and base catalytic sites could be synthesized; pp. 18992, Col. 2, Para. 2, Sn-Beta zeolite, equipped with Lewis acid sites, could be an acid-base bifunctional catalyst by simply modifying with APTMS (3-Aminopropyltrimethoxysilane); see also pp. 18991, Fig. 1, Sn-Beta catalyst surface grafted with 3-Aminopropyltrimethoxysilanes). Regarding the further limits the geometrical flexibility angle of the multifunctional component (claim 19); the composition of Shen is the same as the instantly claimed composition. As a product and its properties are inseparable, the composition of Shen inherently possesses the property of wherein, using a baseline of a normal axis of a first one of the at least two functional groups, a geometric flexibility angle of a multifunctional component is the angle or set of angles accessible by a second one of the at least two functional groups, and the geometric flexibility angle is greater than 5 degrees Regarding the further limits the geometrical flexibility angle of the multifunctional component (claim 20), specifically, wherein the multifunctional component comprises a minimum geometric flexibility angle and a maximum geometric flexibility angle, and a difference between the minimum geometric flexibility angle and the maximum geometric flexibility angle is greater than 5 degrees; the composition of Shen is the same as the instantly claimed composition. As a product and its properties are inseparable, the composition of Shen inherently possesses the property of wherein the multifunctional component comprises a minimum geometric flexibility angle and a maximum geometric flexibility angle, and a difference between the minimum geometric flexibility angle and the maximum geometric flexibility angle is greater than 5 degrees. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim(s) 1, 2, 3, 12, 13, 19, 20 and 21 are rejected under 35 U.S.C. 102(a)(1) & (1)(2) as being anticipated by Valyocsik (US 4,584,286). The rejected claim covers, inter alia, to a composition designed to act as a catalyst comprised of a solid acid catalyst comprising a multiplicity of acid sites on the surfaces; and a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from a Bronsted acid site of the multiplicity of acid sites. Dependent claim 2 further limits the composition to further including a cation. Dependent claim 3 further limits the solid acid catalyst to zeolite. Dependent claim 12 further limits the multifunctional component wherein at least one of the at least two functional groups is an amine functional group. Dependent claim 13 further limits the multifunctional component wherein at least two of the at least two functional groups are amine functional groups. Dependent claim 19 further limits the geometrical flexibility angle of the multifunctional component. Dependent claim 20 further limits the geometrical flexibility angle of the multifunctional component. Dependent claim 21 further limits the two functional groups. However, Valyocsik discloses a method is described for synthesizing crystalline zeolite ZSM-35, which can be used as a catalyst in hydrocarbon conversion. A reaction mixture is prepared which contains sources of an alkali metal oxide, an organic N-containing cation, SiO2, Al2O3, and water. It has the mole ratios: SiO2/Al2O3 10-50, H2O/SiO2 5-200, OH-/SiO2 0.01-2, M/SiO2 0.01-3, and R-SiO2 0.02-2, where R is bis(N-methylpyridyl)ethylinium cation and M is an alkali metal ion. The mixture is maintained at 80-250° until crystals of the silicate are formed. (col. 1, ln 36 – 57). Further Valyocsik includes a cation of bis(N-methylpyridyl)ethylinium and an alkali metal cation. (col. 1, ln 54 – 56 & col. 3, ln 9 – 10). The cation can be hydrogen, ammonium, calcium and magnesium. (col. 4, ln 55 – 59). Valyocsik discloses a composition where the solid acid catalyst is zeolite (claim 3). (col. 1, ln 36 – 38 & col. 2, ln 7). Regarding further limits the multifunctional component wherein at least one of the at least two functional groups is an amine functional group (claim 12); and further limits the multifunctional component wherein at least two of the at least two functional groups are amine functional groups (claim 13), the Examiner is directed to Valyocsik. Valyocsik includes a cation of bis(N-methylpyridyl)ethylinium which has function amine groups. Regarding the further limits the geometrical flexibility angle of the multifunctional component (claim 19); the composition of Valyocsik is the same as the instantly claimed composition. As a product and its properties are inseparable, the composition of Shen inherently possesses the property of wherein, using a baseline of a normal axis of a first one of the at least two functional groups, a geometric flexibility angle of a multifunctional component is the angle or set of angles accessible by a second one of the at least two functional groups, and the geometric flexibility angle is greater than 5 degrees Regarding the further limits the geometrical flexibility angle of the multifunctional component (claim 20), specifically, wherein the multifunctional component comprises a minimum geometric flexibility angle and a maximum geometric flexibility angle, and a difference between the minimum geometric flexibility angle and the maximum geometric flexibility angle is greater than 5 degrees; the composition of Valyocsik is the same as the instantly claimed composition. As a product and its properties are inseparable, the composition of Shen inherently possesses the property of wherein the multifunctional component comprises a minimum geometric flexibility angle and a maximum geometric flexibility angle, and a difference between the minimum geometric flexibility angle and the maximum geometric flexibility angle is greater than 5 degrees. Regarding the further limitation of the two functional groups to being separated by a spacer (claim 21). In Valyocsik the bis(N-methylpyridyl)ethylinium the two functional groups are separated by an alkyl spacer. (col. 2, ln 60 – 65). 