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 .
Specification
The specification filed on 11/20/2025 has been entered after considering the 37 CFR 1.132-declaration item 3.
Claim Interpretation
Claim 2 recites “hierarchically ordered”, which is being broadly and reasonably interpreted as having both micropores and mesopores (see Instant published application US2024/0010505 para [0009]).
Claim 2 also recites “long-range mesoporous ordering” and such limitation is being broadly and reasonably interpreted as “presence of secondary peaks in an X-ray diffraction (XRD) pattern and/or hexagonal symmetry observable by microscopy” (see Instant published application US2024/0010505 para [0028]).
Terminal Disclaimer
The terminal disclaimer filed on 11/20/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent No. 12290799 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 8 and 29, 31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, claim 8 and 29, 31 respectively recite “XRD pattern of the composition of matter exhibits Bragg’s reflection angles corresponding to (100), (110) and (200) planes at 2θ angle less than about 6 degrees”, such claimed XRD pattern is not described in the instant specification, nor shown in the argued Fig. 3 B as applicant alleged (see also the published application para. US2024/0010505 para. [0087]). Rather Fig. 3 B shows a highest peak before 2θ angle=10, but such highest peak generally is not a secondary peak, instead a main peak. Similarly, Fig. 6 B shows a highest peak before 2θ angle=10, but such highest peak generally is not a secondary peak, instead a main peak.
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.
Claim 2-3, 5-12 and 22-36 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. In this case, claim 11 recites “sufficient close” or “sufficiently larger”, such terms are relative terms which renders the claim indefinite. The terms “sufficient close” or “sufficiently larger” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, such limitation renders claim indefiniteness.
Claim 8 and 29, 31 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. In this case, claim 8 and 29, 31 respectively recite “XRD pattern of the composition of matter exhibits Bragg’s reflection angles corresponding to (100), (110) and (200) planes at 2θ angle less than about 6 degrees”, since any XRD peak or reflection need be associated with specific intensity level (e.g. relative intensity) to be meaningful, therefore, one of ordinary skill in the art cannot ascertain what intensity level of peaks can be considered as secondary peaks corresponding to (100), (110) and (200) planes hereof at all. Therefore, such limitation renders claim indefiniteness. Next, claim 29 and 31 recites “upon removal of the supramolecular template”, but such claim’s parent claim 2 does not require any removal of the supramolecular template, nor these claims themselves includes any removal of the supramolecular template, therefore, one of ordinary skill in the art is uncertain how “upon removal of the supramolecular template” being related to the instantly claimed composition of matter. Therefore, one of ordinary skill in the art cannot ascertain the metes and bounds of such claimed limitations.
Claim 9 and 30 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. In this case, claim 9 and 30 respectively recite “upon removal of the supramolecular template”, but such claim’s parent claim 2 does not require any removal of the supramolecular template, nor these claims define how “removal of the supramolecular template” being related to the claimed composition of matter, therefore, one of ordinary skill in the art is uncertain how to ascertain the metes and bounds of such claimed limitations.
Claim 32 is 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. In this case, claim 32 recites “periodicity repeating over a length of greater than about 50 nm”, one of ordinary skill in the art is uncertain how the periodicity repeating, like what frequency, or how much distance the mesoporous ordering being repeated? Therefore, one of ordinary skill in the art cannot ascertain the metes and bounds of such claimed limitation.
Claim 34 and 35 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. In this case, claim 34 recites “bulky organosilane”, one of ordinary skill in the art is uncertain what type of organosilane compound can be considered as bulky organosilane, therefore, one of ordinary skill in the art cannot ascertain the metes and bounds of such claimed “bulky organosilane”. Next, claim 34 also recites “alkoxysilyl substituents”, one of ordinary skill in the art is uncertain what “alkoxysilyl substituents” exactly referring to, any chemical compound comprising an alkoxysilyl group or a chemical compound comprising alkoxylsilyl group which is being substituted by other atoms, functional group? Similarly, claim 35 recites “bulky organosilane substituents”, one of ordinary skill in the art is uncertain what type of organosilane compound or materials can be considered as bulky organosilane substituents, therefore, cannot ascertain the metes and bounds of such claimed limitation.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-3 and 6-12, 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Ying et al. (US20130292300) as evidenced by Cigler (WO2014063667), and in view of Kim et al. (Bulk crystal seeding in the generation of mesopores by organosilane surfactants in zeolite synthesis, J. Mater. Chem. A, 2014, 2, 11905–11912).
