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 Objections
Claims 1 objected to because of the following informalities:
Both Claim 1 and Claim 20 contain the phrase “an SSZ-91 molecular sieve” which should be “a SSZ-91 molecular sieve”.
Claim 9 recites “one or more of the following characteristics: a surface area in the range of 100-300 m2/g, or 110-250 m2/g, or 120-200 m2/g; a pore volume in the range of 2.5-105 nm pore diameter range of 0.6-2.0 cc/g, or 0.65-1.8 cc/g, or 0.7-1.5 cc/g, or a combination thereof.” Which should read “one or more of the following characteristics: a surface area in the range of 100-300 m2/g, or 110-250 m2/g, or 120-200 m2/g; a pore volume in the range of 2.5-105 nm; pore diameter range of 0.6-2.0 cc/g, or 0.65-1.8 cc/g, or 0.7-1.5 cc/g; or a combination thereof.” (emphasis added).
Appropriate correction is required.
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 9-11 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 9 requires “the rare earth metal modified alumina has one or more of the following characteristics: a surface area in the range of 100-300 m2/g, or 110-250 m2/g, or 120-200 m2/g; a pore volume in the range of 2.5-105 nm pore diameter range of 0.6-2.0 cc/g, or 0.65-1.8 cc/g, or 0.7-1.5 cc/g, or a combination thereof.”. The units of pore volume are given in length units when they should be units of volume per mass and the units of pore diameter are given in units of volume per mass when they should be in units of length. For the purpose of applying art Claim 9 is interpreted as including a pore diameter in the range of 2.5-105 nm and a pore volume in any of the ranges of 0.6-2.0 cc/g, or 0.65-1.8 cc/g, or 0.7-1.5 cc/g, or a combination thereof.
Claim 11 has the same issue identified above except the properties are directed to a lanthanum modified alumina rather than a rare earth modified alumina. For the purpose of applying art Claim 11 is interpreted as including a pore diameter in the range of 2.5-105 nm and a pore volume in any of the ranges of 0.6-2.0 cc/g, or 0.65-1.8 cc/g, or 0.7-1.5 cc/g, or a combination thereof.
Claim 10 requires “a lanthanum content in the range of about 1-20 wt.% or 1.5-15 wt.% or 2-10 wt.%”. When multiple ranges are presented within the same claim it is unclear which range actually limits the claim, see MPEP 2173.05(c).I. In order to be consistent with the broadest reasonable interpretation for the purpose of applying prior art Claim 10 is interpreted as including a lanthanum content in the range of about 1-20 wt.%.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 5 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 1 requires “a rare earth oxide modified alumina”. Claim 5 depends upon Claim 1 and requires “the rare earth metal is selected from lanthanum, cerium, praseodymium, neodymium, promethium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, lutetium, scandium, yttrium, or a combination thereof.”. This does not further limit Claim 1 because no metals other the 17 listed in Claim 5 are considered rare earth metals. In other words Claim 1 already implicitly required one or a combination of the 17 metals explicitly listed in Claim 5. 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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-9, 12-17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20160089664 A1 Zhang et al. Claim 1 requires “A hydroisomerization catalyst, which is useful to make dewaxed products including base oils”. The phrase “which is useful to make dewaxed products including base oils” is considered intended use. MPEP 2111.02.II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”. In this case the limitations of the claimed invention are fully set forth in the body of the claim and the intended use of making dewaxed products including base oils does not suggest structural limitations.
Claim 1 further requires “the catalyst comprising an SSZ-91 molecular sieve”. Zhang et al. discloses “In one subembodiment, the molecular sieve is selected from the group consisting of SSZ-32, Small crystal SSZ-32, ZSM-23, ZSM-48,” [0052]. ZSM-48 is identified as SSZ-91 molecular sieve in light of the instant application specification “The SSZ-91 molecular sieve generally comprises ZSM-48 type zeolite material” [0039].
