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 .
Response to Amendment
This action is responsive to correspondence filed on 06/30/2026.
Claims 1, 4, 7-11, 13-15 and 17-19 are pending. Claims 2-3, 5-6, 12, 16, 20-21 are canceled.
The previous rejections of claims 1, 4, 7-11, 13-15 and 17 under 35 U.S.C. 103 are maintained.
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.
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.
Claim(s) 1, 4, 7-11, 13-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ojo et al (US 2017/0058209) in view of McVicker et al (US 4,094,821) and Lei et al (US 2017/0066979).
With respect to claims 1 and 4, Ojo discloses a hydroisomerization process, the process comprising:
contacting a hydrocarbon feed with a hydroisomerization catalyst under hydroisomerization conditions to produce a product (see paragraph 0069 and 0091 - 0092);
wherein, the hydroisomerization catalyst comprises an SSZ-91 molecular sieve, including at least one active metal selected from nickel, platinum and palladium and combination thereof (see paragraph 0068).
Thus, in the broadest interpretation Ojo discloses wherein catalyst includes a first modifying metal selected from nickel, platinum and palladium and combination thereof, and the second modifying metal selected nickel, platinum and palladium and combination thereof.
In as much, Ojo does not specifically disclose wherein the catalyst comprises wherein the first modifying metal is selected from Re, Ru, Ir, and Sn and the second modifying metal is selected from Re, Ru, Ir, and Sn.
However, Ojo discloses that suitable metals for the disclosed catalyst could be found in McVicker, incorporated by reference (see paragraph 0068).
McVicker discloses suitable catalyst metals include, Group VIII noble metals including, Pt, Ir, Pd, Ru, including a combination of Pt and Ir (see col 3 lines 35-45);
McVicker further discloses wherein the catalyst also includes a promoter metal, such as Rhenium (see col 3 lines 50-68).
Thus, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the invention to modify the Ojo catalyst with a first modifying metal is selected from Pt, Pd, Ni, Re, Ru, Ir and the second modifying metal is selected from Pd, Ni, Re, Ru, Ir, in view of McVicker, as Ojo discloses that McVicker disclosed metals are applicable to the SZZ-91 catalyst.
The prior combination does not disclose wherein the hydroisomerization process is useful to make dewaxed products including base oils.
However, it is noted, that Ojo discloses that the SSZ-91 is useful for a variety of hydrocarbon conversion reactions such as hydrocracking, dewaxing, olefin isomerization, alkylation and isomerization of aromatic compounds and the like (see paragraph 0069).
In a related process for producing base oils, Lei discloses utilizing a dewaxing (hydroisomerization) catalyst comprising a SSZ-91 molecular sieve, support and platinum and palladium to produce base oils (see abstract, paragraph 0123-0132).
Thus, it would have been obvious to one with ordinary skill in the art, before the effective filing date to utilize the hydroisomerization catalyst of Ojo in a process to make base oils in view of Lei, as said claimed catalyst are used in the production scheme to developing base oils.
With respect to claim 7-8, the prior combination teaches the limitation of claim 1.
McVicker discloses wherein noble metal is used the metal concentration is preferably below 2 wt.% and wherein non-noble metals are used the metal concentration is from about 1 to 25 wt.% (see col 4 lines 1-15).
With respect to claim 9, the prior combination teaches the limitations of claim 1.
McVicker discloses wherein noble metal is used the metal concentration is preferably below 2 wt.% and wherein non-noble metals are used the metal concentration is from about 1 to 25 wt.% (see col 4 lines 1-15).
With respect to claim 10, the prior combination teaches the limitations of claim 1.
McVicker discloses wherein noble metal is used the metal concentration is preferably below 2 wt.% and wherein non-noble metals are used the metal concentration is from about 1 to 25 wt.% (see col 4 lines 1-15).