Ying et al teaches a comprises an ordered mesostructured zeolite material having long-range crystallinity and comprising a plurality of mesopores (para. [0010]-[0012], [0015], [0090]-[0095], example 1-3, 6- 8, table 1-4). Ying further discloses parent zeolite pore walls (i.e., microcrystalline) being transformed to a crystalline zeolitic phase with an ordered mesoporous structure (para. [0093], example 1-3, table 1-2), wherein such crystallinity is in the long-range order (para. [0095]) as defined by XRD pattern (see para. [0033]- [035], Fig. 1-3). Ying further teaches such ordered mesoporous structure containing micropores (para. [0121], [0124], table 2). Hence, a hierarchically ordered zeolite material is expected.
As for the claimed ordered mesoporous zeolite having hexagonal symmetry, Ying et al. further discloses the obtained ordered mesoporous zeolite material containing MCM-41, wherein such mesoporous zeolite material having symmetry (para. [0015], [0093], [0095]), and MCM-41 having hexagonal pore arrangement, i.e. hexagonal symmetry (para. [0012], see also evidence document Cigler page 2 lines 12-14).
Regarding claim 2, Ying does not expressly teach mesopores contain “micelles of supramolecular templates shaped to induce mesoporous ordering of hexagonal symmetry, and wherein the supramolecular templates possess one or more dimensions sufficient close or sufficiently larger than dimensions of micropores of the crystalline microporous material to constrain diffusion into micropores of the crystalline microporous material, wherein the dimensions relate to a head group of a supramolecular template that constrains diffusion into micropores of the crystalline microporous material, wherein the supramolecular template is characterized by a surfactant packing parameter g in the range of about 0.4-0.6, wherein g = V/a0l wherein V = total volume of surfactant tails of the supramolecular template, a0 = area of the head group of the supramolecular template, and l= length of surfactant tail of the supramolecular template”, it is noted that such limitation just product by process limitation, even 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 (See § MPEP 2113). In this case, Ying et al. already teaches using surfactant template together with microporous crystalline zeolite starting material to induce mesostructures in the starting microporous zeolite-- using basic treatment of parent zeolite material, (apparently the template is sufficiently close to the dimension of micropores of the crystalline microporous material), then reassembly the zeolite material in the presence of surfactant (specifical example of CTAB as surfactant) thus obtaining a same or substantially the same hierarchical ordered mesoporous zeolite material having long range mesopores containing long range mesoporous ordering comprising mesopores having wall of zeolite material (see Fig. 1-3, para. [0093]-[0095], example 1-3, 6-8, table 1-4). Ying et al further teaches any surface-active agent or substance that modifies the nature of surfaces, often reducing the surface tension of water can be used as surfactant (para. [0083]), the mesopore size and architecture in the hierarchically ordered mesoporous zeolite may be conveniently tuned by well-known techniques such as the use of surfactants with different aliphatic chain lengths, non-ionic surfactants, triblock copolymers, swelling agents (para. [0093]). Since mesostructured zeolite’s mesopore size can be easily tuned with changing the length of the aliphatic chain of the surfactant ( i.e template)(para [0075], [0097]). It would have been obvious for one of ordinary skill in the art to tune the mesopore size via routine optimization as suggested by Ying et al for obtaining desired mesopore size.
