DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 11-12, and 18 have been amended. Claims 2, and 13 are cancelled. New claims 21-22 are added. Claims 1, 3-12, and 14-22 are pending in the instant application. Claims 1, 3-10, and 18-20 remain withdrawn. Claims 11-12, 14-17, and 21-22 are under examination on the merits.
Response to Amendment
The Amendment by Applicants’ representative Mr. Luke A. Henderson on 05/29/2026 has been entered.
Response to Arguments/Amendments
Claim rejection under 35 U.S.C.§103(a)
Applicant amended claim 11 by further limiting “where: the hierarchical mesoporous ZSM-5 zeolite has a mesopore volume of at least 0.30 cubic centimeters per gram (cm3/g); and the hierarchical mesoporous ZSM-5 zeolite has a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite”.
In addition, Applicant argued that the Office has not presented a prima facie case of obviousness against independent claim 11, as amended, at least because one skilled in the art would not be motivated to modify Al-Herz (the `585 patent) with the teachings of Hamid Abdul, as proposed by the Office, based on the teachings of prior art. Specifically, Applicant argued that one skilled in the art would not be motivated to modify Al-Herz with the teachings of Hamid Abdul, as proposed by the Office, because the proposed modification would change the principle of operation of Al-Herz; and one skilled in the art would not be motivated to modify Al-Herz with the teachings of Hamid Abdul, as proposed by the Office, because the proposed modification would render Al-Herz unsuitable for its intended purpose.
Applicant’s amendment and arguments have been fully considered, but not sufficient to overcome the rejection.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the difference between amended claim 11 and the `585 patent is that the prior art does not teach the cracking catalyst (treated ZSM-5 zeolite) has a mesopore volume of at least 0.30 cm3/g. Instead, the `585 patent (col. 7, ln. 56 - col. 8, ln. 2) teaches the mesopores in the metal-substituted zeolite compositions (catalyst) have a pore diameter ranging from 2 to 4 nm with mesopore volume ranging from 0.26 cm3/g. The term “range from” can be interpreted as “at least”.
In terms of Applicant’s argument that the `585 patent does not teach the hierarchical ZSM-5 zeolite has a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite, Hamid Abdul et al. (Table 3: SA-6-30, SA-12-30, SA-24-30, SA-6-50, etc.) discloses the hierarchical ZSM-5 zeolites have mesopore volumes greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolites. In addition, Hamid Abdul et al. (Abstract) further discloses the large intraparticle mesoporosity enables materials to have wide structural functions owing to intensify accessibility and mass transport properties. One ordinary skilled in the art would have been motivated to modify the `585 patent to have wide structural functions owing to intensify accessibility and mass transport properties, having a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite. In terms of motivation to combine the references, the Fed. Cir Court have repeatedly held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017) (123 USPQ2d starting 1141 at 1143-1144). In considering all factors as a whole, the combined prior art references would have render instant claims 11-12, and 14-17 obvious. The rejection is maintained.
The following rejections are necessitated by the amendment filed 05/29/2026:
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 11-12, 14-17, and 21-22 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 pre-AIA the applicant regards as the invention.
Specifically, amended claim 11 contains the phrase “ ..the hierarchical mesoporous ZSM-5 zeolite has a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite”. Since “the total pore volume of the hierarchical mesoporous ZSM-5 zeolite” should have the same meaning as “mesopore volume of the hierarchical mesoporous ZSM-5 zeolite”, it is not clear how it is possible for the hierarchical mesoporous ZSM-5 zeolite can have a mesopore volume equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite. According to the present specification [00103], the hierarchical mesoporous ZSM-5 zeolite may have a mesopore volume that is greater than a micropore volume of the hierarchical mesoporous ZSM-5 zeolite. This is a confusing description. According to the International Union of Pure and Applied Chemistry (IUPAC), a micropore is a cavity or channel in a material with a pore diameter of less than 2 nm; while a mesoporous pore diameter refers to the width of the empty spaces (pores) within a solid material that fall between 2 and 50 nanometers (nm). It is not clear how the hierarchical mesoporous ZSM-5 zeolite can also contain “a micropore volume”. Does “the total pore volume of the hierarchical mesoporous ZSM-5 zeolite” of claim 11 include both “a micropore volume” and “a mesopore volume”? The metes and bounds of claim 11 are not clear. Therefore, claim 11 is indefinite. Claims 12, 14-17, and 21-22 depending on claim 11 are rejected accordingly.