Claim 1 further requires “and a rare earth metal modified alumina”. Zhang et al. discloses “The present invention is directed to an improved finished hydroisomerization catalyst manufactured from a high nanopore volume (HNPV) base extrudate. The HNPV base extrudate is manufactured from (1) a first HNPV alumina having a broad pore size distribution, (2) a second HNPV alumina having narrow pore size distribution, and (3) a molecular sieve suitable for base oil production.” [0011] and “The finished hydroisomerization catalyst of the present invention may contain one or more promoters selected from the group consisting of …, lanthanum (La), praseodymium (Pr), neodymium (Nd), chromium (Cr), and mixtures thereof. The amount of promoter in the hydroisomerization catalyst is from 0 wt.% to 10 wt.%” [0057]. It is understood that at least a portion of the La, Pr, and/or Nd used would be supported by the HNPV alumina and therefore would be considered rare earth metal modified alumina.
Claim 1 further recites “and, optionally, a refractory inorganic oxide carrier precursor”. Although listed as optional it is understood that the alumina may also be considered a refractory inorganic oxide carrier due to the thermal stability of alumina.
Claim 1 further requires “wherein the SSZ-91 molecular sieve content in the range of is about 5 to about 80 wt.%”. Zhang et al. discloses “The amount of molecular sieve material in the finished hydroisomerization catalyst is from 20 wt.% to 80 wt. % based on the bulk dry weight of the hydroisomerization catalyst.” [0054].
Claim 1 further requires “and further comprising a Group 8- 10 metal compound”. Zhang et al. discloses “As described herein above, the finished hydroisomerization catalyst of the present invention contains one or more hydrogenation metals. For each embodiment described herein, each metal employed is selected from the group consisting of elements from Groups 8 through 10 of the Periodic Table, and mixtures thereof.” [0055].
Claim 3 requires “the refractory inorganic oxide carrier precursor is selected from matrix materials and/or mixtures of matrix materials selected from silica, alumina, ceria, titania, magnesia, or a combination thereof.”. Zhang et al. discloses alumina as the refractory matrix (see Claim 1, above).
Claim 4 requires “the refractory inorganic oxide carrier precursor is selected from matrix materials and/or mixtures of matrix materials selected from alumina, silica-alumina or a combination thereof.”. Zhang et al. discloses alumina as the refractory matrix (see Claim 1, above).
Claim 5 requires “the rare earth metal is selected from lanthanum, cerium, praseodymium, neodymium, promethium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, lutetium, scandium, yttrium, or a combination thereof.”. Zhang et al. discloses lanthanum, praseodymium, or neodymium (see Claim 1).
Claim 6 requires “the alumina is selected from boehmite, pseudoboehmite, γ-alumina, ƞ-alumina, θ-alumina, δ-alumina, χ-alumina, or a mixture thereof.”. Zhang et al. does particularly limit the type of alumina used (other than pore size distribution) but does disclose “Conventional catalyst 1 was prepared using 55 wt. % pseudo-boehmite alumina” [0068] as well as “Catalyst 2 was prepared as described for conventional catalyst 1 by partially replacing the conventional alumina with a 37.5 wt.% HNPV alumina powder having a broad pore size distribution (BPSD).” [0069].
Claim 7 requires “the alumina is boehmite, pseudoboehmite, γ-alumina, θ-alumina, or a mixture thereof.”. Zhang et al. discloses pseudo-boehmite alumina (see Claim 6, above).
Claim 8 requires “the alumina is boehmite, pseudoboehmite, or γ-alumina.”. Zhang et al. discloses pseudo-boehmite alumina (see Claim 6, above).
Claim 9 requires “the rare earth metal modified alumina has one or more of the following characteristics: a surface area in the range of 100-300 m2/g, or 110-250 m2/g, or 120-200 m2/g; a pore volume in the range of 2.5-105 nm pore diameter range of 0.6-2.0 cc/g, or 0.65-1.8 cc/g, or 0.7-1.5 cc/g, or a combination thereof.”. Zhang et al. discloses an alumina with a BET surface area of 226 m2/g, a total pore volume of 0.87 cc/g and a pore diameter average of 147 nm (see Table 7, [0074]).
Claim 12 requires “the catalyst is a shaped particulate material [is} in the form of a powder, granule, molded product, or an extrudate.”. Zhang et al. discloses extrudates “(a) mixing and pepertizing the 1 and 2" alumina supports with at least one molecular sieve to make an extrudate base;” [0058].
