DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-7, and 9-12 have been amended. New claims 14-20 are added. Claims 1-20 are pending in the instant application.
Priority
This application is a U.S. national stage entry of PCT International Application No. PCT/CN2021/125964, filed on October 25, 2021, which claims priority from a Chinese patent application No. 202011158111.7, filed on October 26, 2020.
Information Disclosure Statements
Applicants’ Information Disclosure Statements, filed on 04/24/2023, 03/31/2025, 07/09/2025, and 10/24/2025 have been considered. Please refer to Applicant’s copies of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election with traverse of Group I (i.e. claims 1-6 and 14-20) in the reply filed by Applicant’s representative Allen Xue on 12/15/2025 is acknowledged. Applicant traverses the lack unity of restriction requirement on the ground that CN'324 (FIG. 5) shows a NH₃-TPD graph, which exhibits two peaks; while the claimed aluminosilicate molecular sieve catalyst has
three peaks; and CN'047 (claim 2) teaches a multi-stage porous composite molecular sieve based on NH₃-TPD has 20-40% of weak acid, 30-65% of medium-strong acid, and 10-50% of strong acid, based on its total acid content of the acid content, while the claimed invention (claim 4) has a weak acid content of 40-50%, a medium-strong acid content of 15-25%, and a strong acid content of 35-45%. However, the acid content is not a claimed limitation. In addition, Applicant fails to compare CN'047 (claim 2) with claim 1 of the claimed invention. More importantly, the pending claims are also not patentable over the new prior art cited in this Office action. Therefore, pending claims lack unity of invention. The restriction requirement is maintained, and made Final.
Group II (claims 7-11) and Group III (12-13) are subject to rejoinder if elected claims of Group I are found allowable.
Status of the Claims
Claims 7-13 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) due to Applicant’s response to the restriction requirement. Claims 1-6 and 14-20 are under examination on the merits.
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 5-6, and 19-20 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 pre-AIA the applicant regards as the invention.
Specifically, claims 5-6, and 19-20 contain the term “preferably”, which renders the claims indefinite because it is unclear whether the narrower scope of the limitation (i.e., the solute is carbon dioxide) following the phrase is part of the broader scope of the limitation of solute. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 18 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 pre-AIA the applicant regards as the invention. Specifically, claim 18 contains the term “such as” for defining metallic or non-metallic component. However, the term renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 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 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 1-6 and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN107512729A (“the `729 publication”) to Yang et al.
Applicant’s claim 1 is drawn to an aluminosilicate molecular sieve catalyst, which shows a desorption curve having three peaks P1, P2 and P3 in its NH3-TPD pattern, and the desorption temperatures corresponding to the summits of the three peaks P1, P2 and P3 are respectively in a range of 180-220°C, 250-290 °C and 370-410 °C.
NH3-TPD is an analytical technique used to determine the total acidity (amount and strength of acid sites) of a solid catalyst, such as zeolite. It involves saturating a sample with ammonia, typically showing low-temperature peaks (weak acid sites) and high-temperature peaks (strong acid sites).
The `729 publication (Examples 4-7) discloses a method for producing an aluminosilicate molecular sieve catalysts (ZSM-5) comprising 1) mixing a template (TPAOH), a silica source, a first aluminum source (aluminum sulfate octadecyl-hydrate), and water as synthetic raw materials with the molar ratio: SiO2/Al2O3=180; TPAOH/SiO2=0.22; H2O/SiO2=18, and recrystallize the resulting mixture at 150 °C for 3 days with stirring; 2) mixing the first mixture, silica powder (alkaline silica sol and fuming silica gel with different particles sizes), and a second aluminum source (sodium aluminate) to obtain a second mixture; 3) shaping the second mixture to obtain a third mixture; 4) contacting the third mixture, an alkali source (n-butylamine), and a regulator (sugar gum powder); and treating the fourth mixture to obtain the aluminosilicate molecular sieve catalysts with calcinating at 550 °C for 5 hours to obtain a binder-free ZSM-5 catalyst. In addition, the `729 publication [0016 of English translation] discloses in step b), the pore-forming agent (regulator) is selected from at least one of sugar gum powder or methylcellulose.
On the other hand, Applicant’s specification also disclosed the claimed an aluminosilicate molecular sieve catalyst was prepared using two-type of silica powder and a pore-forming agent (regulator) selected from at least one of sugar gum powder or cellulose (see Examples 1-3), which shows a desorption curve having three peaks P1, P2 and P3 in its NH3-TPD pattern, and the desorption temperatures corresponding to the summits of the three peaks P1, P2 and P3 are respectively in a range of 180-220°C, 250-290 °C and 370-410 °C. Therefore, the aluminosilicate molecular sieve catalyst prepared by the method of Examples 4-7 of the `729 publication seems to be the same or substantially the same aluminosilicate molecular sieve catalyst of Applicant’s claim 1 even though silence on the physical property of its NH3-TPD pattern.
