DETAILED ACTION
Response to Amendment
Examiner acknowledges Applicant’s response filed 15 December 2025 containing amendments to the claims and remarks.
Claims 1 and 3-25 are pending. Claim 25 is newly added. Claims 13-24 are withdrawn as being directed to nonelected inventions. Consequently, only claims 1, 3-12, and 25 are pending for examination.
The previous rejection of claim 1 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claim.
The previous rejection of claims 1 and 3-12 under 35 U.S.C. 103 is maintained. Likewise, newly added claim 25 is rejected under 35 U.S.C. 103. The rejection follows.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed 17 December 2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the non-patent literature documents identified with “cite no” of “2,” “10,” “12,” and “19” could not be found in the file; and those identified with “cite no” of “20,” “25,” and “26” did not list or exhibit any publication date. It has been placed in the application file, but the noted references have not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
Claims 1, 3-12, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ojo (US 9,920,260) in view of Miller (US 5,135,638).
With respect to claims 1, 3-6, and 9, Ojo discloses a molecular sieve belonging to the ZSM-48 family of zeolites (see Ojo, column 3, lines 1-3), wherein the molecular sieve comprises a silicon oxide to aluminum oxide mole ratio of 40 to 220 (see Ojo, column 3, lines 13-14), at least 70% polytype 6 of the total ZSM-48-type material in the molecular sieve (see Ojo, column 3, lines 17-18), an additional EUO-type molecular sieve phase in an amount between 0 and 3.5 percent by weight of the total molecular sieve (see Ojo, column 3, lines 26-29); wherein the molecular sieve has a morphology characterized as polycrystalline aggregates comprising crystallites collectively having an average aspect ratio of between 1 and 8 (see Ojo, column 3, lines 30-34). The molecular sieve may further comprise palladium or platinum (see Ojo, column 8, lines 36-38).
Ojo does not explicitly disclose wherein the molecular sieve additionally comprises magnesium.
However, Ojo discloses wherein the molecular sieve may be used for wax isomerization (dewaxing) (see Ojo, column 8, lines 43-44; and claims 16 and 17) and may comprise a Group 2 element (see Ojo, column 5, lines 51-52); the Group 2 element being present at a ratio of 0.05 to 1.0 with respect to silicon dioxide (see Ojo, Table 1). In this regard, Miller discloses a molecular sieve catalyst useful for isomerizing a waxy feed (see Miller, column 1, lines 10-17), wherein a magnesium component (Group II metal) is incorporated therein for the purpose of increasing selectivity for isomerization over cracking (see Miller, column 13, lines 29-33).
Therefore, the person having ordinary skill in the art would have been motivated to modify the molecular sieve of Ojo to incorporate magnesium as the Group 2 element, such modification increasing selectivity for isomerization, e.g. when used for wax isomerization.
Finally, the person having ordinary skill in the art would have had a reasonable expectation of success in modifying the molecular sieve of Ojo as described above because Ojo and Miller are both directed to molecular sieves that may be used for wax isomerization (dewaxing).
With respect to claims 7, 8, and 25, the claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Here, the record is devoid of any unobvious difference in the claimed molecular sieve per se over that of Ojo. This is especially true given the substantial overlap of Ojo’s disclosure with the claimed molecular sieve as discussed supra at paragraph 10.
With respect to claims 10-12, inasmuch as Ojo discloses substantially the same molecular sieve recited in the claims (see discussion supra at paragraph 10), then the molecular sieve of Ojo would necessarily (inherently) exhibit the same characteristics of that claimed, including ammonia desorbing and FTIR vibrational modes. When an examiner has reason to believe that the functional language asserted to be critical for establishing novelty in claimed subject matter may in fact be an inherent characteristic of the prior art, the burden of proof is shifted to Applicant to prove that the subject matter not shown in the prior art does not possess the characteristics relied upon. See MPEP § 2112(V) (citing In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980)).
Response to Arguments
Applicant’s arguments filed 15 December 2025 have been fully considered but they are not persuasive.
Examiner understands Applicant’s arguments to be:
While Miller generally refers to the possible use of Group IIA metals such as magnesium and calcium, there is no apparent mention of using magnesium as a component of the reaction mixture used to prepare a molecular sieve according to Ojo or according to the claims at issue. Instead, Miller appears to only disclose the possible use of a magnesium compound as an admixture combined with a pre-formed extrudate catalyst as outlined in Miller’s example 8.
Miller’s method for incorporating magnesium with an extrudate catalyst results in a different material than the use of a reaction mixture comprising magnesium according to the claims at issue.
With respect to Applicant’s first and second arguments, Miller indicates that the various reaction components, including metal oxides (e.g., magnesia) can be composited with the molecular sieve material “in the form of a cogel” (see Miller, column 13, lines 23-33; column 14, lines 39-47; and column 15, lines 3-11).
Conclusion
THIS ACTION IS MADE FINAL. 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 Randy Boyer whose telephone number is (571) 272-7113. The examiner can normally be reached Monday through Friday from 10:00 A.M. to 7:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Randy Boyer/
Primary Examiner, Art Unit 1771