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. Claim(s) 1, 2, 3, 5 and 70 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Shen et al. (RSC Advances) and Frances et al. (US 2012/0205286) . The rejected claim covers, inter alia, to a composition designed to act as a catalyst comprised of a solid acid catalyst comprising a multiplicity of acid sites on the surfaces; and a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from a Bronsted acid site of the multiplicity of acid sites. Dependent claim 2 further limits the composition to further including a cation. Dependent claim 3 further limits the solid acid catalyst to zeolite. Dependent claim 5 further limits the zeolite to a FAU zeolite. Dependent claim 70 further limits the zeolite to one or more of FAU, EMT, MFI, BEA, MOR, LTL, MAZ, SFV, STO, and SAO. However, Shen discloses a composition (Abstract, series of acid-base bifunctional Sn-Beta- NH2 catalysts) comprising: a solid acid catalyst comprising a multiplicity of acid sites on the surfaces (pp. 18990, Col. 1, Para. 3, By post-grafting organoamines with the surface silanol groups of the zeolite materials, highly stable catalysts containing solid acid and base catalytic sites could be synthesized; pp. 18992, Col. 2, Para. 2, Sn-Beta zeolite, equipped with Lewis acid sites, could be an acid-base bifunctional catalyst by simply modifying with APTMS (3-Aminopropyltrimethoxysilane); and a multifunctional component coupled to the surfaces of the solid acid catalyst, wherein each multifunctional component comprises at least two functional groups configured to accept a proton from an acid site of the multiplicity of acid sites (pp. 18990, Col. 1, Para. 3, By post-grafting organoamines with the surface silanol groups of the zeolite materials, highly stable catalysts containing solid acid and base catalytic sites could be synthesized; pp. 18992, Col. 2, Para. 2, Sn-Beta zeolite, equipped with Lewis acid sites, could be an acid-base bifunctional catalyst by simply modifying with APTMS (3- Aminopropyltrimethoxysilane); see also pp. 18991, Fig. 1, Sn-Beta catalyst surface grafted with 3-Aminopropyltrimethoxysilanes). Also, Shen discloses the solid acid catalyst being zeolite. (claim 3) (pp. 18990, left col. Catalyst synthesis). The difference between Shen and the instantly claimed invention is as follows: the composition to further including a cation (claim 2); the zeolite is a FAU zeolite (claim 5); and the zeolite to one or more of FAU, EMT, MFI, BEA, MOR, LTL, MAZ, SFV, STO, and SAO (claim 70). However, with regard to the composition to further including a cation comprised of hydrogen, ammonium, lithium, sodium, potassium, cesium, magnesium, calcium, strontium, barium, or a combination thereof, the Examiner turns to the teaching of Francis. The prior art of Francis discloses is also in the field of catalyst compositions (Abstract) and teaches further comprising a cation comprising hydrogen, ammonium, lithium, sodium, potassium, cesium, magnesium, calcium, strontium, barium, or a combination thereof (pp. 3, [0028], The dealuminated USY Zeolite having the particular textural characteristics defined above and suitable for the utilization in the catalyst support used in the process according to the invention is advantageously prepared from a Y Zeolite of FAU structural type; para. [0053], modification of said initial dealuminated USY Zeolite advantageously comprises a stage b) of at least one partial or total exchange of said alkaline cations; para. [0045], in very preferred manner, said cation is the Na+ or K+ cation) It would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to modify Shen to include the cation as taught by Francis. The motivation for doing so would have been to adjust zeolitic components to the desired ratio by ion exchange (Francis para. [0057]). Regarding the zeolite is a FAU zeolite (claim 5), the Examiner turns to the teaching of Francis. The prior art of Francis is also in the field of catalyst compositions (Abstract) and teaches wherein the zeolite comprises a FAU zeotype (para. [0028], The dealuminated USY Zeolite having the particular textural characteristics defined above and suitable for the utilization in the catalyst support used in the process according to the invention is advantageously prepared from a Y Zeolite of FAU structural type; para. [0053], modification of said initial dealuminated USY Zeolite advantageously comprises a stage b) of at least one partial or total exchange of said alkaline cations). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to modify Shen to include FAU zeotype as taught by Francis. The motivation for doing so would have been to incorporate a structure with greater catalytic activity (Francis, para. [0011] & [0028]). With regards to the zeolite to one or more of FAU, EMT, MFI, BEA, MOR, LTL, MAZ, SFV, STO, and SAO (claim 70), the Examiner turns to the teaching of Francis. The prior art of Frances is also in the field of catalyst compositions (Francis, Abstract) and teaches wherein the solid acid catalyst comprises one or more of FAU, EMT, MFI, BEA, MOR, LTL, MAZ, SFV, STO, and SAO (Francis Para. [0028], The dealuminated USY Zeolite having the particular textural characteristics defined above and suitable for the utilization in the catalyst support used in the process according to the invention is advantageously prepared from a Y Zeolite of FAU structural type; Para. [0053], modification of said initial dealuminated USY Zeolite advantageously comprises a stage b) of at least one partial or total exchange of said alkaline cations). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to modify Shen to include FAU as taught by Francis. The motivation for doing so would have been to incorporate a structure with greater catalytic activity (Francis para. [0011] & para. [0028]). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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Prosecution Timeline

May 16, 2023
Application Filed
Aug 04, 2026
Non-Final Rejection mailed — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
99%
With Interview (+24.2%)
2y 2m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 1299 resolved cases by this examiner. Grant probability derived from career allowance rate.

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