DETAILED ACTION
Claims 2, 21 and 24-25 were rejected in Office Action mailed on 03/17/2025.
Applicant filed a response, amended claims 2, 21 and 24-25, and added claim 26 on 08/18/2025.
Claims 1-2, 6-8, 10-17, 19 and 21-26 are pending, and claims 1,6-8,10-17,19 and 22-23 are withdrawn.
Claims 2, 21 and 24-26 are rejected.
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 .
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.
Claims 21 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over White, US 3,598,719 (White) in view of Young et al., US 3,592,760 (Young) and Brink et al., EP 2000206 A1 (Brink).
Regarding claims 21 and 24-26, White teaches a catalyst comprising a crystalline zeolitic molecular sieve component substantially free of any catalytic metal or metals, an alumina-containing gel component, a Group VI hydrogenating component and Group VIII hydrogenating component, and processes using said catalyst (White, Abstract);
the catalyst is for catalytic hydrocracking (White, column 1, lines 20-23);
the feedstocks supplied to the hydrocracking zone can be petroleum distillates (White, column 3, lines 50-55);
More particularly, the Group VI hydrogenating component being e.g., nickel, in the form of metal, oxide, sulfide or any combination thereof; the Group VIII hydrogenating component being molybdenum or tungsten, or the combination thereof, in the form of metal oxide, sulfide or any combination thereof (the Group VI hydrogenating component and the Group VIII hydrogenating component read upon active metal components selected from the group consisting of Mo, W and Ni) (White, column 2, lines 39-46);
when the finished catalyst is to contain more than 50 weight percent of crystalline zeolitic molecular sieve, it will be preferable to include in the catalyst in a known manner a binder material such as a clay-type silica- alumina (White, column, lines 35-40);
the finished catalyst may be sulfided in a conventional manner prior to use (reading upon presulfied catalyst) (White, column 4, lines 41-43).
White further teaches the preparation steps and physical properties (White, column 6, lines 50-75, column 7, lines 1-2), according which it is clear that the catalyst is in the form of particles.
White does not explicitly disclose (a) the catalyst having less than about 0.05 w% water; or (b) the catalyst is nonabsorptive; the extrudates encapsulated with a coating material comprising a mixture containing one or more heavy C31-C50 paraffins, and one or more C15-C30 paraffins; heating the reactor during startup to a temperature in the range of about 150-500°C to remove the coating material from the nonabsorptive presulfided catalyst particles.
With respect to the difference (a), White further teaches the catalyst is activated e.g., in flowing air for 5 hours at 950˚F (White, column 6, lines 70-75).
Young teaches hydrocracking catalyst comprising zeolite (Young, Abstract). Young specifically teaches the zeolites may be activated by driving off substantially all of the water of hydration (Young, column 2, lines 43-46); generally, the dried material is heated (i.e., activated) in a stream of dry air at a temperature of from about 500˚F to 1500˚F, preferably about 900˚F, for a period of from 1 to 24 hours (Young, column 4, lines 14-20).
Young is analogous art as Young is drawn to hydrocracking catalyst comprising zeolite.
In light of the disclosure of Young, that substantially all of the water of hydration of zeolite can be driven off by activating in a stream of dry air at a temperature of from about 500˚F to 1500˚F, preferably about 900˚F, for a period of from 1 to 24 hours, it therefore would have been obvious to a person of ordinary skill in the art that substantially all of the water of hydration of the catalyst of White would be driven off by activating, which reads upon having less than about 0.05% water.
With respect to the difference (b), Brink teaches a method of protecting, reinforcing, or strengthening a catalyst or catalyst precursor (Brink, [0001]). Brink specifically teaches before use of the catalyst or catalyst precursor, adding one or more waxes to the so-formed catalyst or catalyst precursor (Brink, [0016]); and the each wax may be added to the carrier, catalyst or catalyst precursor by e.g. coating, (Brink, [0030]); and one preferred wax comprises a C20+ paraffin wax, more preferably a C20-100 alpha paraffin wax (Brink, [0022]).
As Brink expressly teaches, this is a method of strengthening a carrier or a catalyst or catalyst precursor by adding one or more waxes to the particles; one preferred method involves a wax coating on an outer layer of the particle; this method can facilitate handling, transport and installation of the particles (Brink, Abstract).