Therefore, the difference of Ying disclosed composition of matter as compared to the instantly claimed composition matter, is the claimed specific supramolecular template used during forming the claimed composition of matter.
Kim et al teaches organosilane surfactants can be used in mesoporous zeolite material synthesis (abstract, page 11906 section 2.1-page 11907 section 2.2.4), wherein the organosilane surfactants have a [(MeO)3Si-] moiety connecting an alkylammonium head group and a long alkyl tail, represented by the structural formula:
(CH3O)3Si–C3H6–N+(CH3)2–CnH2n+1, where n is varied from 12 to 16 and 18 (abbreviated as OS-n). Kim et al. also expressly such organosilane surfactant being OS-18 (page 11907 section 2.2.3 and 2.2.4). It is noted that such organosilane (based on its cited literature Kim’2010) having a chloride as anion (see Kim ‘2010, page 220 right col. 2nd para., Effect of mesoporosity against the deactivation of MFI zeolite catalyst during the methanol-to-hydrocarbon conversion process, Journal of Catalysis 269 (2010) 219–228).
It would have been obvious for one of ordinary skill in the art to adopt such organosilane surfactant (i.e. OS-18) as shown by Kim et al. to practice the surfactant of Ying et al. because by doing so can help provide mesoporous zeolite with uniform pore size and narrow pore distribution as suggested by Kim et al (page 11906 first para., page 11909 2nd last para., page 11910 2nd para., Fig 1-4).
As for the claimed supramolecular template having a surfactant packing parameter g in the range of about 0.4-0.6 or possessing one or more dimensions larger than dimensions of micropores of the crystalline microporous materials, Kim et al. disclosed organosilane surfactant is same or substantially the same as that of instant application (see published application US2024/0010505 para [0039]-[0041], [0045]), therefore, same or substantially the same surfactant packing parameter g in the range of about 0.4-0.6 or possessing and one or more dimensions larger than dimensions of micropores of the crystalline microporous materials as those of instantly claimed would be expected.
Regarding claim 3, Ying et al. further teaches using ionic cosolute (e.g OH-, or tetramethylammonium--[Me4 N]+) during synthesis of ordered mesoporous zeolite (See example 1-4).
Regarding claim 6, Ying et al. specifically discloses template (e.g. CTAB) content as compared to ionic cosolute (e.g. e.g OH-, or tetramethylammonium--[Me4 N]+) molar ratio overlapping with that of instantly claimed range (example 1-3). It would have been obvious for one of ordinary skill in the art to adopt a same molar ratio between template and ionic cosolute for help obtaining desired ordered mesoporous zeolite material as suggested by Ying et al. (see para. [0092], example 1-3) via routine experimentation (see also MPEP § 2144. 05 II). Regarding claim 7-9, Ying et al. in view of Kim et al. already teaches a same or substantially the same ordered mesostructured zeolite material having long-range crystallinity and having mesoporous ordering of hexagonal symmetry as that of instantly claimed, therefore, same or substantially the same hexagonal mesophase possess mesophase possess p6m, p6mm or P63/mme symmetry; hexagonal mesophase possess p6mm symmetry and same or substantially the same XRD pattern of the composition of matter exhibits Bragg’s reflection angles corresponding to (100), (110) and (200) planes at 2θ angle less than about 6 degrees, upon removal of the supramolecular template, same or substantially the same hexagonal mesophase possess p6mm symmetry and long-range ordering is observable by microscopy viewing an electron beam perpendicular to mesopores down a [110] zone axis or parallel to mesopores down a [001] zone axis as those of instantly claimed would be expected.
Regarding claim 10-12, Ying et al. discloses the microcrystalline zeolite material having FAU, MOR and MFI structure (para. [0012], [0019], [0028], [0030], [0084], example 1-3, 6, claim 4).
Regarding claim 26-31, such limitations are met as discussed above.
