DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/261,481 application filed 13 July 2023, which is a continuation of U.S. Patent Application Serial No. 17/147,725, now U.S. Patent No. 11,865,527, filed 13 January 2021.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 9-16, 20, and 27-29 are pending and have been fully considered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20 and 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12-15 of U.S. Patent No. 11,865,527. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of the patent recites “[a] method of hydroisomerizing a hydrocarbonaceous feedstock, the method comprising contacting the hydrocarbonaceous feedstock with a hydroisomerization catalyst according to claim 1 under hydroisomerization conditions to produce a hydroisomerized effluent.” Claim 1 of the patent recites the components of the hydroisomerization catalyst, which are the same or substantially the same as those recited in lines 4 to 16 of instant claim 20. Instant claim 20 further recites particular hydroisomerization conditions, which particular conditions are taught in column 20, lines 23-44 of the patent as hydroisomerizations conditions to produce a hydroisomerized effluent. Therefore, the limitations of the aforementioned claims of the instant application recite the same or substantially the same limitations as claims 1 and 12-15 of the patent.
Allowable Subject Matter
Claims 9-16 allowed.
The following is an examiner’s statement of reasons for allowance: the nearest art reference appears to be Ojo et al (US 2022/0305471), which discloses “[t]he SSZ-92 molecular sieve used herein is made in a similar manner to SSZ-91 except that SSZ- 92 comprises magnesium…The SSZ-91 and SSZ-92 molecular sieve generally comprises ZSM-48 type zeolite material, the molecular sieve having at least 70% polytype 6 of the total ZSM-48-type material; an EUO-type phase in an amount of between 0 and 3.5 percent by weight; and polycrystalline aggregate morphology comprising crystallites having an average aspect ratio of between 1 and 8. The silicon oxide to aluminum oxide mole ratio of the SSZ-92 molecular sieve may be in the range of 40 to 220 or 50 to 220 or 40 to 200. In some cases, the SSZ-92 molecular sieve may have at least 70% polytype 6 of the total ZSM-48- type material; an EUO-type phase in an amount of between 0 and 3.5 percent by weight; and polycrystalline aggregate morphology comprising crystallites having an average aspect ratio of between 1 and 8” [paragraph 0043]. However, Ojo et al is not prior art because the filing date for said application is 26 March 2021, which is after 13 January 2021, the priority date of the instant application. With respect to the Written Opinion of the International Searching Authority, said Opinion states that the claims are obvious over Zhang et al in view of Ojo et al. Such an assertion is problematic since Zhang et al teaches a catalyst comprising “a molecular sieve belonging to the ZSM-48 family” and a “promoter selected from magnesium (Mg), calcium (Ca), strontium (Sr), barium (Ba), potassium (K), lanthanum (La), praseodymium (Pr), neodymium, (Nd), chromium (Cr), and mixtures thereof.” Then the Opinion states it would be obvious to replace the catalyst having a molecular sieve belonging to the ZSM-48 family and a promoter with a molecular sieve [SSZ-91—Examiner’s insertion] belonging to the ZSM-48 family that does not contain the promoter.” See, e.g., paragraph 0044 of Ojo et al ‘471: “the primary difference between SSZ-92 and SSZ-91 is that SSZ-92 comprises magnesium.” See also, Ojo et al (US 9,802,830). The combination of references according to the Opinion appears to arrive at a hydroisomerization catalyst without the second modifier.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN A MCCAIG whose telephone number is (571)270-5548. The examiner can normally be reached Monday to Friday 8 to 4:30 Mountain Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
29 December 2025