Brink is analogous art as Brink is drawn to protecting, reinforcing, or strengthening catalyst and catalyst precursor.
In light of the motivation of applying a wax coating, e.g., one or more waxes, selected from a C20-100 alpha paraffin wax, onto a catalyst or catalyst precursor, as taught by Brink, it therefore would have been obvious to a person of ordinary skill in the art to apply a wax coating on the catalyst of White, using one or more waxes, selected from a C20-100 alpha paraffin wax, which overlap with the composition of paraffins of the present claim, in order to strength the particle and facilitate handling, transport and installation of the particles.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Alternatively, given that White in view of Brink using one or more waxes, selected from a C20-100 alpha paraffin wax, it therefore would have been obvious to a person of ordinary skill in the art to choose one or more C31-C50 alpha paraffin wax, and one or more C15-C30 alpha paraffin wax, in order to achieve desired product performance.
Further given that White in view of Brink teaches identical or substantially identical material (i.e., catalyst comprising zeolite, binder and metals) and prepared by identical or substantially identical methods (i.e., catalyst prepared by drying, activating and then coated with wax) with those of the present invention (claims 21, and 2), therefore it is clear that the catalyst of White in view of Brink would necessarily and inherently be nonabsorptive.
Furthermore, White in view of Brink teaches the hydrocracking zone containing the catalyst is operated at hydrocracking conditions including a temperature in the range of 400 to 950˚F (204-510˚C) (White, column 4, lines 47-50), i.e., the reactor would necessarily be heated during start up to a temperature of 204-510˚C, which overlaps substantially with the range of the presently claimed. Therefore, it is clear that for the catalyst with wax coating of White of Brink, the wax coating would necessarily be removed.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over White in view of Brink, as applied to claim 21 above, and further in view of Beeckman et al., Predicting catalyst extrudate breakage based on the modulus of rupture, Journal of visualized experiments, 2018, (Beeckman).
Regarding claim 2, as applied to claim 21, White in view of Brink does not explicitly disclose that the catalyst support particles having an average cross-sectional dimension of between about 0.01-3.0 mm.
With respect to difference, Beeckman teaches the mechanical strength of extruded catalysts (Beeckman, Abstract). Beeckman specifically teaches commercial catalysts are typically extruded, typical catalyst sizes range from 1 mm to about 5 mm in diameter and come in a variety of shapes and the diameter and the cross section of extruded catalysts are often very well controlled (Beeckman, Introduction, 1st paragraph).
Beeckman is analogous art as Beeckman is drawn to extruded catalysts
In light of the disclosure of Beeckman, it therefore would have been obvious to a person of ordinary skill in the art to produce the catalyst of White in view of Brink by extrusion, with an average cross-sectional dimension of 1 mm to about 5 mm, and thereby arrive at a range that overlaps that of the present claim.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
White, Brink and Beeckman teaches the nonabsorptive catalyst particles.
Regarding the process of forming the nonabsorptive catalyst particles, it is noted that the present claimed limitations are drawn to a product and not drawn to a method of making. Thus, “[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that White, Brink and Beeckman meets the requirements of the claimed product, White, Brink and Beeckman clearly meets the requirements of the present claim.
Response to Arguments
In response to the amended claims, the previous claim objections are withdrawn.
Applicant primarily argues:
“Brink is concerned with a catalyst for Fischer Tropsch reaction; there is no disclosure of the problem related to water absorption in hydroprocessing catalysts. Fischer Tropsch reactions are synthesis reactions to synthesize liquid hydrocarbons from syngas, carbon monoxide and hydrogen. In contrast, hydroprocessing reactions as recited in claim 22 are hydrodesulfurization, hydrodenitrogenation, hydrocracking and/or hydrodemetalization of petroleum and petroleum fractions. The processes are very different than Fischer Tropsch reactions in which liquid hydrocarbons are synthesized from carbon monoxide and hydrogen. For example, in hydrocracking, larger molecules are converted and/or reduced into smaller molecules. In hydrodesulfurization, sulfur-containing molecules are converted to non-sulfur-containing molecules and sulfur is converted to hydrogen sulfide. In hydrodenitrogenation, nitrogen- containing molecules are converted to non- nitrogen -containing molecules and nitrogen is converted into ammonia. In hydrodemetallization metallic impurities (like nickel (Ni), vanadium (V), iron (Fe), arsenic (As), etc.) are removed from hydrocarbon streams through a complex series of hydrogenation and hydrogenolysis reactions.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Applicant further argues:
“Applicant notes that new claim 26 recites "A hydroprocessing method for hydrocracking of petroleum and petroleum fractions", where only hydrocracking is recited.”