With respect to claim 11, the prior combination teaches the limitation of claim 1. Ojo further discloses wherein the silicon oxide to aluminum oxide mole ratio of the sieve is in the range of 40 to 220 (see paragraph 0016).
With respect to claim 13, the prior combination teaches the limitation of claim 1.
Lei further discloses wherein the dewaxing catalyst comprises a support including alumina, and/or amorphous alumina (see paragraph 0125-0126).
With respect to claim 14, the prior combination teaches the limitation of claim 13.
McVicker discloses wherein noble metal is used the metal concentration is preferably below 2 wt.% and wherein non-noble metals are used the metal concentration is from about 1 to 25 wt.% (see col 4 lines 1-15).
Lei further discloses wherein the catalyst comprises 5 to 80 wt.% of the matrix material (see paragraph 0129), and 0.0 to 80 wt.% of the SSZ-91 molecular sieve (see paragraph 0131).
With respect to claim 15, the prior combination teaches the limitation of claim 1. Lei further discloses wherein lube feedstock comprises a deasphalted oil (see figure 2 and paragraph 0015).
With respect to claim 17, the prior combination teaches the limitation of claim 1.
The prior combination does not disclose wherein the base oil product has a reduced aromatics content as compared with a base oil product produced in the same process using an SSZ-91 catalyst that only contains Pt as the modifying metal.
However, barring any expected result, it would be expected that the catalyst disclosed by the prior art having the same hydroisomerization composition would inherently have similar characteristics as claimed.
Thus, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the invention to expect an increased activity of a catalyst with two modifying metals, as compared with a catalyst that only contains Pt as the modifying metal.
Claim Rejections - 35 USC § 103
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ojo, McVicker and Lei as applied to claim 17 above, and further in view of Miller (WO 97/12012).
With respect to claim 18, the prior combination teaches the limitation of claim 17. The prior combination further discloses using modifying metals platinum and palladium in the base oil producing process (see Lei paragraph 0132, see Ojo paragraph 0068).
The prior combination does not disclose utilizing a heavy neutral base oil feedstock as Claimed.
Miller discloses an integrated process is provided for preparing a dewaxed heavy lube base oil product and a dewaxed light lube base oil product from a waxy feedstock (see abstract), wherein heavy lube base oil includes a heavy neutral fraction (see abstract and page 5 lines 20-30).
Thus, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the invention to utilize a heavy neutral base oil feedstock with prior combination in view of Miller, as said feedstock is conventional.
With respect to claim 19, the prior combination teaches the limitation of claim 18.
The prior combination does not disclose wherein the aromatics conversion is increased by at least 1.5 wt.% or 2.0 wt.%, as compared with the use, in the same process, of an SSZ-91 catalyst that only contains Pt as the modifying metal.
However, barring any expected result, it would be expected that the catalyst disclosed by the prior art having the same hydroisomerization composition would inherently have similar characteristics as claimed.
Thus, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the invention to expect an increased activity of a catalyst with two modifying metals, as compared with a catalyst that only contains Pt as the modifying metal.
Response to Arguments
Applicants’ arguments filed 06/30/2026 have been fully considered but they are not persuasive.
Examiner understands the Applicant arguments to be:
Applicants respectfully submit the pending §103 rejections fail to establish a prima facie case of obviousness because they rely on unsupported factual assumptions and legally insufficient reasoning. The Office Action improperly treats broad disclosures of alternative catalyst metals as though they disclose or suggest the specific claimed bimetallic SSZ-91 catalyst, relies on incorporation by reference principles without establishing a corresponding motivation to select and combine the cited teachings, and fails to provide an adequate rationale for transferring McVicker's reforming-catalyst disclosures into the distinct context of SSZ-91 base oil hydroisomerization.
The rejection further does not explain why a skilled artisan would have selected the particular metal combinations, loadings, ratios, and process configurations recited in the pending claims.