It has long been recognized that a product is inseparable from its properties. 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255,195 USPQ at 433. Based on the evidence provided hereby, the Office has established that the `729 publication anticipates Applicant’s claims 1-6 and 14-20.
Alternatively, claims 1-6 and 14-20 are also subject to the following 103(a) rejection:
Claim Rejections - 35 USC § 103(a)
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-6 and 14-20 are rejected under 35 U.S.C. 103 (a) as unpatentable over the `729 publication.
The `729 publication (Examples 4-7) discloses a method for producing an aluminosilicate molecular sieve catalysts (ZSM-5) comprising 1) mixing a template (TPAOH), a silica source, a first aluminum source (aluminum sulfate octadecyl-hydrate), and water as synthetic raw materials with the molar ratio: SiO2/Al2O3=180; TPAOH/SiO2=0.22; H2O/SiO2=18, and recrystallize the resulting mixture at 150 °C for 3 days with stirring; 2) mixing the first mixture, silica powder (alkaline silica sol and fuming silica gel with different particles sizes), and a second aluminum source (sodium aluminate) to obtain a second mixture; 3) shaping the second mixture to obtain a third mixture; 4) contacting the third mixture, an alkali source (n-butylamine), and a regulator (sugar gum powder); and treating the fourth mixture to obtain the aluminosilicate molecular sieve catalysts with calcinating at 550 °C for 5 hours to obtain a binder-free ZSM-5 catalyst. In addition, the `729 publication [0016 of English translation] discloses in step b), the pore-forming agent (regulator) is selected from at least one of sugar gum powder or methylcellulose.
Even though the `729 publication is silent on the limitation of the physical property of the claimed aluminosilicate molecular sieve catalyst showing a desorption curve having three peaks P1, P2 and P3 in its NH3-TPD pattern, said physical property above is considered to be the inherited physical property of the aluminosilicate molecular sieve catalyst disclosed by the prior art, because the they are prepared by substantially similar method. Applicant’s specification also disclosed the claimed an aluminosilicate molecular sieve catalyst was prepared using two-type of silica powder and a pore-forming agent (regulator) selected from at least one of sugar gum powder or cellulose (see Examples 1-3).
It has long been recognized that a product is inseparable from its properties. 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255,195 USPQ at 433. Based on the evidence provided hereby, the Office has established that the `729 publication would have rendered Applicant’s claims 1-6 and 14-20, unless Applicant can show evidence to demonstrate otherwise.
Claim Rejections - 35 USC § 102
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 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 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 1-6, and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhai et al., Topics in Catalysis, (2006), 39(3-4), p.227-235.
Zhai et al. (Figure 7 at p.232) discloses NH3-TPD profiles of directly calcined aluminosilicate nanoparticles (A), AIMCM-41 (B), and HZSM-5 (C)
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, which show a desorption curve having three peaks P1, P2 and P3 in its NH3-TPD pattern for the three aluminosilicates, and the desorption temperatures corresponding to the summits of the three peaks P1, P2 and P3 are respectively in a range of 180-220°C, 250-290 °C and 370-410 °C. AIMCM-41 and HZSM-5 are also aluminosilicates. The molar ratios of Si/Al of aluminosilicate nanoparticles (A), AIMCM-41 (B), and HZSM-5 (C) are disclosed in Table 2 at p.232. Therefore, Zhai et al. anticipates claims 1, 5, 14, and 17-18.
In terms of claim 2, wherein the peak heights H1, H2 and H3 of the three peaks P1, P2 and P3 satisfy the relationship H1> H2> H3, Zhai et al. (Figure 7 at p.232) discloses NH3-TPD profiles of directly calcined aluminosilicate AIMCM-41 (B), wherein the peak heights H1, H2 and H3 of the three peaks P1, P2 and P3 satisfy the relationship H1> H2> H3.
In terms of claims 3-4 and 6, because the NH3-TPD profiles of directly calcined aluminosilicate AIMCM-41 (B) meet the limitation of the profiles of claimed aluminosilicate of claim 1, the limitations of claims 3-4 and 6 are also inherently met, unless Applicant can prove otherwise.
In terms of claims 15 and 16, because the NH3-TPD profiles of directly calcined aluminosilicate AIMCM-41 (B) (see Figure 7 at p.232) meet the limitations of the profiles of claimed aluminosilicate of claim 1, the limitations of claims 15 and 16 are also inherently met, unless Applicant can prove otherwise.
Conclusions
Claims 1-6 and 14-20 are rejected.
Claims 7-13 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731