Claim 13 requires “the catalyst is a shaped particulate material extrudate that has been dried at a temperature in the range of about 90-150 °C and calcined at a temperature in the range of about 260-650 °C.”. Zhang et al. discloses “the catalyst is dried at one or more temperatures in the range of 38°C.-149°C. (100° F-300°F) for 0.1-10 hours. The catalyst is further calcined at one or more temperatures in the range of 316° C.-649° C. (600°F.-1200°F), with the presence of sufficient airflow, for 0.1-10 hours.” [0063].
Claim 14 requires “the Group 8-10 metal compound comprises a Group 8-10 metal selected from cobalt, nickel, palladium, platinum, or a combination thereof.”. Zhang et al. discloses “For each embodiment described herein, each metal employed is selected from the group consisting of elements from Groups 8 through 10 of the Periodic Table, and mixtures thereof. In one subembodiment, each metal is selected from the group consisting of platinum (Pt), palladium (Pd), and mixtures thereof.” [0055].
Claim 15 requires “the catalyst is in the form of a calcined particulate material that has been contacted with a solution comprising a Group 8-10 metal compound at a temperature in the range of about 20-80 °C for about 0.1-2 hrs.”. Zhang et al. discloses calcining (see Claim 13 above) and “During a typical impregnation, the support is exposed to the impregnation solution for 0.1-10 hours.” [0068]. Zhang et al. is silent towards a temperature for the impregnation procedure, this is understood to implicitly disclose that the impregnation happens at ambient (room) temperature of about 25 °C.
Claim 16 requires “the catalyst is in the form of a catalyst precursor material that has been dried at a temperature in the range of about 90-150 °C and calcined at a temperature in the range of about 260-650 °C.”. Zhang et al. discloses “the catalyst is dried at one or more temperatures in the range of 38°C.-149°C. (100° F-300°F) for 0.1-10 hours. The catalyst is further calcined at one or more temperatures in the range of 316° C.-649° C. (600°F.-1200°F), with the presence of sufficient airflow, for 0.1-10 hours.” [0063].
Claim 17 requires “the hydroisomerization catalyst comprises about 0-85 wt.% of the refractory inorganic oxide carrier, about 5-85 wt.% of the rare earth metal modified alumina, a total molecular sieve content of about 25-85 wt.%, a total active metal content of about 0.1-1.0 wt.%, and a total promoter content of about 0-10 wt.%.”. Zhang et al. discloses in Table 1 [0041] 10-110% refractory inorganic oxide carrier (calculated by adding the two forms of alumina together, it is understood that compositions above 100% are impossible), 10-110% of rare earth modified alumina (as above), total molecular sieve content of 25-85%, total active metal content of 0.1-1.0 wt.%, and a total promoter content of 0-10 wt.%.
Claim 20 requires “wherein the catalyst that is made according to the method: mixing an SSZ-91 molecular sieve with a rare earth metal modified alumina and, optionally, a refractory inorganic oxide carrier precursor, to form a mixture, wherein the mixture has an SSZ-91 molecular sieve content in the range of about 5 to about 80 wt.%;” Zhang et al. discloses “In general, the hydroisomerization catalyst of the present invention is prepared by: (a) mixing and pepertizing the 1 and 2" alumina Supports [a rare earth metal modified alumina and, optionally, a refractory inorganic oxide carrier precursor, see Claim 1] with at least one molecular sieve to make an extrudate base [which may be from the family of SSZ-91 and in the amount of 20-80 wt.%, see Claim 1]. [0058-59]
Claim 20 further requires “forming a shaped particulate material from the mixture and drying the particulate material; calcining the dried particulate material”. Zhang et al. discloses drying and calcining the material, see the discussion of Claim 16.
Claim 20 further requires “contacting the calcined particulate material with a solution comprising a Group 8-10 metal compound to form a catalyst precursor material and drying the catalyst precursor material; and calcining the dried catalyst precursor material to form a hydroisomerization catalyst.”. Zhang et al. discloses impregnation followed by drying and calcining the material, see the discussion of Claim 15.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20160089664 A1 Zhang et al., in view of WO 2017034823 Ojo et al. Regarding Claim 2, Zhang et al. teaches all of the limitations of Claim 1. Claim 2 further requires “the SSZ-91 molecular sieve 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.”. Zhang et al. discloses ZSM-48 (see Claim 1, above), however is silent towards the polytype, an EUO phase, and an aspect ratio.