With respect to the remarks above, Ojo (US 2017/0058209) discloses a hydroisomerization process, the process comprising:
contacting a hydrocarbon feed with a hydroisomerization catalyst under hydroisomerization conditions to produce a product (see paragraph 0069 and 0091 - 0092);
wherein, the hydroisomerization catalyst comprises an SSZ-91 molecular sieve, includes one or more group 8 to 10 metals, as disclosed by McVicker et al (US 4,094,821) including combinations with nickel, palladium and platinum (see paragraph 0068-0069).
Thus, in the broadest interpretation Ojo discloses the Applicants catalyst. The combination of Platinum and Palladium is already disclosed by OJO (see paragraph 0068).
McVicker discloses suitable catalyst metals include, Group VIII noble metals including, Pt, Ir, Pd, Ru, including a combination of Pt and Ir (see col 3 lines 35-45);
McVicker further discloses wherein the catalyst also includes a promoter metal, such as Rhenium (see col 3 lines 50-68).
Thus, all the components of the claimed catalysts are disclosed by Ojo with McVicker incorporated by reference.
It is expected that one of ordinary skill in the art, would readily be able to produce a catalyst, such as the claimed Multi-metallic SSZ-91 catalyst in view of Ojo and McVicker with the expectation of success through routine conventional methods.
The Office Action also relies on unsupported assertions of routine optimization and inherency. With respect to the claimed catalyst metal loadings and ratios, the rejections do not identify any recognized result-effective variable or provide evidence explaining why the claimed parameters would have been selected. While the comparative aromatics-conversion limitations are acknowledged to be absent from the cited references, such performance is nevertheless said to inherently result from the proposed catalyst combinations. The MPEP requires that an allegedly inherent property be necessarily present, not merely expected or possible, and the Office Action provides no evidence satisfying that requirement.
The Office Action further fails to meaningfully evaluate Applicant's comparative experimental data and objective evidence of nonobviousness. The specification contains comparative examples demonstrating improved aromatics conversion attributable to the claimed bimetallic SSZ-91 catalyst system, yet the rejection does not analyze the magnitude of the improvement, nexus to the claimed invention, or whether such results would have been expected in view of the cited art. The MPEP makes clear that objective indicia and unexpected results must be considered as part of the obviousness inquiry.
With respect to the Argument above, it’s unclear as to which specific claim the Applicant is referring to.
However, with respect to claim 17, the prior combination does not disclose wherein the base oil product has a reduced aromatics content as compared with a base oil product produced in the same process using an SSZ-91 catalyst that only contains Pt as the modifying metal.
However, barring any expected result, it would be expected that the catalyst disclosed by the prior art having the same hydroisomerization composition would have similar characteristics as claimed.
However, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) .
In this case looking at the Applicant disclosure the unexpected results do not occur over the Applicant claimed range, see Applicant disclosure paragraphs 0055-0059.
Applicant submits that the Office Action does not establish that the cited art teaches or renders obvious the presently claimed bimetallic SSZ-91 catalyst. Claim 1 is not directed merely to an SSZ-91 catalyst containing any one of several alternative modifying metals. Rather, claim 1 requires an SSZ-91 molecular sieve and at least two different modifying metals selected according to the recited first- metal and second-metal groupings, with the first and second metals being different. The Office Action appears to treat Ojo's generalized disclosure of metals such as nickel, platinum, and palladium, including possible combinations, as though that disclosure itself teaches the presently claimed first- metal/second-metal catalyst arrangement. That treatment is legally and factually deficient. A disclosure that a genus may include several alternative metals, or even that metals may be used in "combinations," does not itself identify the particular claimed species or subgenus, does not identify the claimed first and second metal relationship, and does not explain why a person of ordinary skill would have selected the claimed bimetallic SSZ-91 catalyst arrangement from among the many possible alternatives. The rejection also does not identify an actual Ojo embodiment employing two different modifying metals on SSZ-91 and instead appears to reconstruct the claim by selecting one disclosed metal as the first metal and another disclosed metal as the second metal.