Remarks, p. 11
The Examiner respectfully traverses as follows:
Firstly, “A hydroprocessing method for hydrocracking of petroleum and petroleum fractions” is met by White, specifically: White teaches the catalyst is for catalytic hydrocracking (White, column 1, lines 20-23);
the feedstocks supplied to the hydrocracking zone can be petroleum distillates (White, column 3, lines 50-55); as set forth above on pages 3-4.
Secondly, it is noted that while Brink does not disclose all the features of the present claimed invention, Bring is used as teaching reference, namely applying a wax coating, e.g., one or more waxes, selected from a C20-100 alpha paraffin wax, onto a catalyst or catalyst precursor, in order to strength the particle and facilitate handling, transport and installation of the particles, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“A person having ordinary skill in the art would not look to Brink, disclosing Fischer Tropsch reactions, to solve the problem of protecting hygroscopic catalyst to render them nonabsorptive for use in hydroprocessing reactions as claimed in the present application, whether considered alone or in combination with White and Young.
Brink is concerned with the manufacture of Fischer Tropsch catalysts composed of a catalytically active component or a precursor therefor, supported on a carrier. The carrier is disclosed as "preferably compris[ing] between 70 and 100 wt% of crystalline titania. The non- titania component may be, for example, a binder. Alternatively, other refractory oxides may be used such as silica or alumina; indeed carbon may be used as the carrier." (Brink [0042]). There is no suggestion in Brink, or pointed to in any other reference in the Office Action, that Fischer Tropsch catalysts as disclosed in Brink are known to degradation due to water absorption, as is the case with hydroprocessing catalysts for hydroprocessing of petroleum and petroleum fractions as recited in the present claims. The hydroprocessing catalysts contain zeolite, which are susceptible to decrease in activity when exposed to moisture in air, as explained in the background of the application and with reference to F.E. Massoth, C.-S. Kim, Jian-W. Cui, "Studies of molybdena- alumina catalysts: XVII. Sulfided catalysts exposed to air", Applied Catalysis, Volume 58, Issue 1, 5 February 1990, Pages 199-208 (cited in the IDS in the present application considered by the Examiner). In contrast, the Fischer Tropsch catalysts as disclosed in Brink do not contain zeolites, and are not know for being susceptible to reduction in activity due to exposure to moisture in air.
Indeed, a person having ordinary skill in the art would appreciate that water is a byproduct of Fisher Tropsch synthesis as per the following reaction: (2n+1) H2 + n CO -> CnH(2n+2) + nH2O
Therefore a person skilled in the art would not find a need to negate impact of moisture for Fischer Tropsch catalysts.
Further, the purpose of the treatment of the Fischer Tropsch catalysts as disclosed in Brink is to improve strength. When reading Brink in its entirety', it is clear that "protecting" is related only to the improved strength (see, e.g., Table 1 in Brink) as a result of the wax coating and less attrition loss. In contrast, in the present claims the nonabsorptive catalyst particles include a coating material comprising a mixture containing one or more heavy C31-C50 paraffins, and one or more C15-C30 paraffins, to prevent water ingress into the catalyst and prevent losses in catalytic activity (for hydroprocessing catalysts). Hence, a person skilled in the art would not be motivated to use Brink for the purposes of the present claims, since Brink teaches about strengthening the catalyst, whereas in the present claims, loss of catalytic activity by water egress is minimized or eliminated.”
Remarks, p. 11-12
“Also, as noted Fischer Tropsch reactions and associated catalysts are distinct from hydroprocessing reactions and associated catalysts, and as such the combination is not proper.”
Remarks, p. 14
“Further, there is no stated problem with regard to improving the strength of hydroprocessing catalysts as in the present claims. In particular, there is no suggestion that the coating in the catalyst used in the processes claimed are for improved strength, thus there is no motivation to look to Brink for catalyst features.”
Remarks, p. 14
“Applicants respectfully traverse and submit that Brink is not concerned with nonabsorptive catalysts, rather the "desired product performance" in Brink is "protecting, reinforcing, or strengthening a catalyst.
