DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is in a response to a RCE filed on 08/01/2025.
Claims 1-3, 6, 8,10 and 12 are pending. Applicant has amended Claims 1 and 8, and cancelled claims 4-5, 7, 9 and 11.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/01/2025 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
In order to provide clarity in the claim, it is suggested to amend “any cerium” to “cerium” in claim 1 line 17-18.
Appropriate corrections is required.
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, 6, 8,10 and 12 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.
Claim 1, line 7-11 recites “wherein: the promoter metal-molecular sieve catalyst composition further comprises cerium; or, the promoter metal further comprises manganese….“ which is not clear since claim 1 recites manganese (Mn) or cerium (Ce) or Ce and Mn as optional components and then further claim 1-line17-18 recites “after adding any cerium” into promoter metal-molecular sieve catalyst composition”. Since cerium listed as optional component in the claim in step (iii) and further step b in claim 1 requires “adding any cerium”, therefore it’s not clear if cerium is required or optional. Examiner has interpreted for examining purpose Ce and Mn as both optional and not required. Clarification is requested.
Regarding claims 2-3, 6, 10 and 12, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
Claims 1-3, 8-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al (WO 2017153894 A1, machine translation).
Regarding claims 1-3, 8,10 and 12,
Lin discloses catalyst composition and method for preparing catalyst composition comprising a metal ion-exchanged molecular sieve, ion-exchanged metal and further includes promoter metal, wherein molecular sieve comprising of CHA, AEI, LTA ( page 3 lines 24-35, page 5 lines 13-26, page 7-lines 14-16, page 18 lines 3-15, reads on molecular sieve of claims 1 and 12), wherein the ion-exchanged metal is selected from group consisting of Cu, Co, Ni, La, Mn, Fe, V, Ag, Ce Nd, Pr, Ti, Zr, Zn, Nb, Hf, Mo, W in amount of 0.01 to about 15% by weight ( page 3 lines 25-28, page 4 lines 6-11, page 5 lines 13-26, page 7 lines 8-10, ion-exchanged metal which reads on promotor metal and also amount of promoter metal (i.e., Cu, Mn) and further reads on Ce being rare earth of claims 1, 8, 10, 12 and reads on adding through ion exchange of claim 2) and wherein promotor metal is selected from group consisting of alkali metals, alkaline earth metals, transition metal (i.e., includes iron, reads on iron salt of claim 1, 12), lanthanides, actinides and a combination thereof in amount of 0.01 to 15% by weight based on total weight of ion-exchanged molecular sieve (page 4 lines 12-21, reads on iron amount). Further Lin discloses that ion-exchanged metal and promoter metal are not the same metal (page 3 lines 30-31) and they both are in salt form (page 5 lines 27-28). Lin discloses that contacting molecular sieve with a metal precursor (i.e., copper as promotor metal and Ce as rare earth metal) to promote ion exchange and form a metal ion-exchanged molecular sieve (reads on claims 2-3) and either before or after contacting step, treating molecular sieve with a promotor metal precursor (i.e., iron salt) to form modified molecular sieve wherein the modified molecular sieve include at least portion of promotor metal located on the external surface of the sieve (see page 5 lines 13-25, reads on limitation of iron species on the surface of the molecular sieve and also reads on iron salt incorporated into the promotor metal-molecular sieve after adding the promoter metal to the molecular sieve of claims 1 and 12, embodiments 1, 4, 10, 14, 17). In addition Lin discloses promotor precursor (i.e., iron salt) present in amount of 0.1 to 50 wt.% relative to weight of metal ion-exchanged molecular sieve (page 5 lines 33-34).
Further regarding claim 12 , notwithstanding the method steps taught by Lin et al, the process limitations of the instant claims (i.e., catalyst composition prepared by the method) are not considered to provide any structural definition over the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
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 6 is rejected under 35 U.S.C. 103 as obvious over Lin et al (WO 2017153894 A1, machine translation) and/or alternatively Lin et al (WO 2017153894 A1, machine translation) in view of Yang (WO2021/041024).
Lin discloses a method of preparing a catalyst composition as described above in claim 1
and further discloses broadly iron salt but does not disclose iron salt being iron sulphate.
However, iron sulphate are known as one type of iron salt therefore it would have been
obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to use iron sulphate as iron salt in the method steps of Lin which reduces the number and size of metal oxide clusters present in the pores of the molecular sieves and on the surface of the molecular sieve as taught by Lin (page 22 lines 17-24) .
Alternatively, Yang discloses method comprising iron-promoted molecular sieve wherein molecular sieve can be CHA, AEI (page 4 lines 28-33, page 5 lines30-34 to page 6 lines 1-8), promoter metal (i.e., Cu, see page 7) and wherein iron is iron salt (i.e., iron sulphate page 12 lines 30-33).
Therefore, it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to use the iron sulphate of Yang as an alternatively as an iron salt of Lin which provides improved performance of catalyst as taught by Yang (see page 2 lines 13-14).
Response to Arguments
Applicant’s arguments, see applicant remarks on pages 4-8, filed on 08/01/2025 with respect to the rejections of claims 1-3, 6 and 8, 10, 12 under 35 U.S.C. 102 over Lin (WO2017153894) have been fully considered and not persuasive. Further, applicant arguments and declaration filed on 08/01/2025 for claim 6 under U.S.C. 103 over Lin in view of Green have fully considered and found persuasive. However, further upon search for claim 6, new ground of U.S.C. 103 rejection is made over Lin in view of Yang et al (WO2021/041024) as set forth above.
