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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-7 and 9-10 in the reply filed on February 17th, 2026 is acknowledged. The traversal is on the grounds that the inventions as claimed allegedly encompass overlapping subject matter and that there is allegedly not a serious search and/or examination burden for these inventions. This is not found persuasive because the inventions do not encompass overlapping subject matter, and there is a serious search and/or examination burden for these inventions for the reasons discussed on Page 2, line 12 - Page 5, line 6 of the Office Action dated January 29th, 2026. Applicant did not rebut these reasons in Remarks filed February 17th, 2026. Furthermore, the claim amendments submitted therewith do not overcome the search and/or examination burden because the product of Group II can be produced by methods other than the invention of Group I — washing and isolating steps are not required to synthesize the product.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 17th, 2026.
Claim Interpretation
Claim 4 recites a step of “annealing the nano-sized zeolites after isolating”. Cleveland (“Dictionary of Energy (Expanded Edition) - annealing”, 2009) defines “annealing” as “the sustained heating of a material, such as metal or glass, at a known high temperature, followed by a gradual cooling, in order to reduce hardness or brittleness, eliminate various stresses and weaknesses, or produce other desired qualities”. The term “annealing” is interpreted accordingly.
Claim 7 recites a limitation directed to “a ratio of silica to aluminum”. The Specification states that this is determined by EDX and is presented in units of “Si/Al” (Specification, Table 1). The recited ratio is therefore interpreted to be a molar ratio between Si atoms and Al atoms, rather than a silica to alumina (Al2O3) molar ratio.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4-5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khanmamedova (U.S. Patent No. 10,207,255, 2019).
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.
Regarding claim 2, Khanmamedova teaches the method of claim 1, 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, Khanmamedova teaches the method of claim 1, 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, Khanmamedova teaches the method of claim 1, 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, Khanmamedova teaches the method of claim 1, 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 Rejections - 35 USC § 103
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Khanmamedova (U.S. Patent No. 10,207,255, 2019), as applied to claim 1 above, and further in view of Verdujin (U.S. Patent No. 5,672,331, 1997).
Regarding claim 3, Khanmamedova teaches the method of claim 1, as discussed above, but 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.).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Khanmamedova (U.S. Patent No. 10,207,255, 2019), 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), 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
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736