Claim Rejections - 35 USC § 103 (revised)
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 11-12, 14-17, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 10,350,585 (“the `585 patent”) to Al-Herz et al. in view of Hamid Abdul et al., Journal of the Korean ceramic society, (2023), 60(2), 344-356 (published on March 1st, 2023).
Applicant’s claim 11 is drawn to a cracking catalyst for steam enhanced catalytic cracking of hydrocarbons, the cracking catalyst comprising a hierarchical mesoporous ZSM-5 zeolite impregnated with manganese, zirconium, or manganese and zirconium, where the the hierarchical mesoporous ZSM-5 zeolite has a mesopore volume of at least 0.30 cubic centimeters per gram (cm3/g); and the hierarchical mesoporous ZSM-5 zeolite has a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite.
Determination of the scope and content of the prior art (MPEP §2141.01)
The `585 patent (Abstract) discloses zirconium-substituted hierarchical zeolite compositions and methods of preparing such catalytic compositions, and methods of catalytic cracking of hydrocarbon feedstocks using these zirconium-substituted hierarchical zeolite compositions. The `585 patent (col. 1, lns. 50-54) discloses to control coke formation and to reduce diffusion limitations of reactant and product hydrocarbons, micro/mesoporous-crystalline zeolites were produced with low diffusion resistance and greater external surface area. The `585 patent (col. 7, lns. 50-54) discloses the hierarchical zeolites-based FCC (fluid catalytic cracking) catalysts are ZSM-5 zeolites impregnated with zirconium and used in the HS-FCC reactions. In addition, the `585 patent (col. 7, ln. 56 - col. 8, ln. 2) discloses cracking activity depends both on acidity of zeolites and on their pore size distribution, the metal-substituted mesoporous zeolites are robust catalysts with improved hydrothermal stability and acidity, and after modification, the mesopores in the metal-substituted zeolite compositions have a pore diameter ranging from 2 to 4 nanometers with mesopore volume ranging from 0.26 cubic centimeters per gram (cc/g or cm3/g). Furthermore, the `585 patent (claim 10, and col. 9, lns. 55-58) discloses the zirconium-substituted zeolite is further impregnated at least a portion of hierarchical zeolite composition with one or more of phosphorous, lanthanum, and manganese, and the weight of phosphorus, or lanthanum, or manganese oxides that can impregnate the calcined hierarchical Zr-ZSM-5 can range from 2 to 5 weight percent (wt%) of the calcined hierarchical Zr-ZSM-5 composition.
Hamid Abdul et al. (Table 3) discloses large intraparticle mesoporosity of hierarchical ZSM-5 samples synthesized from Kaolin, and the mesopore volume of SA-6-30 is 0.519 cm3/g, the mesopore volume of SA-12-30 is 0.499 cm3/g, SA-24-30 is 0.475 cm3/g, etc. Hamid Abdul et al. (Abstract) further discloses the large intraparticle mesoporosity enables materials to have wide structural functions owing to intensify accessibility and mass transport properties; and the optimum aging condition produced intracrystalline mesopore ZSM-5 with the largest mesoporous surface area of 303.067 m2/g and 0.596 cm3/g of pore volume.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The differences between claim 11 and the `585 patent is that the prior art does not teach “the cracking catalyst (treated ZSM-5 zeolite) has a mesopore volume of at least 0.30 cm3/g”. Instead, the `585 patent (col. 7, ln. 56 - col. 8, ln. 2) teaches the mesopores in the metal-substituted zeolite compositions (catalyst) have a pore diameter ranging from 2 to 4 nm with mesopore volume ranging from 0.26 cm3/g. The term “range from” can be interpreted as “at least”. In addition, the `585 patent does not teach “the hierarchical ZSM-5 zeolite has a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite”.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, the instant claim 11 would have been obvious over the `585 patent because the same prior art teaches the metal (zirconium)-substituted zeolite compositions (catalyst) has a mesopore volume ranging from 0.26 cm3/g, interpreted as at least 0.26 cm3/g. One ordinary skilled in the art would have understood that a mesopore volume ranging from 0.26 cm3/g would include the claimed limitation of “a mesopore volume of at least 0.30 cm3/g”. In addition, the difference is also taught and/or suggested by Hamid Abdul et al. Hamid Abdul et al. (Abstract) teaches large intraparticle mesoporosity enables materials to have wide structural functions owing to intensify accessibility and mass transport properties; and the optimum aging condition produced intracrystalline mesopore ZSM-5 with the largest mesoporous surface area of 303.067 m2/g and 0.596 cm3/g of pore volume.
