DETAILED ACTION
Claims 54-79 are pending, of which claims 61-79 are withdrawn.
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 .
Response to Arguments
Applicant’s arguments, see page 4 of response, filed 5/4/26, with respect to amended claim 54 have been fully considered and are persuasive. The pending rejections under 35 U.S.C. 103 of claim 54 has been withdrawn. However, upon further search, additional art has been found that teaches the amended claims, as described below.
Applicant also notes on page 4 that previously presented and non-elected claims 25-53 have been cancelled and replaced with new claims 56-79 so that each claim depends from elected claim 54. Examiner notes that claims 56-60 further limit the catalyst recited in claim 54 and are therefore not subject to the restriction requirement. Claims 61-79 are similar to Groups I-III noted in the restriction requirement of 7/2/25 and not elected by Applicant. As such, these claims are restricted for the same reasons as described below.
On pages 4-5 of the response, Applicant also acknowledges the double patenting rejection over copending application 18/270,208, but argues that the copending application does not recite any of the specific zeolites currently recited in claim 54 of the instant application. Examiner agrees that, as amended, claim 54 includes subject matter not recited in the copending application. Therefore the double patenting rejection has been withdrawn.
Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group IV, claim(s) 56-60, drawn to a zeolite based catalyst.
Group V, claim(s) 61-71, drawn to a process for hydroconversion of paraffins.
Group VI, claim(s) 72-79, drawn to a process of making a catalyst.
At the outset, Examiner notes that claims 73-79 depend from claim 71 of Group V. However, it is clear that Applicant intended these claims to depend from claim 72, and as such, they are grouped with the process of Group VI.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups IV-VI lack unity of invention because even though the inventions of these groups require the technical feature of a zeolite based catalyst of claim 54, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US 20130296568 (“Weston”).
Weston teaches a zeolite based catalyst (see e.g. paragraph [0039]). Weston teaches several framework types for the zeolite material, including VSV, which is one of the recited framework types (see e.g. paragraph [0081]). Weston further teaches that a metal such as platinum can be included in the catalyst (see e.g. paragraph [0057]). As noted in the instant application, platinum is considered a hydrogenation function metal (see instant specification at paragraph [0030]). Further, zeolite VSV has the recited properties for void size and channel diameter (see instant specification at paragraph [0028]). Although Weston does not provide the iC4/nC4 product ratio, given that the same materials are used in the instant application, one of ordinary skill in the art would expect that the catalyst of Weston would provide the same ratio.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Newly submitted claims 61-79 are directed to an invention that lacks unity of invention with the originally elected claims of Group IV as described above.
Since applicant has received an action on the merits for the originally elected invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 61-79 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 54-55 and 58-60 are rejected under 35 U.S.C. 103 as being unpatentable over Weston.
Regarding claim 54, Weston teaches a catalyst comprising a zeolite and a metal component (see e.g. paragraphs [0039] and [0057]). Weston teaches that the zeolite can be a VSV type zeolite (see e.g. paragraph [0081]). As provided in the instant specification, a VSV type zeolite meets the limitations regarding void diameter and channel diameter (see e.g. instant specification at paragraph [0028]). Weston teaches that the metal can be metals such as platinum or palladium (see e.g. paragraph [0057]). As indicated in the instant specification, platinum or palladium are considered hydrogenation materials, with platinum as the most preferred hydrogenation material (see e.g. instant specification at paragraph [0029]). Although Weston does not have a specific example using a VSV zeolite with platinum, given that both the metal and zeolite type are specifically suggested, it would have been obvious to a person of ordinary skill in the art to select the VSV type zeolite and platinum metal as the catalyst. Weston does not provide the specific iC4/nC4 ratio when used as a hydrocracking catalyst for n-C10. However, per MPEP 2112.01(II), if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. As such, the catalyst of Weston is presumed to have the same selectivity as recited in claim 54.
Regarding claim 55, Weston teaches that the zeolite used can be a VSV type zeolite (see e.g. paragraph [0081]). As noted in the instant specification, a VSV type zeolite has a d-sphere/d-avg ratio of 1.11, which is within the claimed range (see e.g. specification at paragraph [0028]).
Regarding claim 58, Weston teaches that the hydrogenation material can include platinum or palladium, each of which are noble metals (see e.g. paragraph [0057]).
Regarding claim 59, Weston teaches that the hydrogenation material can include platinum or palladium (see e.g. paragraph [0057]).
Regarding claim 60, Weston teaches that the hydrogenation material can include nickel, molybdenum, or tungsten (see e.g. paragraph [0076]).
Allowable Subject Matter
Claims 56-67 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 56 limits the zeolite to framework type PWO, while claim 57 recites that the zeolite is specifically PST-21. Weston does not teach or suggest using a PWO type zeolite, and therefore also does not teach or suggest using zeolite PST-21.
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 ERIC S SHERMAN whose telephone number is (703)756-4784. The examiner can normally be reached Monday-Friday 8:30-5:00 ET.
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.
/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights