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 .
Response to Arguments
Applicant's arguments filed August 19th, 2026 have been fully considered but they are not persuasive.
Applicant argues on Page 5, lines 12-26 that Khanmamedova’s method seeks catalytic benefits from germanium incorporation, whereas germanium is used in the claimed method as a crystal growth modifier only. This is not convincing because the Si/Ge ratio in Khanmamedova’s reaction mixture and product fall within the claimed ratios of at least 10 and at least 100, respectively (Khanmamedova, Table 3, Example 2, “Mixture composition” and “Final catalyst composition”, 29.83 and 243, respectively). The amount of Ge in Khanmamedova’s zeolites does not differ from the claimed range, regardless of how that amount of Ge is described with respect to its effect on catalysis, and correspondingly does not amount to an unexpected result. The rejection of claims 1-2, 4-5 and 7 under 35 U.S.C. 102(a)(1) is nonetheless withdrawn due to the subject matter of claim 3, as presented on February 17th, 2026, being incorporated into the amended claim 1, and is replaced by a rejection under 35 U.S.C. 103.
Applicant argues on Page 6, line 1 – Page 7, line 13 that the amended claim 1 is non-obvious over Khanmamedova in view of Verdujin. Applicant argues that Khanmamedova and Verdujin does not teach the “nano-sized zeolites” isolated from the synthesis mixture as the claims require having a ratio of silica to germanium in the nano-sized zeolites after washing of at least 100. This is not convincing because Khanmamedova already teaches a silica to germanium ratio of 243 in the final catalyst (Khanmamedova, Table 3, Example 2, “Final catalyst composition”). The presence of “nano-sized zeolites” is not dependent on the use of seeds, as argued on Page 5, lines 15-20 of the Office Action dated March 24th, 2026 and evidenced by Paragraph [0064] and Figs. 6C-D of the instant Specification. Furthermore, Verdujin teaches nano-sized seed crystals of an MFI-zeolite in the synthesis of the MFI-zeolite (Verdujin, Col. 3, lines 29-67). The zeolite being synthesized is the most obvious choice of seed crystal when incorporating seeds because it is already on hand, can readily be made into seeds by simple ball-milling, and is already known to be compatible with the crystal structure of the target compound. Even though Verdujin states that the seed crystals need not be of the same composition as the desired zeolite crystals, Verdujin does not teach away from this obvious choice.
Furthermore, even though the particles produced in Verdujin’s are not all “nano-sized zeolites”, Verdujin does, in fact, prescribe “nano-sized zeolites” having an average diameter of 100 nm or less as seeds (Verdujin, Col. 3, lines 29-37).
With respect to Applicant’s argument that Verdujin fails to teach or suggest the resulting “nano-sized zeolites” which are isolated from the synthesis mixture, the claim does not require that the “nano-sized zeolites” are isolated from the synthesis mixture, only that zeolites are isolated from the synthesis mixture, and that the zeolites comprise “nano-sized zeolites”. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Applicant is arguing that Verdujin does not teach or suggest “adding nano-sized zeolite crystals comprising germanium to the synthesis mixture as seed crystals”, but Verdujin is used to motivate adding nano-sized zeolite crystals — the presence of germanium is only from using Khanmamedova’s Ge-ZSM-5 as the seed material.
Whether or not Khanmamedova incorporates seeds, Khanmamedova isolates zeolites comprising “nano-sized zeolites”. The following passages from the instant Specification and Drawings demonstrate that this would be the case:
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To reiterate, Khanmamedova incorporates addition of GeO2 in the synthesis of “Ge-ZSM-5” (Khanmamedova, Col. 9, lines 1-25), so the same crystallites of “nano-sized zeolites” would be present.
Applicants arguments on Page 7, line 14 – Page 8 of Remarks regarding claims 6 and 9-10 are not convincing because they rely on the same arguments discussed above with respect to the amended claim 1.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Khanmamedova (U.S. Patent No. 10,207,255, 2019) in view of Verdujin (U.S. Patent No. 5,672,331, 1997).
Regarding claim 1, Khanmamedova teaches a method for synthesizing zeolites (Khanmamedova, Col. 9, lines 1-18, Table 3, Example 2), comprising:
preparing a synthesis mixture comprising silica (Khanmamedova, Col. 9, line 7, Ludox AS-40), aluminum (Khanmamedova, Col. 9, line 4, sodium aluminate) and germanium (Khanmamedova, Col. 9, line 3, germanium dioxide),
wherein a ratio of silica to germanium in the synthesis mixture is 29.83 (Khanmamedova, Table 3, Example 2, “Mixture composition”);
heating the synthesis mixture to a temperature of 160°C (Khanmamedova, Col. 9, lines 11-12);
allowing zeolites to form in the synthesis mixture (Khanmamedova, Col. 9, lines 14-16, “…to result in a Ge-ZSM-5 zeolite.”);
isolating zeolites from the synthesis mixture (Khanmamedova, Col. 9, lines 12-14, filtered from the mother liquor); and
washing the zeolites isolated from the synthesis mixture (Khanmamedova, Col. 9, lines 12-14, washed with deionized water),
wherein the zeolites are MFI type (Khanmamedova, Col. 9, lines 16-17), and wherein a ratio of silica to germanium in the nano-sized zeolites after washing is 243 (Khanmamedova, Table 3, Example 2, “Final catalyst composition”).
