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 without traverse of Group II, claims 5-8 in the reply filed on May 18th, 2026 is acknowledged.
Claims 1-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 May 18th, 2026.
Claim Interpretation
Claim 5 recites the limitation “forming a carbon layer on the surface of the zeolite” in line 4. The instant Specification states, “The carbon layer may be formed by reacting an organosilane compound with a hydroxyl group on the surface of the zeolite. The organosilane compound may comprise octadecyltrichlorosilane” (Specification, Page 7, lines 7-10). The Specification thereby indicates that an organosilane reacted at the surface of the zeolite amounts to a carbon layer, although organosilanes are not themselves elemental carbon. Any carbon-containing layer is therefore interpreted to read on “a carbon layer”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Similarly, claim 5 recites the limitation “mixing and grinding the zeolite having the carbon layer with a metal catalyst” in lines 5-6. The instant Specification states, “The metal catalyst may comprise vanadium (V), and the zeolite may comprise a Y zeolite” on Page 7, lines 17-18, and sets forth an inventive example where vanadium is in the form of V2O5 on Page 8, lines 7-16. As with carbon, the Specification thereby indicates that a “metal catalyst” is not limited to metal in its elemental form. Any metal-containing catalyst is therefore interpreted to read on “a metal catalyst”.
Claims 5-8 recite in their preamble the limitation, “manufacturing method of a catalyst for removing nitrogen oxides” (emphasis added). The phrase ‘for removing nitrogen oxides’ is a statement of the intended use of the invention and is not given patentable weight when interpreting the claims. See MPEP 2111.02, stating, "If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction."
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.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujiwara (JP 6338218 B2, 2018) (the translation provided with the attached original document is referenced below).
Regarding claim 5, Fujiwawa teaches a manufacturing method of a catalyst for removing nitrogen oxides (Fujiwara, [0033]-[0037]) comprising:
preparing a zeolite (Fujiwara, [0034], zeolite beta was dried at 150°C for 3 hours);
forming a carbon layer on the surface of the zeolite (Fujiwara, [0034], modified with 1,4-bis(hydroxydimethylsilyl)benzene to form organic group-modified zeolite); and
mixing and grinding the zeolite with a metal catalyst (Fujiwara, [0037], mixed with copper-zinc-aluminum catalyst in agate mortar to obtain a composite catalyst).
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujiwara (JP 6338218 B2, 2018) (the translation provided with the attached original document is referenced below), as applied to claim 5 above, and further evidenced by Bonaccorsi (“Organosilanes functionalization of alumino-silica zeolites for water adsorption applications”, 2016).
Regarding claim 7, Fujiwara teaches the manufacturing method of a catalyst for removing nitrogen oxides of claim 5, as discussed above, wherein the forming of the carbon layer comprises providing an organosilane compound to the zeolite (Fujiwara, [0034], modified with 1,4-bis(hydroxydimethylsilyl)benzene to form organic group-modified zeolite). Fujiwara does not explicitly teach that the organosilane compound reacts with a hydroxyl group on the surface of the zeolite. However, Bonaccorsi teaches that organosilanes react with hydroxyl groups on zeolite surfaces to form such linkages (Bonaccorsi, Fig. 3, Page 114, Col. 2, Paragraph 4, “Silanols condense with hydroxyl groups on the zeolite surfaces according to the scheme in Fig. 3.” Fujiwara’s reagent 1,4-bis(hydroxydimethylsilyl)benzene is in a silanol form and would therefore be expected to condense with surface zeolite hydroxyl groups.). Therefore, despite Fujiwara’s silence to the exact reaction between the organosilane compound and the zeolite surface, this is an implicit feature of Fujiwara’s method. See MPEP 2112.I, citing, e.g., Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (stating that “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”). In the instant case, recognizing the latent property of the organosilane reacting with zeolite hydroxyl groups does not distinguish the instant claim from Fujiwara’s method, even though Fujiwara is silent to this particular property.
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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Song (“Simple physical mixing of zeolite prevents sulfur deactivation of vanadia catalysts for NOx removal”, 2021) in view of Kilmartin (U.S. 2020/0172405 A1).
Regarding claim 5, Song teaches a manufacturing method of a catalyst for removing nitrogen oxides (Song, Page 6, Col. 2, Paragraph 2 - Page 7, Col. 1, Paragraph 4) comprising:
preparing a zeolite (Song, Page 6, Col. 2, Paragraph 2, Y zeolite (FAU structure, Si/Al2 = 5, 12, 30, 60) is used, which would necessitate its preparation); and
mixing and grinding the zeolite with a metal catalyst (Song, Page 6, Col. 2, Paragraph 2, “The VWTi was mixed with various zeolites by grinding in a mortar.”).
Song does not teach forming a carbon layer on the surface of the zeolite, or therefore that the zeolite which is mixed and ground with a metal catalyst has a carbon layer. However, Kilmartin teaches the modification of a zeolite by forming a carbon layer on its surface (Kilmartin, [0127], irreversible deposition of aminosilane moiety on the surface of the zeolite by reaction with 3-aminopropylsilane hydrolysate).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have formed a carbon layer on the surface of the zeolite as taught by Kilmartin (Kilmartin, [0127]), as Kilmartin teaches that doing so advantageously increases the zeolite’s NOx release temperature and ultimately decreases NOx slippage from an exhaust system (Kilmartin, [0144]). Additionally, Kilmartin teaches that the zeolite modification advantageously decreases backpressure relative to catalysts with unmodified zeolites (Kilmartin, [0107]). A person having ordinary skill in the art would have been motivated to realize these advantages by applying Kilmartin’s surface modification, forming a carbon layer on the zeolite surface, to Song’s method.