There is no proper logical motivation established in the Office Action to combine the teachings of Brink, related improving strength and reducing attrition loss for Fischer Tropsch catalysts, with any references for hydroprocessing catalysts. Brink neither discloses hydroprocessing nor the problem faced by the inventors, loss of catalytic activity by water absorption. The nature of the catalysts (as between hydroprocessing catalysts and Fischer Tropsch catalysts) are different, resulting in lack of appreciation of the problems related to water ingress into the catalyst that reduces catalytic activity for hydroprocessing catalysts by a skilled artisan reading Brink.”
Remarks, p. 15
The Examiner respectfully traverses as follows:
Firstly , the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Secondly, White and Brink are related art, as White is drawn to hydrocracking catalyst and Brink is drawn to strengthening catalyst.
Brink provides proper motivation to combine, namely this is a method of strengthening a carrier or a catalyst or catalyst precursor by adding one or more waxes to the particles; this method can facilitate handling, transport and installation of the particles (Brink, Abstract).
Therefore, it is the examiner’s position that it would be obvious to one of ordinary skill in the art to combine White with Brink, in order to strengthen the catalyst, and facilitate handling, transport and installation of the particles, absent evidence to contrary.
Applicant further argues:
“Respectfully, there is no evidence or suggestion that the teachings of Brink discloses or overlaps the claimed recitation of "one or more heavy C31-C50 paraffins and one or more C15- C30 paraffins." This claim recitation presents a combination of two different weight ranges of paraffins, and is a distinct composition with ranges and dual components determined to be effective for encapsulation. Certainly, the C100 products at the high end of the range in Brink, have DOUBLE the carbons as the upper limit in one of the mixture components. Brink has "at least 10% of its product heavier than C100," and it is respectfully submitted that a person having ordinary skill in the art would appreciate that this requirement for these very heavy waxes is to improve mechanical strength, and NOT to render them nonabsorptive.”
Remarks, p. 13-14
“Applicant respectfully submits that the claims are more than a mere overlapping or lying inside of a range disclosed in Brink. It is TWO different paraffins withing TWO DIFFERENT carbon-number ranges.”
Remarks, p. 14
The Examiner respectfully traverses as follows:
Firstly, the fact remains that given Brink teaches before use of the catalyst or catalyst precursor, adding one or more waxes to the so-formed catalyst or catalyst precursor (Brink, [0016]); and the each wax may be added to the carrier, catalyst or catalyst precursor by e.g. coating, (Brink, [0030]); and one preferred wax comprises a C20+ paraffin wax, more preferably a C20-100 alpha paraffin wax (Brink, [0022]), Brink teaches combination of wax which overlap with the composition of paraffins of the present claim.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Alternatively, given that White in view of Brink using one or more waxes, selected from a C20-100 alpha paraffin wax, it therefore would have been obvious to a person of ordinary skill in the art to choose one or more C31-C50 alpha paraffin wax, and one or more C15-C30 alpha paraffin wax, in order to achieve desired product performance, as set forth on pages 8-9 of Office Action mailed 03/17/2025, absent evidence to the contrary.
Further, given that White in view of Brink teaches identical or substantially identical material (i.e., catalyst comprising zeolite, binder and metals) and prepared by identical or substantially identical methods (i.e., catalyst prepared by drying, activating and then coated with wax) with those of the present invention (claims 21, and 2), therefore it is clear that the catalyst of White in view of Brink would necessarily and inherently be nonabsorptive, as set forth on page 9 of Office Action mailed 03/17/2025, absent evidence to the contrary.
Secondly, Brink does not necessarily require at least 10% of its product heavier than C100.
Applicant further argues:
“Additionally, a person having ordinary skill in the art would not have a reasonable expectation of success in using higher range components as contemplated by Brink. Rather, a person having ordinary skill in the art would consider those higher range components to be incompatible with the method of the pending claims. The heavier waxes as disclosed in Brink would be considered to be detrimental, particularly as one of the steps of claim 21 is "heating the reactor during startup to a temperature in the range of about 150-500°C to remove the coating material from the nonabsorptive presulfided catalyst particles." If waxes with C100 heavier are used, that material would not be stripped from the catalyst.”