Khanmamedova does not explicitly teach that the zeolites comprise nano-sized zeolites. However, it has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps. It would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”). In the instant case, Khanmamedova performs the claim’s method steps, so it would be unreasonable to expect a result different than the zeolites comprising nano-sized zeolites. Furthermore, the instant Specification explicitly states that GeO2 addition in ZSM-5 synthesis leads to attachment of nano-sized (<100 nm) crystals on the surface of core crystals (Specification, [0064]). Thus, reciting that the zeolites comprise “nano-size” zeolites is a mere recognition of latent properties already present in Khanmamedova’s method for synthesizing zeolites, wherein GeO2 is added in a ZSM-5 synthesis (Khanmamedova, Col. 9, lines 1-18), and does not render the method again patentable.
Khanmamedova does not teach a step of adding nano-sized zeolite crystals comprising germanium to the synthesis mixture as seed crystals. However, Verdujin teaches adding nano-sized seed crystals of an MFI-zeolite in the synthesis of an MFI-zeolite (Verdujin, Col. 3, lines 29-67).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have added nano-sized zeolite crystals to the synthesis mixture as seed crystals, as Verdujin teaches that this permits control over the zeolite crystal size and promotes crystal uniformity (Verdujin, Col. 3, lines 59-62). That the seed crystals would comprise germanium is equally obvious, as Verdujin teaches that the seed crystals can be obtained by ball milling larger zeolite crystals (Verdujin, Col. 3, lines 30-34). Selecting zeolite crystals produced by Khanmamedova, which comprise germanium, as crystals to be ball milled would yield the predictable effect of producing the desired seed crystals without the need for a separate synthetic process. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (see MPEP 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143.B.).
Regarding claim 2, modified Khanmamedova renders the method of claim 1 obvious, as discussed above, wherein the synthesis mixture further comprises tetrapropylammonium hydroxide as an organic structure directing agent (Khanmamedova, Col. 9, lines 6-7, TPAOH; Col. 4, lines 62-63; TPAOH is tetra-n-propyl ammonium hydroxide and is a structure-directing agent).
Regarding claim 4, modified Khanmamedova renders the method of claim 1 obvious, as discussed above, further comprising a step of annealing the nano-sized zeolites after isolating (Khanmamedova, Col. 9, lines 14-16, calcined at 550°C for 10 hours; Col. 5, lines 24-26, “The zeolite can be calcined, e.g., to burn off one or more of the zeolite structure directing agents and any other decomposable materials that may be present.” The calcining step reads on “annealing” in accordance with the Claim Interpretation section above).
Regarding claim 5, modified Khanmamedova renders the method of claim 1 obvious, as discussed above, further comprising a step of calcining the nano-sized zeolites after isolating to remove organic templates and produce calcined zeolites (Khanmamedova, Col. 9, lines 14-16, calcined at 550°C for 10 hours; Col. 5, lines 24-26, “The zeolite can be calcined, e.g., to burn off one or more of the zeolite structure directing agents and any other decomposable materials that may be present.”).
Regarding claim 7, modified Khanmamedova renders the method of claim 1 obvious, as discussed above, wherein a ratio of silica to aluminum in the nano-sized zeolites is 30:1 (Khanmamedova, Table 3, Example 2, Si:Al2 molar ratio of 60 corresponds to 30:1 silica:Al atoms).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Khanmamedova (U.S. Patent No. 10,207,255, 2019) in view of Verdujin (U.S. Patent No. 5,672,331, 1997), as applied to claim 5 above, and further in view of Seddon (U.S. Patent No. 4,675,460, 1987).
Regarding claim 6, Khanmamedova teaches the method of claim 5, as discussed above, but does not teach a step of ion exchanging the calcined zeolites to produce proton-form nano-sized zeolites. However, Seddon teaches that ion exchanging ZSM-5 zeolites to produce proton-form zeolites (Seddon, Col. 2, lines 28-43).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have ion-exhanged Khanmamedova’s calcined zeolites to produce proton-form zeolites, as Seddon teaches that performing this step on Khanmamedova’s zeolite type (ZSM-5) results in an extremely active catalyst for converting alcohols and/or ethers to higher hydrocarbons (Seddon, Col. 2, lines 28-43).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Khanmamedova (U.S. Patent No. 10,207,255, 2019) in view of Verdujin (U.S. Patent No. 5,672,331, 1997), as applied to claim 1 above, and further in view of Yang (U.S. 2015/0118150 A1).
Regarding claims 9-10, Khanmamedova teaches the method of claim 1, as discussed above, but does not explicitly teach a step of recovering germanium from the synthesis mixture after isolating the zeolites. However, Yang teaches a method of zeolite synthesis which re-uses the mother liquor in a series of sequential syntheses (Yang, [0010]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have re-used the synthesis mixture in Khanmamedova’s method, and thereby recovering germanium, as Yang teaches that doing so improves the overall yield of zeolite synthesis (Yang, [0010]). In doing so, germanium would be recovered within a zeolite produced in a subsequent batch, i.e., after both isolating and washing the zeolites in the claimed method.
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 ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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