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 .
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.
Claims 18-25 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN-106672996-A).
Regarding claims 18-19
Liu discloses a Y-type molecular sieve that has an average grain diameter of 70 nm, and a SiO2/Al2O3 ratio of 6.8 (Example 6)
The proportion of 40-70 nm grains is a property of the composition, and since the reference teaches all of the other limitations of the claim, it would be expected to also meet this limitation. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claims 20-23
Liu discloses a Y-type molecular sieve which has a pore volume of 0.3-0.5 mL/g, a specific surface area of 700-1,000 m2/g (para 0009).
The specific surface area and the pore volume of Liu overlaps the instant invention. As such, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
With respect to the external surface area and the R value, these would be properties of the composition. And when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02. Further, as the pore volume and specific surface area, as well as grain size all over lap, it would be expected that the external surface area and the R value of Liu would also overlap, as these values are interdependent with the grain size, pore volume and specific surface are.
Regarding claims 24-25
Liu discloses the composition after hydrothermal treatment can have a relative crystallinity of 87 % (Example 6).
With respect to the time and temperature limitations, these are product-by-process limitations which only serve to further narrow the claim if it can be shown that the processed used will result in a materially different product.
Allowable Subject Matter
Claims 26-37 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: none of the prior art fairly teaches or suggest the limitations of independent claim 26.
Response to Arguments
Applicants argue against the 103 rejections over Liu.
Applicants argue that Liu is silent as to the proportion of 40 to 70 nm grains. While this may be true it is not persuasive as this is a property of the composition, and applicants have not shown that the composition of the reference would not also meet this property limitation.
Applicants argue that instant Example 1 is better than instant Examples 4 or 5. While this may be true it is not persuasive as the closest prior art has not been compared.
Applicants argue that the comparative example of Liu is 106 nm, therefore Liu is directed to large grain molecular sieves. This is not persuasive and it is noted that was the comparative Example of Liu, However, Example 6 of Liu has an average grain size of 70nm.
The remaining arguments against this rejection have been fully considered, but are not persuasive for the same reasons given above.
Applicants argue against the 103 rejection over Liu II.
These arguments have been found to be persuasive, and as such this rejection has 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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