DETAILED ACTION
Claims 25-55 are pending, of which claims 25-53 have been withdrawn.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 .
Election/Restrictions
Applicant's election with traverse of Group IV in the reply filed on 10/2/25 is acknowledged. The traversal is on the ground(s) that the prior art does not teach the special technical feature of a hydrogenation material loaded on the claimed zeolite. This is not found persuasive because Group I does not appear to require a hydrogenation material, and as such, this argument would not apply. Groups II and III have a hydrogenation material loaded on a zeolite having different limitations. As hydrogenation materials are known in the art, neither Groups II or III share any special technical features with elected Group IV. Further, as shown below, all the limitations of Group IV are known in the art, and as such, the invention of Group IV cannot share any special technical features with any other group.
The requirement is still deemed proper and is therefore made FINAL.
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 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017202495 (“Canos”).
Regarding claim 54, Canos teaches a catalyst comprising a small pore zeolite and a metal component (see e.g. paragraph [0012]). Canos teaches that the zeolite can be a CDO type zeolite (see e.g. paragraph [0134]). As provided in the instant specification, a CDO type zeolite meets the limitations regarding void diameter and channel diameter (see e.g. instant specification at paragraph [0028]). Canos teaches that the metal can be metals such as platinum or palladium (see e.g. paragraph [0134]). 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 Canos does not have a specific example using a CDO 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 CDO type zeolite and platinum metal as the catalyst. Canos 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 Canos is presumed to have the same selectivity as recited in claim 54.
Regarding claim 55, Canos teaches that the zeolite used can be a CDO type zeolite (see e.g. paragraph [0134]). As noted in the instant specification, a CDO type zeolite has a d-sphere/d-avg ratio of 1.48, which is within the claimed range (see e.g. specification at paragraph [0028]).
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.
Claim 54 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/270,208 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the reference application recites a zeolite based catalyst having voids greater than 0.50 nm in diameter, which overlaps with the claimed range. The voids are accessible by apertures having a longest diameter of less than 0.50 nm and a shortest diameter of more than 0.30 nm, both of which are the same as recited in instant claim 54. Claim 1 of the reference application further recites that the catalyst includes a hydrogenation functional material. Claim 1 of the reference application recites that the iC4/nC4 ratio when used as a hydrocracking catalyst for n-C10 is less than 0.25, which overlaps with the range of instant claim 54.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736