In terms of the `585 patent does not teach “the hierarchical ZSM-5 zeolite has a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite”, Hamid Abdul et al. (Table 3: SA-6-30, SA-12-30, SA-24-30, SA-6-50, etc.) discloses the hierarchical ZSM-5 zeolites have mesopore volumes greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolites. In addition, Hamid Abdul et al. (Abstract) further discloses the large intraparticle mesoporosity enables materials to have wide structural functions owing to intensify accessibility and mass transport properties. One ordinary skilled in the art would have been motivated to modify the `585 patent to have wide structural functions owing to intensify accessibility and mass transport properties, having a mesopore volume greater than or equal to 50% of the total pore volume of the hierarchical mesoporous ZSM-5 zeolite. In terms of motivation to combine the references, the Fed. Cir Court have repeatedly held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017) (123 USPQ2d starting 1141 at 1143-1144). In considering all factors as a whole, the combined prior art references would have render instant claims 11-12 and 21 obvious.
In terms of claim 14 where the manganese is present as manganese oxide and the cracking catalyst comprises from 1 wt.% to 5 wt.% manganese oxide based on the total weight of the cracking catalyst, the `585 patent (col. 9, lns. 55-58) discloses the zirconium-substituted zeolite is further impregnated at least a portion of hierarchical zeolite composition with one or more of phosphorous, lanthanum, and manganese, and the weight of phosphorus, or lanthanum, or manganese oxides that can impregnate the calcined hierarchical Zr-ZSM-5 can range from 2 to 5 weight percent (wt %) of the calcined hierarchical Zr-ZSM-5 composition.
In terms of claim 15 where the zirconium is present as zirconium oxide and the cracking catalyst comprises from 1 wt.% to 5 wt.% zirconium oxide based on the total weight of the cracking catalyst, the `585 patent (col. 5, lns. 44-48) discloses the zirconium-substituted zeolite contains zirconium in the range of 0.1% to 5%, or from 0.2% to 4%, or from 0.3% to 3%, as a weight percentage of zirconium in terms of the total zeolite.
In terms of claim 16 further comprising a beta zeolite, the `585 patent (col. 4, ln. 62) discloses the hierarchical zeolites include Beta-SBA-15, a specialized micro-mesoporous composite material that combines Beta zeolite crystals with the SBA-15 mesoporous structure.
In terms of claim 17 further comprising a beta zeolite, the `585 patent (col. 4, ln. 62) discloses the hierarchical zeolites include Beta-SBA-15, a specialized micro-mesoporous composite material that combines Beta zeolite crystals with the SBA-15 mesoporous structure.
In terms of claim 22 wherein the hierarchical mesoporous ZSM-5 zeolite has a mesoporous BET surface area greater than or equal to 50% of the total BET surface area of the hierarchical mesoporous ZSM-5 zeolite, Hamid Abdul et al. (Table 3: SA-6-30, SA-12-30, SA-24-30, SA-6-50, etc.) discloses the hierarchical ZSM-5 zeolite has a mesoporous BET surface area greater than or equal to 50% of the total BET surface area of the hierarchical mesoporous ZSM-5 zeolite.
Conclusions
Claims 1, 3-12, and 14-22 are rejected.
Claims 1, 3-10, and 18-20 are withdrawn.
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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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