Because it would have been obvious to form a carbon layer on the surface of the zeolite, it would also have been obvious for the zeolite which is mixed and ground with a metal catalyst to have a carbon layer — this would be the natural result of incorporating Kilmartin’s zeolite surface modification into Song’s manufacturing method.
Regarding claim 6, modified Song renders the manufacturing method of a catalyst for removing nitrogen oxides of claim 5 obvious, as discussed above, wherein the metal catalyst comprises vanadium (V) (Song, Page 6, Col. 2, Paragraph 2, V2O5-WO3-TiO2 catalyst), and the zeolite comprises a Y zeolite (Song, Page 6, Col. 2, Paragraph 2, Y zeolite (FAU structure, Si/Al2 = 5, 12, 30, 60)).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Song (“Simple physical mixing of zeolite prevents sulfur deactivation of vanadia catalysts for NOx removal”, 2021) in view of Kilmartin (U.S. 2020/0172405 A1), as applied to claim 5 above, and further evidenced by Bonaccorsi (“Organosilanes functionalization of alumino-silica zeolites for water adsorption applications”, 2016).
Regarding claim 7, modified Song renders the manufacturing method of a catalyst for removing nitrogen oxides of claim 5 obvious, as discussed above, wherein the forming of the carbon layer comprises providing an organosilane compound to the zeolite (Kilmartin, [0127], 3-aminopropylsilane hydrosylate). With respect to the surface reaction between the zeolite and the organosilane compound, Kilmartin does not explicitly teach that the organosilane compound reacts with a hydroxyl group on the surface of the zeolite but does teach that the organosilane is anchored to the zeolite in a Z-O-Si fashion (Kilmartin, [0078]). Bonaccorsi further elucidates that organosilanes react with hydroxyl groups on zeolite surfaces to form such linkages (Bonaccorsi, Fig. 3, Page 114, Col. 2, Paragraph 4, “Silanols condense with hydroxyl groups on the zeolite surfaces according to the scheme in Fig. 3.” Kilmartin’s reagent 3-aminopropylsilane hydrosylate is in a silanol form and would therefore be expected to condense with surface zeolite hydroxyl groups.). Therefore, despite Kilmartin’s silence to the exact reaction between the organosilane compound and the zeolite surface, this is an implicit feature that would be present when applying Kilmartin’s surface modification to Song’s method. See MPEP 2144.01, stating, “’[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.’ In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)”. [See also MPEP 2112, stating, “The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103”.]
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Song (“Simple physical mixing of zeolite prevents sulfur deactivation of vanadia catalysts for NOx removal”, 2021) Kilmartin (U.S. 2020/0172405 A1), Bonaccorsi (“Organosilanes functionalization of alumino-silica zeolites for water adsorption applications”, 2016), Fujiwara (JP 6338218 B2, 2018) (see the attached machine translation), Yeganeh (U.S. 2011/0232493 A1), and Pengpanich (WO 2016/099408) are considered to be the closest prior art to the instant claims.
Regarding claim 8, Fujiwara teaches, and modified Song renders obvious the manufacturing method of a catalyst for removing nitrogen oxide of claim 7, as discussed above, wherein the organosilane compound comprises 1,4-bis(hydroxydimethylsilyl)benzene in the case of Fujiwara (Fujiwara, [0034]) and 3-aminopropylsilane hydrosylate in the case of modified Song (Kilmartin, [0127]), which each differ from the claimed octadecyltrichlorosilane.
Yeganeh teaches surface modification of zeolites by reaction with octadecyltrichlorosilane (Yeganeh, [0048]) and teaches further that zeolite Y is a suitable zeolite to use (Yeganeh, [0035]). However, Yeganeh’s motivation is unrelated to catalysis and is directed to protecting the zeolite surface from reaction with a heating or cooling fluid (Yeganeh, [0013]). It would therefore not be obvious to apply octadecyltrichlorosilane as taught by Yeganeh as the organosilane of the instant claim.
Pengpanich teaches that octadecyltrichlorosilane is a suitable agent to improve zeolite catalyst stability in cumene production by alkylation of benzene with isopropyl alcohol (Pengpanich, Page 4, lines 14-15 and 27-29), where zeolite Y is a suitable catalyst (Pengpanich, Page 5, lines 1-3). However, because alkylation of benzene with isopropyl alcohol is completely different from methanol synthesis (in the case of Fujiwara) and from removing nitrogen oxides (in the case of modified Song), and the conditions of benzene alkylation would not be expected to be similar to those of methanol synthesis of removing nitrogen oxides, a person having ordinary skill in the art could not apply Pengpanich’s teaching to make a catalyst for either Fujiwara’s or Song’s purposes with a reasonable expectation of success, and it would not be obvious to do so.
Because none of the cited prior art references, alone or together, teach or suggest that octadecyltrichlorosilane would be a suitable organosilane for modifying the zeolite surface in a catalyst produced by the method of claim 7, the claim contains allowable subject matter.
Conclusion
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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