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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/17/2023 has been considered by the examiner.
Election/Restrictions
Claims 1-8, 15-17 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/18/2025.
Applicant’s election without traverse of claims 9-14 in the reply filed on 11/18/2025 is acknowledged.
Claim Objections
Claim 9 objected to because of the following informalities: The title of the invention is "Molecular Sieve Boron SSZ-121, its Synthesis and Use". However, boron SSZ-121 is not claimed. It is suggested that “boron SSZ-121” is added to the claim. Appropriate correction is required.
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 9-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6-11 of copending Application No. 18/325,404 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because regarding claim 9, copending application ‘404 claims a method of synthesizing a SSZ-121 molecular sieve the method comprising: (1) preparing a reaction mixture comprising: (a) a FAU framework type zeolite having a SiO2/Al2O3 molar ratio of 300 or greater; (b) a source of germanium; (c) a source of boron; (d) a structure directing agent comprising 1,3-bis(1-adamantyl)imidazolium cations (Q); (e) a source of fluoride ions; and (f) water; and (2) subjecting the reaction mixture to crystallization conditions sufficient to form crystals of the molecular sieve (claim 6).
Regarding the limitation “the molecular sieve of claim 4”, copending application ‘404 claims a SSZ-121 which meets the claim limitation “the molecular sieve of claim 4” since the X-ray diffraction pattern of claim 4 defines a SSZ-121 molecular sieve.
Regarding claim 10, copending application ‘404 claims wherein the reaction mixture has a composition, in terms of molar ratios, as follows: (SiO2+GeO2)/B2O3 ≥10
Q/(SiO2+GeO2) 0.10 to 1.00
F/(SiO2+GeO2) 0.10 to 1.00
H2O/(SiO2+GeO2) 2 to 10
(claim 7).
Regarding claim 11, copending application ‘404 claims wherein the reaction mixture has a composition, in terms of molar ratios, as follows: (SiO2+GeO2)/B2O3 15 to 20
Q/(SiO2+GeO2) 0.20 to 0.70
F/(SiO2+GeO2) 0.20 to 0.70
H2O/(SiO2+GeO2) 4 to 8
(claim 8).
Regarding claim 12, copending application ‘404 claims wherein the FAU framework type zeolite is zeolite Y (claim 9). Claim 9 is dependent upon claim 6 which claims a FAU framework type zeolite having a SiO2/Al2O3 molar ratio of 300 or greater.
Regarding claim 13, copending application ‘404 claims wherein the crystallization conditions include a temperature of from 100°C to 200°C (claim 10).
Regarding claim 14, copending application ‘404 claims wherein the reaction mixture has a molar ratio of Q/F in a range of from 0.8 to 1.2 (claim 11).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 9, 12-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 10-12 of U.S. Patent No. 11161750 in view of Chen et al (US 20180093255 A1, hereinafter Chen ‘255) and Chen "Reforming with novel borosilicate molecular sieve catalyst".
Patent 11161750 claims a method of synthesizing the molecular sieve of claim 4, the method comprising: (1) preparing a reaction mixture comprising: (a) a FAU framework type zeolite; (b) a source of germanium; (c) a structure directing agent comprising 1,3-bis(1-adamantyl)imidazolium cations (Q); (d) a source of fluoride ions; and (e) water; and (2) subjecting the reaction mixture to crystallization conditions sufficient to form crystals of the molecular sieve (claim 7). The X-ray diffraction pattern of claim 4 in ‘750 is identical to the X-ray diffraction pattern of claim 4 in the instant application.
‘750 does not claim “having a SiO2/Al2O3 molar ratio of 300 or greater” or “(c) a source of boron”.
Chen ‘255 discloses a method for making an aluminosilicate zeolite comprising reacting a synthesis gel comprising at least one zeolite, a fluoride source, a structure directing agent, and an optional additional silica source at a temperature of at least 100° C until crystals of the zeolite with a desired framework form ([0026]). Chen ‘255 further discloses the zeotype FAU is used for a portion or all of the alumina present in the final composition ([0007]).
Chen ‘255 further discloses the SDA, at least one zeolite… can be mixed as prepared as a synthesis gel ([0054]). Preferably the at least one zeolite is zeolite Y, more preferably zeolite Y has an SAR (silica to alumina ratio) of about 12 to 500 ([0054]).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, the range taught by Chen ‘255 (about 12 to about 500) overlaps with the claimed range (300 or greater). Therefore, the range in Chen ‘255 renders obvious the claimed range.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the zeolite to have SiO2/Al2O3 molar ratio of 300 or greater in the method of Patent 11161750 as it is a more preferable embodiment taught by Chen ‘255.
Chen discloses the use of large pore Borosilicate Molecular Sieves Catalysts (BMSC) (Boron infused Molecular Sieve) in reforming catalyst (a conversion catalyst), wherein said large pore boron infused molecular sieves produced an improved selectivity of BTX products (aromatic products) over conventional non-zeolitic catalyst (non- molecular sieve, such as a Pt-Re/A1203/Cl catalyst) (see Chen, abstract, pages 205-206, table 4, figure 1, page 210, table 6 page 212). Therefore, in view of Chen, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the invention, to modify the large pore molecular sieve disclosed by '750 with a boron metal (a Group 13 metal), as '750 discloses that the large pore molecular sieves can be supplement with an active metal from the groups 2 to 15 and Chen discloses wherein said large pore boron infused molecular sieves produced an improved selectivity of BTX products over conventional non-zeolitic catalyst.
The combination of the disclosed art would have been obvious to one to one with ordinary skill in the art, pursuing a more aromatic selective catalyst, as BTX products are highly desirable and valuable products in petroleum refining plants.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE L QUIST whose telephone number is (571)270-5803. The examiner can normally be reached Mon-Fri 8:30-5:00.
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, Sally Merkling can be reached at (571) 272-6297. 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.
/N.L.Q./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738