It is the Examiners position that the argument above, has been addressed in the responses above.
Applicant further submits that the Office Action overstates the significance of Ojo's reference to McVicker. Even if Ojo identifies McVicker as a source of information regarding suitable metals, that does not mean every metal disclosure in McVicker becomes a preferred or obvious modification of every Ojo catalyst embodiment. Incorporation or citation of another document may make certain material available for consideration, but it does not itself establish that a skilled artisan would have selected a particular disclosure from the incorporated material, would have applied that disclosure to the host reference in the manner required by the claims, or would have had a reasonable expectation of obtaining the claimed catalyst and process performance. The present rejection does not identify an SSZ-91 catalyst in McVicker, does not identify a base oil hydroisomerization process in McVicker, and does not identify any teaching that Pt/Re, Pt/Ru, Pt/Ir, Pt/Pd, or other claimed combinations should be combined with SSZ-91 for the presently claimed base oil process.
It is the Examiners position that the argument above, has been addressed in the previous responses above.
Applicant submits that McVicker concerns materially different catalyst technology from the presently claimed invention. Applicant's pending claims are directed to a base oil hydroisomerization process using an SSZ-91 molecular sieve catalyst having two different modifying metals. McVicker, by contrast, has been distinguished as reforming catalyst art. Applicant previously made this distinction in a response to a previous rejection and the rejection was withdrawn after the prior arguments were found persuasive. The current Office Action does not remedy the deficiency because it does not-6-
explain why a skilled artisan would transfer reforming catalyst metal teachings from McVicker into the different technological setting of SSZ-91-based catalytic dewaxing or hydroisomerization for base oil production.
In response to applicant's argument that McVicker is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, the reference was incorporated by reference in Ojo. Instead of repeating some information contained in another document, an application may attempt to incorporate the content of another document or part thereof by reference to the document in the text of the specification. The information incorporated is as much a part of the application as filed as if the text was repeated in the application and should be treated as part of the text of the application as filed. See MPEP 2163.07 (b)
Those rationales do not support the present rejection absent an explanation as to why the proposed transfer from McVicker's reforming environment to Applicant's SSZ-91 base oil hydroisomerization environment would have been technically reasonable and predictable. The Office Action does not identify any teaching that McVicker's reforming metals would provide the same or predictable benefit when used with SSZ-91 in a base oil process. Nor does it explain why the SSZ-91 catalyst would have been "ready for improvement" utilizing McVicker's reforming metal teachings. MPEP §2144 further warns that rationales based on scientific theory, legal precedent, or common knowledge must be explained and shown to apply to the facts at hand. The rejection's bare assertion that the metals are "applicable" to Ojo's catalyst does not provide the required factual and technical bridge between reforming catalysts and SSZ-91 base oil hydroisomerization. The Office Action Still Does Not Establish Motivation to Use the Claimed Bimetallic SSZ-91 Catalyst in a Base Oil Process.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, the broad limitations of the claimed catalyst are disclosed by Ojo. Ojo further discloses wherein said catalyst can be utilized for dewaxing and isomerization of aromatic and the like. McVicker was identified by reference in Ojo, thus the information incorporated is as much a part of Ojo as if the text was repeated in Ojo disclosure and should be treated as part of the text of the reference. See MPEP 2163.07 (b).