Ojo et al. is similarly directed to hydroisomerization catalysts. Ojo et al. discloses “SSZ-91 materials are composed of at least 70% polytype 6 of the total ZSM-48-type material present in the product” [0018], “SSZ-91 contains an additional EUO-type molecular sieve phase in an amount of between 0 and 3.5 percent by weight (inclusive) of the total product.” [0019], and “Molecular sieve SSZ-91 has a morphology characterized as polycrystalline aggregates, each of the aggregates being characterized as being composed of crystallites collectively having an average aspect ratio of between 1 and 8 (inclusive).” [0020].
It would have been obvious to one of ordinary skill in the art to have combined the catalyst of Zhang et al. with the catalyst of Ojo et al. for at least the reason that they are both disclosed to be effective at the same hydroisomerization reaction.
The motivation to have used the SSZ-91 molecular sieve of Ojo et al. as the molecular sieve in the composition of Zhang et al. is given by Ojo et al. “a ZSM-48 material lacking any one of the three uniquely combined characteristics of SSZ-91 (low aspect ratio, low EU-1 content, high polytype 6 composition) will exhibit poor catalytic performance.” [0016].
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20160089664 A1 Zhang et al., in view of NPL “Preparation of Large-Pore-Volume γ‑Alumina Nanofibers with a Narrow Pore Size Distribution in a Membrane Dispersion Microreactor” Wan et al. Regarding Claim 10, Zhang et al. discloses all of the limitation of Claim 8. Claim 10 further requires “the rare earth metal modified alumina is a lanthanum modified boehmite or γ-alumina having a lanthanum content in the range of about 1-20 wt.% or 1.5-15 wt.% or 2-10 wt.%”. Regarding lanthanum content Zhang et al. discloses lanthanum (see Claim 5) and a promoter content of 0-10 wt. % (see Claim 17). Regarding the phase of alumina Zhang et al. is silent towards the phase of alumina used. It is therefore possible that the alumina used by Zhang et al. was either boehmite or γ-alumina, however it would be improper to base a 102 rejection on mere possibilities.
Furthermore, although the composition of Zhang et al. requires high nanopore volume alumina with a narrow pore size distribution, Zhang et al. is completely silent towards how to form such an alumina material. Wan et al. is similarly directed to alumina materials with large nanopore volumes and narrow pore distributions. Wan et al. discloses a method of synthesizing γ-alumina with surface area of 169-329 m2/g, a pore volume of 0.30-1.25 cc/g, and pore diameters between 6.4-18.2 nm [Page 8890, Table 1], which is substantially similar to the alumina disclosed by Zhang et al.
It therefore would have been obvious to have used the method of synthesis of Wan et al. to have fabricated the required alumina for the composition of Zhang et al., for at least the reason that one of ordinary skill in the art could avoid undue experimentation in obtaining the required alumina. Furthermore Wan et al. recognizes the utility of their alumina as a catalyst for converting petroleum products “This study provides a simple, economical method for preparing fibrous γ-Al2O3 with both a large pore volume and a narrow pore size distribution, which could be used as an excellent catalyst support for the petroleum-refining industry.” [Page, 8893, Section 4]
The motivation to have used the synthesis of Wan et al. can be found within Wan et al. “In addition, this method is more economical and simple because it does not require any organic templates or complicated operations.” [Page 8893, Section 4].
Claim 11 requires “the lanthanum modified alumina has one or more of the following characteristics: a surface area in the range of 100-300 m2/g, or 110-250 m2/g, or 120-200 m2/g; a pore volume in the range of 2.5-105 nm pore diameter range of 0.6-2.0 cc/g, or 0.65-1.8 cc/g, or 0.7-1.5 cc/g, or a combination thereof.”. Wan et al. discloses γ-alumina with surface area of 169-329 m2/g, a pore volume of 0.30-1.25 cc/g, and pore diameters between 6.4-18.2 nm [Page 8890, Table 1].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA MAXWELL SPEER whose telephone number is (703)756-5471. The examiner can normally be reached M-F 9am-5pm EST. 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, Anthony Zimmer can be reached at 571-270-3591. 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.
/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/DANIEL BERNS/Primary Examiner, Art Unit 1736
Prosecution Insights