Regarding claim 32, Ying et al. also teaches mean pore size of the ordered mesostructured zeolite material being 2 to 5 nm (para.[0012], [0015], [0016], [0089], [0095], [0097]), since mesostructured zeolite can have pore size up to 50 nm and the mesopore size can be easily tuned with changing the length of the aliphatic chain of the surfactant ( i.e template)(para [0075], [0097]). It would have been obvious for one of ordinary skill in the art to tune the mesopore size having at least 2 mesopores (i.e. being repeated periodicity) over 50 nm range for help obtaining a mesostructured zeolite with desired mesopore size having certain amount of (repeated) pores.
Regarding claim 33-35, Kim et al already teaches such limitation.
Regarding claim 36, Kim et al. disclosed surfactant (CH3O)3Si–C3H6–N+(CH3)2–CnH2n+1, when n=16, the surfactant is dimethyloctadecyl[3-(trimethoxysilyl)propyl]ammonium. It would have been obvious for one of ordinary skill in the art “obvious to try” such dimethyloctadecyl[3-(trimethoxysilyl)propyl]ammonium because choosing from a finite number of identified, predictable solutions of organosilane surfactant as shown by Kim et al would have a reasonable expectation of success (see MPEP §2143 KSR).
Claims 5 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Ying et al. (US20130292300) as evidenced by Cigler (WO2014063667), and in view of Kim et al. (Bulk crystal seeding in the generation of mesopores by organosilane surfactants in zeolite synthesis, J. Mater. Chem. A, 2014, 2, 11905–11912) as applied above, and further in view of Garcia-Martinez (US20070227351).
Regarding claim 5, Ying et al. as evidence by Cigler, and in view of Kim et al. does not expressly teach the co-solute comprises SO4-2.
However, it is well-known in the art that sulfates (i.e. comprising SO4-2) can be used to ion-exchange with mesoporous zeolite material as shown by Garcia-Martinez (para. [0248], [0268]).
It would have been obvious for one of ordinary skill in the art to include such sulfates comprising SO4-2 in the solution of forming ordered mesostructured zeolite material of Ying as evidence by Cigler, and in view of Kim et al. because combining such known sulfates into the solution in a known method of producing mesoporous zeolite for obtaining desired mesoporous zeolite material would have predictable results (see MPEP 2143 KSR).
Regarding claim 22-25, such limitation has been met as discussed above.
Claim 36 rejected under 35 U.S.C. 103 as being unpatentable over Ying et al. (US20130292300) as evidenced by Cigler (WO2014063667), and in view of Kim et al. (Bulk crystal seeding in the generation of mesopores by organosilane surfactants in zeolite synthesis, J. Mater. Chem. A, 2014, 2, 11905–11912) as applied above, and further in view of Gu (US2019/0262779).
In arguendo about Ying et al. as evidence by Cigler, and in view of Kim et al. does not expressly teach the specific claimed supramolecular template compound comprising dimethyl octadecyl [3-trimethoxysilylpropyl] ammonium.
Gu teaches mesoporous structure-directing agent is a surfactant or an organic silane coupling agent, wherein the surfactant is preferably cetyl trimethyl ammonium bromide (CTAB), , while the organic silane coupling agent is one of silanes with different chain length such as dimethyl octadecyl [3-trimethoxysilylpropyl] ammonium chloride (TPOAC), dimethyl hexadecyl [3-trimethoxysilylpropyl] ammonium chloride (TPHAC), and dimethyl dodecyl [3-trimethoxysilylpropyl] ammonium chloride (TPDAC), but preferably TPOAC (para. [0014], claim 3).
It would have been obvious for one of ordinary skill in the art to adopt such well-known organic silane coupling agent, e.g. TPOAC as shown by Gu to modify the surfactant in the mesostructured zeolite producing process of Ying et al. as evidence by Cigler, and in view of Kim et al. because adopting such well-known organic silane coupling agent of TPOAC to modify a well-known process of forming mesostructured zeolite material for improvement would have predictable results (see MPEP §2143 KSR). It is noted that TAPOC having a positively charged dimethyl alkylammonium group (i.e. quaternary ammonium group) with at least one head group comprising one or more trimethylsilylporpyol group (i.e. bulkyl organosilane groupor alkoxysilyl substituents).