Applicant submits that replacing Boumendjel with Lei according to the present Office Action does not cure the fundamental motivation-to-combine defect. The current rejection is still based on a simplistic reasoning, in substance, that Ojo teaches SSZ-91 catalysts, Lei teaches base oil production using SSZ-91 catalysts, and therefore it would have been allegedly obvious to use an Ojo catalyst in Lei's base oil process. That reasoning does not address the claimed invention as a whole. The claims are not directed merely to the use of any SSZ-91 catalyst in any base oil process. They are directed to a base oil hydroisomerization process using an SSZ-91 catalyst modified with two different metals selected according to the claim language, and with certain dependent claims reciting narrower metal loadings, ratios, feed limitations, and comparative aromatics-conversion performance. This approach is a continuing defect in the previous and present Office Actions, i.e., the present Office Action does not identify a teaching in Lei that would lead a skilled artisan to select Applicant's claimed bimetallic catalyst configurations.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., reciting narrower metal loadings, ratios, feed limitations, and comparative aromatics-conversion performance.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant submits that the Office Action does not establish that the metal loading ranges recited in claims 8 -10 would have been obvious. Claim 8 requires Pt as the first metal in an amount of 0.01-1.0 wt.% and the second metal in an amount of 0.01-1.5 wt.%. The rejection relies on McVicker's broader disclosure that noble metals are preferably below 2 wt.% and non-noble metals may be present at much higher levels, such as about 1-25 wt.%. That disclosure does not specifically teach the claimed ranges. More importantly, the Office Action does not explain why a skilled artisan would have selected Applicant's claimed loading ranges for the claimed SSZ-91 base oil hydroisomerization catalyst. Instead, the rejection assumes obviousness merely because narrower ranges may fall somewhere within broader disclosures, without showing that the claimed values would result from routine optimization of recognized result-effective variables.
Examiner notes, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It is unclear to the Examiner, in view of the Applicant record, whether said concentrations are critical to the invention, given what Applicant has provided in paragraph 0055-0059. In view of the record, the claimed concentrations and ratios do not appear critical to the invention. Furthermore, the claimed concentrations and ratios would have been obvious in view of the prior art.
Applicant submits that the treatment of claims 17 and 19 in the Office Action is legally deficient because it relies on speculation rather than factually-supported inherency. Claim 17 requires reduced aromatics content as compared with a base oil product produced using an SSZ-91 catalyst containing only Pt. Claim 19 similarly requires increased aromatics conversion by specified amounts relative to Pt-only SSZ-91 catalysts. The Office Action acknowledges that the cited references do not expressly disclose these comparative performance limitations but nonetheless asserts that such results would be expected from a catalyst containing two modifying metals or that catalysts of similar composition would inherently possess similar characteristics. The Office Action provides no data, literature, or factual findings showing that all bimetallic SSZ-91 catalysts necessarily provide the claimed comparative aromatics performance. As such, the argument or inference of inherency is factually unsupported.
With respect to claim 17 and 19, the prior combination teaches the limitation of claim 1. The prior combination does not disclose wherein the base oil product has a reduced aromatics content as compared with a base oil product produced in the same process using an SSZ-91 catalyst that only contains Pt as the modifying metal.
However, barring any expected result, it would be expected that the catalyst disclosed by the prior art having the same hydroisomerization composition would inherently have similar characteristics as claimed.
Thus, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the invention to expect an increased activity of a catalyst with two modifying metals, as compared with a catalyst that only contains Pt as the modifying metal.
Applicant submits that the Office Action fails to meaningfully evaluate Applicant's comparative evidence. The specification provides comparative catalyst data showing improved aromatics conversion for bimetallic SSZ-91 catalysts relative to Pt-only SSZ-91 catalysts. The pending claims, particularly claims 17 and 19, are directed to comparative performance limitations that correspond to those demonstrated improvements. The Office Action recites that objective evidence is part of the Graham inquiry but does not analyze unexpected results, nexus, magnitude of improvement, comparative examples, or whether the data supports the claimed performance limitations.
In response to the arguments above, it is the Examiner position that the argument is addressed in the response above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN C VALENCIA whose telephone number is (571)270-7709. The examiner can normally be reached Monday-Friday 10am - 6pm.
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/JUAN C VALENCIA/ Examiner, Art Unit 1771
/Randy Boyer/
Primary Examiner, Art Unit 1771
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