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 without traverse of claims 1-10 in the reply filed on 1/08/2026 is acknowledged.
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.
Claims 1, 2, 4-7, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable by Yuan et al. (US 9738538B2), and further in view of Zones (US20180134571).
Regarding claim 1, Yuan et al. discloses a process of making a high-silica NaY zeolite having an FAU framework. Deionized water, activated silica, sodium aluminate, sodium hydroxide, and an organic structure directing agent is mixed. Crystallization is carried out at 80-110° C and the solid is recovered (page 3, line 13-39 49-59). Yuan does not disclose the use of 1,2-dimethyl-3-(3-methylbenzyl)imidazolium as the organic structure directing agent.
Zones discloses the use of 1,2-dimethyl-3-(3-methylbenzyl)imidazolium as a structure directing agent in the synthesis of a CIT-13 molecular sieve (page 1, paragraph 0008) (page 3, paragraph 0047).
It would have been obvious to one having ordinary skill in the art to substitute one of the structure directing agents taught in Yuan with 1,2-dimethyl-3-(3-methylbenzyl)imidazolium taught in Zones because they are both used as structure directing agents in zeolite synthesis.
Regarding claim 2, Yuan et al. discloses the high-silica zeolite having a SiO2/Al2O3 molar ratio of greater than 6 (page 3, line 62-65).
Regarding claim 4, Yuan et al. discloses a source of alumina that is sodium aluminate (page 3, line 49-54).
Regarding claim 5, Yuan et al. discloses an alkali metal cation that is sodium in sodium hydroxide (page 3, line 49-54).
Regarding claim 6, Yuan et al. in view of Zones discloses an organic structure directing agent that is in its chloride form (page 3, line 31-39).
Regarding claim 7, Yuan et al. discloses a reaction mixture that fulfills the range of molar ratios (page 5/6, Table 1, Example 1). It is understood that the substitution of the structure directing agent taught in Zones should not change the molar ratios taught in Yuan. A table is provided below showing how all the ratios were obtained.
SiO2/Al2O3
1.2/0.1 = 12
M/SiO2
2 mol of Na in 1 mol Na2O
0.32(2)/1.2 = 0.53
Q/SiO2
0.1/1.2 = 0.083
OH/SiO2
2 mol NaOH decomposes into one mol Na2O, one mole of OH in one mole of NaOH
2NaOH [Wingdings font/0xE0] Na2O + H2O
0.32(2)/1.2 = 0.53
H2O/SiO2
22/1.2 = 18
Regarding claim 9, Yuan et al. discloses the crystallization conditions are under autogenous pressure (page 3, line 22-26).
Regarding claim 10, Yuan et al. discloses drying the high-silica zeolite which is a form of treatment to remove part of the organic structure directing agent (page 3, line 27-30).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. in view of Zones as applied to claims 1, 2, 4-7, 9, and 10 above, and further in view of Kim et al. (“Zeolite materials prepared using silicate waste from template synthesis of ordered mesoporous carbon”).
Yuan et al. in view of Zones is applied as described above for claims 1, 2, 4-7, 9, and 10.
Regarding claim 3, Yuan et al. modified by Zones teaches that the silica source may be a silica sol or an orthosilicate but does not disclose that the source of silica is sodium silicate.
Kim et al. discloses that common silica sources employed in the preparation of zeolites include colloidal silica, tetraethylorthosilicate (TEOS), and sodium silicate (1. Introduction). Kim et al. further teaches that sodium silicates are especially preferred because of their low-cost and availability (1. Introduction).
It would have been obvious to one having ordinary skill in the art to further modify Yuan et al. by substituting the source of silica for sodium silicate taught by Kim et al. One of ordinary skill would have been motivated to substitute one functionally equivalent silica source for another, with the added benefit of choosing a low-cost and easily available one (sodium silicate). Because both sources of silica are conventional in zeolite synthesis process, one would have had reasonable expectation of success from the combination.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. in view of Zones as applied above for claims 1, 2, 4-7, 9, and 10.
Regarding claim 8, Yuan et al. does not disclose an example where are all molar ratios are satisfied. Using the same reaction mixture as claim 7, the Q/SiO2 ratio is 0.083 which is slightly out of range. If we use Yuan et al.’s range of ratios on page 3 line 42-45, Q/SiO2 has a range of 0.005-1; entirely encompassing the claimed range. It is understood that the substitution of the structure directing agent taught in Zones should not change the molar ratios taught in Yuan. The conversion of Yuan et al.’s ranges to the claimed ranges is below.
Q/SiO2 = (Q/Al2O3)/(SiO2/Al2O3)
Q/Al2O3 (0.1-6)
SiO2/Al2O3 (6-20)
Q/SiO2
0.1
6
0.017
0.1
20
0.005
6
6
1
6
20
0.3
The subject matter as a whole would have been obvious to one of ordinary skill in the art at the time of invention to select the portion of the prior art’s range which is within the range of the applicants’ claims because it has been held prima facie case of obviousness to select a value in a known range by optimization for the results. In re Aller, 105 USPQ 233. Additionally, the subject matter as a whole would have been obvious to one of ordinary skill in the art at the time invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ.
Response to Arguments
Applicant’s arguments with respect to claims 1-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant argues that Yuan et al. does not teach 1,2-dimethyl-3-(3-methylbenzyl)imidazolium as recited in the amended claims. The examiner agrees but new ground of rejection has been made in Zones (US20180134571).
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 DAVID A CALDERON whose telephone number is (571)272-9866. The examiner can normally be reached Monday-Friday 8-5PM.
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/DAVID ANDREW CALDERON/ /CHRISTINA A JOHNSON/ Supervisory Patent Examiner, Art Unit 1742