Response to Amendment
The declaration under 37 CFR 1.132 filed on is insufficient to overcome the rejections based upon Ying et al.
It is noted that previous 112 (b) rejection onto claim 8 and 29, 31 has been withdrawn. It is also noted that declaration item 4 does not explain how can a peak being considered as a secondary peak, i.e. what intensity level is required to be considered as secondary peak, while instant Fig. 3A only showing a high intensity peak before 2theta angle being 10.
In response to item 5 of declaration, it is noted that previous 112 (b) rejection onto claim 9 and 20 has been withdrawn.
In response to applicant’s allegation (item 7-10) about Ying disclosed MCM-41 being amorphous mesoporous silica (para. [0072]), it is noted that such section is Ying trying to explain all different starting zeolite material as long as the meaning of different words such as “a”, “an, “comprises” (para. [0066]-[086]). Instant claims having open end language “comprising”, which does not limit or exclude presence of amorphous material either. Additionally, Ying teaches the obtained mesostructured zeolite material having XRD patterns which reveals both the ordered mesostructured zeolite and long-range crystallinity (para. [0095]).
In response to item 11, it appears to examiner that the applicant agrees that the supramolecular template is a template used during synthesizing of the instantly claimed composition of matter, i.e. a product by process limitation.
In response to item 12, Ying et al. already teaches long-ordering crystallinity (para. [0095]).
In response to item 13-15 about the d spacing being in the range of 2.5 to 4.0 nm, while Ying only showing d spacing of 1.3 nm, it is noted that such limitation is not even claimed.
In response to item 16-19 about instant invention showing repeating distance of 4.0 nm but Ying not teaching such repeating, it is noted that such repeating distance of 4nm has not been claimed yet.
In response to item 20 about crystalline features, please referring to similar remarks as stated in item 7-10.
In response to applicant’s arguments about Ying disclosed data (MCM-41, H-Y-MCM-41) showing being produced from a composite material or using a template (e.g. affidavit item 20-30), it is noted that instant claims only direct to a composition as recited in claim 2 and Ying already teaches a same or substantially the same material having hierarchically mesoporous structure with long range ordered mesopores and crystallinity. In response to applicant’s Figs as adapted from X. Liu et al. and XRD patterns in Ying showing a composite material but not hierarchically ordered zeolite material as claimed because XRD pattern etc. being different, it is noted that instant application have not claim any specific XRD patterns with any specific peaks having any specific quantified intensity at specified locations at all as applicant alleged. It is also noted that a generic recitation of presence of XRD patterns having little meaning, because such presence cannot define any specific structure as applicant alleged or distinguish the material. It is noted that Ying et al. already teaches a hierarchically ordered zeolite material having presence of generic XRD patterns and hexagonal symmetry. A material with specific XRD patterns needs be quantified at precise location, specific intensity to be valuable to distinguish specific structure or material.
Response to Arguments
Applicant’s amendments filed on 11/20/2025 have been acknowledged and thus previous 112 rejections have been withdrawn.
Applicant’s arguments filed on 11/20/2025 have been fully considered but they are moot in view of current rejections. In response to applicant’s response about dispute about “long-range mesoporous ordering” interpretation, it is noted applicant’s arguments is not persuasive because the instant specification clearly defined “long-range mesoporous ordering” as examiner explained above, while applicant’s mere allegation does not provide sufficient explanation why the instant specification clear explanation cannot define the claimed “long-range mesoporous ordering”. In response to arguments about the filed 1.132 declaration, please refer to previous response to amendment section for similar remarks.
In response to applicant’s arguments about double patenting against US’130, such arguments being persuasive and such double patenting rejections have been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JUN LI/ Primary Examiner, Art Unit 1732