Applicant argues:
“Although Lin discloses a catalyst composition that can include (i) any one or more of a large number of possible choices for an "ion-exchanged metal" that can include one or more of "Cu, Co, Ni, La, Mn, Fe, V, Ag, Ce, Nd, Pr, Ti, Cr, Zn, Nb, Mo, Hf, Y, [and] W" (Lin at page 3, final paragraph); (ii) any one or more of large number of choices for a "promoter metal" that can include one or more metals selected from "alkali metals, alkaline earth metals, transition metals in Groups IIIB, IVB, VB, VIB V IIB, VIIIB, IB, and IIB, Group IIIA elements, Group IVA elements, lanthanides, [and] actinides" (id. at page 4, lines 12-21); and (iii) any one or more of a number of different molecular sieve materials selected from "AEI, AFT, AFX, CHA, EAB, ERI, KFI, LEV, LTN, MSO, SAS, SAT, SAV, SFW, and TSC" (id. at page 3, final paragraph), there is no disclosure of a specific combination of these components that falls within the scope of Applicant's claims.
Nor is there any evidence of record that those of ordinary skill in the art would be able to "at once envisage" the specific combination of elements required by Applicant's claims. To the contrary, none of the working examples of Lin so much as suggest to the skilled artisan the presently claimed combination of materials. Rather, Lin exemplifies the use of aluminum as "promotor metal" and copper as the "ion-exchanged metal", and describes how the aluminum enhances the catalytic activity of copper by preventing and/or reducing the formation of catalytically less active copper oxide clusters (page 14, lines 29-31). Lin also teaches that metal oxide clusters (e.g., CuO clusters) can be dispersed by the use of promotor metals, but only aluminum is specifically listed (see page 22, lines 17-33). Consistent with these teachings, the working examples a general procedure for formation of Al/Fe/Zr and/or combinations thereof + CuCHA, and specific examples that include Zr/CuCHA, Zr/Al/CuCHA, Zr/Al/Cu/CuCHA, and Al/CuCHA. None of these disclosures, nor any other aspect of Lin, would allow those of ordinary skill to "at once envisage" the presently claimed composition.
For at least the preceding reasons, withdrawal of the rejection under § 102 is appropriate”.
The examiner respectfully traverses as follow:
It is noted that applicant points to working example to support the position. However, “applicant must look to the whole reference for what it teaches. Applicant cannot
merely rely on the examples and argue that the reference did not teach others”. In re Courtright,
377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Further, the fact remains, Lin discloses catalyst composition and method for preparing catalyst composition comprising a metal ion-exchanged molecular sieve, ion-exchanged metal and further includes promoter metal, wherein molecular sieve comprising of CHA, AEI, LTA ( page 3 lines 24-35, page 5 lines 13-26, page 7-lines 14-16, page 18 lines 3-15, reads on molecular sieve of claims 1 and 12), wherein the ion-exchanged metal is selected from group consisting of Cu, Co, Ni, La, Mn, Fe, V, Ag, Ce Nd, Pr, Ti, Zr, Zn, Nb, Hf, Mo, W in amount of 0.01 to about 15% by weight ( page 3 lines 25-28, page 4 lines 6-11, page 5 lines 13-26, page 7 lines 8-10, ion-exchanged metal which reads on promotor metal and also amount of promoter metal (i.e., Cu, Mn) and further reads on Ce being rare earth of claims 1, 8, 10, 12 and reads on adding through ion exchange of claim 2) and wherein promotor metal is selected from group consisting of alkali metals, alkaline earth metals, transition metal (i.e., includes iron, reads on iron salt of claim 1, 12), lanthanides, actinides and a combination thereof in amount of 0.01 to 15% by weight based on total weight of ion-exchanged molecular sieve (page 4 lines 12-21, reads on iron amount). Further Lin discloses that ion-exchanged metal and promoter metal are not the same metal (page 3 lines 30-31) and they both are in salt form (page 5 lines 27-28). Lin discloses that contacting molecular sieve with a metal precursor (i.e., copper as promotor metal and Ce as rare earth metal) to promote ion exchange and form a metal ion-exchanged molecular sieve (reads on claims 2-3) and either before or after contacting step, treating molecular sieve with a promotor metal precursor (i.e., iron salt) to form modified molecular sieve wherein the modified molecular sieve include at least portion of promotor metal located on the external surface of the sieve (see page 5 lines 13-25, reads on limitation of iron species on the surface of the molecular sieve and also reads on iron salt incorporated into the promotor metal-molecular sieve after adding the promoter metal to the molecular sieve of claims 1 and 12, embodiments 1, 4, 10, 14, 17). In addition Lin discloses promotor precursor (i.e., iron salt) present in amount of 0.1 to 50 wt.% relative to weight of metal ion-exchanged molecular sieve (page 5 lines 33-34).
Therefore, even if the working examples in Lin reference were preferred embodiments, it is noted “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments”. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
In response to 112(a) and 112(b) rejection made previously has been withdrawn since applicant has amended the claim limitation to overcome the associated deficiencies. However, upon further consideration, amendment necessitated new set of 112(b) rejections as set forth above.
Applicant’s amendment overcomes Claim objections. However, upon further consideration, amendment necessitated new set of claim objections as set forth above.
Conclusion
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 12/10/2025