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
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group , there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 5,2025.
Applicant's election with traverse of claims 1-8 and 15-16 in the reply filed on November 05, 2025 is acknowledged. The traversal is on the ground(s) that Chen uses different titanium to silicon range that is required in the claimed invention, as well as using different compounds for the titanium, silicon, tin, and template source. The applicant argues that Chen is not comparable as a result of these differences. This is not found persuasive because the claims in the application are geared towards the composition of a Sn-Ti-MFI molecular sieve, is fulfilled by Chen (embodiment 7) where they synthesize a compositionally identical product. Furthermore, the prior art teaches a titanium to silicon and tin to silicon range that is within the claimed range required by the claimed invention.
The requirement is still deemed proper and is therefore made FINAL.
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 2, 4, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation "molar ratio of titanium to silicon is 0.005-0.03", and the claim also recites "preferably 0.005-0.02" which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation "molar ratio of tin to silicon is 0.005-0.025", and the claim also recites "preferably 0.005-0.02" which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation "wherein the electron binding energy framework of tin active centers is 4.88-461.2 eV" , and the claim also recites "preferably 460.8-461.2 eV" which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 15 is rejected under 112(b) because it merely recites an “application” without any active, positive steps delimited how this use is actually practiced. See MPEP 2173.05(q).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it attempts to claims an “application” which is not among the categories of patentable inventions specified in 35 USC 101. See MPEP 2173.05(q).
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.
Claim(s) 1, 3-8 and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US 20130041181 A1).
Regarding claims 1,3-6, and 8,Chen discloses a synthesis process for a Sn-Ti-MFI molecular sieve which utilizes a titanium source (tetra butyl titanate), silicon source(tetraethyl silicate), a solvent, organic base, and a template (tetra propylammonium hydroxide isopropanol solution) (Chen [0043]) . The sieve is further supplemented by a metal source such as Tin (Chen [0018]). The process that Chen uses is also substantially the same as the process used to synthesize the claimed invention. From combining a silicon source, and organic base, a solvent, a tin source, a titanium source, and an alkali mixture (Chen [0043]) the resulting solution is heated between 50-90°C(Chen [0025]). This reflects the procedure in the instant invention which combines silicon source, and organic base, a solvent, a tin source, a titanium source, and an alkali mixture, and heats the solution at a temperature between 30- 80°C. See Spec pg. 7 line 9. The resulting mixture is sealed in a stainless steel can and heated at 180°C for 120 hours [5 days]. This parallels the step in the instant invention where the mixture is placed in a stainless-steel can which is used for a hydrothermal reaction [See Spec page. 13 line 7] at 120-200°C for 2-7 days. See Spec pg. 7 line 10. Furthermore, the material is dried and calcined (Chen [0043]),which corresponds to the procedure in the instant invention where drying and calcining are conducted. See Spec pg. 7 line 12.
While the prior art is silent regarding the electron binding energy, chemical shift, and structure of the sieve, the prior art and claimed invention would necessarily have the same structural and chemical properties as their composition and synthesis processes are substantially identical. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01.
Regarding claim 7, Chen discloses that the molecular sieve synthesized is Sn-TS-1 which is a Sn-Ti-MFI (Chen [0042]). Therefore, this disclosure fulfills the limitations set in the instant claim requiring the tin titanium molecular sieve to be a Sn-Ti-MFI molecular sieve.
Regarding claim 15, the prior art discloses the use of the molecular sieve in oxidation reactions such as ammoxidation of cyclohexane (an alkane) (Chen [0004]). With this in mind, the disclosure fulfills the limitations set in the instant claim requiring the molecular sieve to be applied to a process such as the oxidation reaction of alkanes.
Regarding claim 16, Chen discloses the use of tin-titanium-silicon molecular sieve in a catalyst (Chen [0050]). Therefore, this disclosure meets the limitations set in the instant claim requiring the tin-titanium-silicon molecular sieve to be used as a catalyst.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 20130041181 A1).
Regarding claim 2, Chen discloses a product with a titanium to silicon ratio of 0.005-0.01, and a metal (based on embodiment 7, the metal is Tin) to silicon ratio of 0.0005-0.02 (Chen [0022]). While the titanium to silicon ratio in the prior art lie inside the range of what it is in the claimed invention, the tin to silicon ratio shows an overlap in the range. Since the ranges in the instant claim "overlap or lie inside ranges disclosed by the prior art" a prima facie case exists. One of ordinary skill in the art would have found it obvious to use the titanium/metal to silicon ranges to produce a tin-titanium-silicon molecular sieve that fulfils the limitations set by the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNETTE H PHAN whose telephone number is (703)756-4520. The examiner can normally be reached M-F 8:30-6:30 EST.
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/ANNETTE PHAN/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
/WAYNE A LANGEL/Primary Examiner, Art Unit 1736