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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5, in the reply filed on 06/26/2026 is acknowledged.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Newsome et al. (Adsorption 2014, 20, 157-171).
Regarding claim 1, Newsome teaches a Na-ZSM-5 zeolite where the Na-ZSM-5 is selective for CO2 adsorption and adsorption is conducted at temperatures ranging from 273 to 308 K, which encompass room temperature (i.e. 298 K) (Title; Abstract; Pg. 158, right col.; Pg. 162, right col.). Newsome teaches ions are incorporated into ZSM-5 via methods including exchange, where typical ions include H+, Na+, Ca2+, or Mg2+ (Pg. 157, right col.-Pg. 158, left col.)
Examiner notes the term “surface-modified” is equivalent to exchanging sodium ions with protons within the zeolite, despite the term stating a “surface-modification.” This is supported in the instant specification that states “The ion exchange refers to the substitution of protons within the zeolite with sodium ions” (see Pg. 5, lines 14-17 in the instant specification).
Accordingly, Newsome teaching a zeolite containing sodium ions is equivalent to being “surface-modified” in that the zeolite contains sodium ions.
Examiner further notes the phrase “the zeolite is surface-modified through sodium ion exchange” is a product-by-process limitation. It is noted that “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Newsome meets the requirements of the claimed zeolite, Newsome meets the requirements of the present claims.
Regarding claim 3, Newsome anticipates the zeolite of claim 1 and Newsome teaches the Si/Al ratio is 13 (Pg. 159, left col.; Pg. 162, 2.6 Experimental Methodology).
Regarding claim 5, Newsome anticipates the zeolite of claim 1 and 3 and Newsome teaches the zeolite has the general stoichiometric formula {NaXAlXSi(96-X)O192) where Al substitutions were subsequently made in the range of X = 0, 1, 2, 3, 4, and 7 (Na+ + Al)/Unit Cell, or Si/Al = 95, 47, 31, 23, and 13 (Pg. 160, 2.4, Atomic Description). Converting the entry of Si/Al =13 into Na wt.% provides a Na wt.% taught in Newsome of 1.84 % (calculations below).
Calculations:
Formula when Si/Al = 13; Na7Al7Si(89)O192
Molar masses: Na = 23 g/mol; Si = 28.085 g/mol; Al = 26.98 g/mol; O = 16 g/mol
Total mass = (23*7)+(26.98 *7)+(60.084*89)+(16*192) = 8769.34 g
Sodium total mass = 23* 7 = 161
Sodium / Total mass = 161/8769.34 = 1.84% (mass = weight percent)
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 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Newsome et al. (Adsorption 2014, 20, 157-171).
Regarding claim 2, Newsome anticipates the zeolite of claim 1 and the claim further requires “the sodium ion exchange is a process where protons within the zeolite are substituted with sodium ions” to which Newsome does not explicitly state the Na-ZSM-5 zeolite is prepared from H-form ZSM-5.
However, this limitation is a product-by-process limitation. It is noted that “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Newsome meets the structural requirements of the claimed zeolite, including the Si/Al ratio and sodium wt.%, Newsome meets the requirements of the present claims.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Newsome et al. (Adsorption 2014, 20, 157-171) in view of Masala et al. (Ind. Eng. Chem. Res. 2017, 56, 8485-8498).
Regarding claim 4, Newsome anticipates the zeolite of claim 1 and 3 and the claim further requires the specific surface area, to which Newsome does not report a specific surface area.
Masala teaches a ZSM-5 based adsorbent for CO2 capture where the ZSM-5 zeolite contains sodium and Masala reports two different samples that have a surface area of 350 and 371 m2/g, respectively (Pg. 8489, Table 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Masala (350 and 371 m2/g) overlaps with the claimed range (350-420 m2/g). Therefore, the values in Masala render obvious the claimed range.
Advantageously, the zeolite of Masala displays high thermal stability and retains surface area despite high temperature treatment, while also displaying CO2 selectivity (Pg. 8486, right col.; Pg. 8489, right col.; Pg.8485-8486, IAST selectivity)
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art provide a surface area of 350 and 371 m2/g in the zeolite of Newsome in order to provide a zeolite with high thermal stability that also displays CO2 selectivity, as taught by Masala.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bonelli et al. (Langmuir 2000, 16, 4976-4983); Bonelli teaches a Na-ZSM-5 zeolite for carbon dioxide adsorption that contains a Si/Al ratio of 14:1 (Abstract; Pg. 4977, 2. Experimental Section).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
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