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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 11,2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 requires an upper limit of 200nm while its dependent claim (claim 1) requires an upper limit of 100nm.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
[Rejection based on Larsen]
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Larsen (US 20120027673 A1).
Regarding claim 1, Larsen discloses a sample of ZSM-5 in which the molar silica alumina ratio is 30 (Larsen [Table 1 Sample1-E4), with a crystal size of 26nm (Larsen [Table II Sample1-E4). Furthermore, based on table 1 the mesopore volume is 0.43 cc/g the micropore volume is 0.104 cc/g (Larsen [Table 1 Sample1-E4). While the prior art does not note the process of desilication, the claimed invention is in reference to a product and this is a product-by-process limitation that limits the product only in terms of the structural implication of the process limitation. Desilication is used to achieve a specific mesopore structure in the product, a structure which is met by the prior art as indicated by the micropore volume. Therefore, the prior art fulfils the limitations set by instant claim requiring a crystalline material to have a SAR of 15 or more, a crystal size of 100nm or less, a mesopore volume of at least 0.40 cm-3 /g and a micropore volume of at least 0.10 cm-3 /g.
Regarding claim 5, Larsen discloses the molar SAR as 30(Larsen [Table 1 Sample1-E4). Therefore, this disclosure fulfills the limitations set by the instant claim requiring the material to have a SAR ranging between 15 to 300.
Regarding claim 6, Larsen discloses that organic structure templates can comprise of TPAOH and TPABr (Larsen[0069]). Using the data provided in Example 1, the molar ratios can be used to determine a weight ratio(Larsen [Example 1]). Finding the total molar mass, and then identifying the amount of organic template, the wt.% is calculated by dividing the organic template’s mass over the total mass. This reveals that the organic template makes up 8wt% of the product. Therefore, the prior art fulfils the limitations set in the instant claim requiring an organic structuring directing agent to make up 0.1 to 10 wt.% of the product.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jan (US 20160257623 A1).
Regarding claim 1, Jan discloses crystalline material comprising of an MFI framework with a silica to alumina ratio of 41.4 with a crystal size between 20 to 50 nm (Jan [0034]). The prior art also teaches a mesopore volume of 0.52 cc/g and a micropore volume of 0.161 cc/g (Jan [0034]). This disclosure, from the prior art, fulfills the limitations set in the instant claim requiring a desilicated crystalline material to have a structure with a SAR od 15 or more, an average crystal size less than 100nm, a mesopore volume greater that 0.40 cm3/g and a micropore volume greater than 0.10 cm3/g.
Regarding claim 5, Jan discloses a crystalline material with a silica to alumina ratio of 41.4 (Jan [0034]). Therefore, this disclosure fulfills the limitations set in the instant claim requiring the SAR of the particle to be between a range of 15 to 300.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jan (US 20160257623 A1).
Regarding claim 3, Jan discloses a crystalline material with a crystal size of 20 to 50nm(Jan [0034]). The range provided in the prior art overlaps with the 40 to 200 nm range required in the instant claim, resulting in a prima facie case of obviousness. One of ordinary skill in the art would have found it obvious that a particle of a size of 20 to 50nm would share structural properties similar to the material described in the instant claim due to the overlap in size.
Regarding claims 4, Jan discloses a crystalline material with a crystal size of 20 to 50nm(Jan [0034]). The range provided in the prior art borders the range required in the instant claim, 50 to 100nm resulting in a prima facie case of obviousness. One of ordinary skill in the art would have found it obvious that a particle of a similar size would also share its structural properties.
Response to Arguments
Applicant’s arguments, see applicant's remarks, filed December 22,2025, with respect to the rejection(s) of claim(s) 1-6 under 35 USC 102(a)(1)/103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of Larsen (US 20120027673 A1) and Jan (US 20160257623 A1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNETTE H PHAN whose telephone number is (703)756-4520. The examiner can normally be reached M-F 8:30-6:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 5712703591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNETTE PHAN/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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