Remarks, p. 14
The Examiner respectfully traverses as follows:
Firstly, the fact remains that given Brink teaches before use of the catalyst or catalyst precursor, adding one or more waxes to the so-formed catalyst or catalyst precursor (Brink, [0016]); and the each wax may be added to the carrier, catalyst or catalyst precursor by e.g. coating, (Brink, [0030]); and one preferred wax comprises a C20+ paraffin wax, more preferably a C20-100 alpha paraffin wax (Brink, [0022]), Brink teaches combination of wax which overlap with the composition of paraffins of the present claim.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Alternatively, given that White in view of Brink using one or more waxes, selected from a C20-100 alpha paraffin wax, it therefore would have been obvious to a person of ordinary skill in the art to choose one or more C31-C50 alpha paraffin wax, and one or more C15-C30 alpha paraffin wax, in order to achieve desired product performance, as set forth on pages 8-9 of Office Action mailed 03/17/2025, absent evidence to the contrary.
Second, Brink does not necessarily require waxes with C100 heavier.
Applicant further argues:
“In addition, there is no suggestion, without hindsight reconstruction, that the coating material in claim 21, "a mixture containing one or more heavy C31-C50 paraffins, and one or more C15-C30 paraffins," is removed by "heating the reactor during startup..."”
Remarks, p. 14
The Examiner respectfully traverses as follows:
Firstly, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Secondly, given that White in view of Brink teaches identical or substantially identical material (i.e., catalyst comprising zeolite, binder and metals) and prepared by identical or substantially identical methods (i.e., catalyst prepared by drying, activating and then coated with wax) with those of the present invention (claims 21, and 2), therefore it is clear that the catalyst of White in view of Brink would necessarily and inherently be nonabsorptive.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Applicant further argues:
“In addition, the present claims require that the nonabsorptive catalyst particles are encapsulated with a coating material (see also the present publication, [0044], where it is explained that the amount of coating material provided is sufficient to encapsulate the external surface of the catalyst). This layer around is around the external surface of the catalyst particles to block ingress of water into the pores. In contrast, in Brink, the wax appears to be within the pores (Brink [0031]) suggesting that external surface area may be exposed, to achieve their stated goal of strengthening Fischer Tropsch catalyst particles (rather than preventing water absorption that would detrimentally impact hydroprocessing catalyst activity as in the present claims).”
Remarks, p. 14
The Examiner respectfully traverses as follows:
The present claims do not require specific structures of the coating material. Therefore, the fact remains that Brink in view of Young and Brink meet the present claims, including the coating material.
Applicant further argues:
“In addition, regarding the feature that the catalyst particles are nonabsorptive, the Office Action asserted that "it is clear that the catalyst of White in view of Brink would necessarily and inherently be nonabsorptive" (Office Action, page 9).
This property was NOT appreciated or disclosed in the prior art, and as such it is an unexpected feature that the particles are nonabsorptive to water, particularly considering that in Fischer Tropsch water is a reaction product and one would not be concerned with damage due to water ingress.”
Remarks, p. 15
The Examiner respectfully traverses as follows:
Given that White in view of Brink teaches identical or substantially identical material (i.e., catalyst comprising zeolite, binder and metals) and prepared by identical or substantially identical methods (i.e., catalyst prepared by drying, activating and then coated with wax) with those of the present invention (claims 21, and 2), therefore it is clear that the catalyst of White in view of Brink would necessarily and inherently be nonabsorptive, as set forth on page 9 of Office Action mailed 03/17/2025, absent evidence to the contrary.
In order to overcome the rejection under inherency rational, applicants need to provide evidence to show how the catalyst of White in view of Brink would not necessarily or inherently be nonabsorptive.
Applicant further argues:
“Regarding claim 2 (which depends on claim 21), all of the remarks herein applicable to the rejection of claim 21 apply and are incorporated herein. In addition, the method of production is important to characterize the catalyst, because the steps of making the extruded catalyst (including coating the presulfided hygroscopic catalyst particles after presulfiding the hygroscopic catalyst, and after calcining the catalyst particles having to produce the hygroscopic catalyst particles, as in claim 2) imparts structural characteristics.”
Remarks, p. 15
The Examiner respectfully traverses as follows:
The arguments provided by the applicant regarding:
“the method of production is important to characterize the catalyst”
must be supported by data either in the specification for provided through a declaration or affidavit.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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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/KELING ZHANG/Examiner, Art Unit 1732