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 .
Response to Amendment
This action is responsive to correspondence filed on 10/22/2025.
Claims 1-7 and 10-16 are pending. Claims 8-9 and 17-18 are canceled. Claims 1 and 13 are amended.
The previous rejection of claim 1-7, 10-13, and 15-16 under 35 U.S.C. 102(a)(2) are withdrawn, necessitated by the applicant amendment.
The previous rejection of claim 14 under 35 U.S.C. 103 are withdrawn, necessitated by the applicant amendment.
However, after reconsideration of the record new rejections are entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7, 10-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Examiner notes, with respect to tables 5-8 in the Applicant specification, the comparative catalyst C, base catalyst that does not contain any platinum metals, the only metal present in the comparative example is Pd (palladium), thus it is the Examiner position that the amended language “wherein, the catalyst provides a higher jet yield than a corresponding non-bimetallic catalyst when both catalysts are separately contacted with the same hydrocarbonaceous feed under the same process conditions, wherein the non-bimetallic catalyst differs only in that it is not bimetallic and includes only platinum as the modifier metal, and/or the catalyst provides greater sulfur tolerance than a corresponding non-bimetallic catalyst when both catalysts are separately contacted with the same hydrocarbonaceous feed under the same process conditions, wherein the non-bimetallic catalyst differs from the catalyst only in that it is not bimetallic and includes only platinum as the modifier metal.”, is considered new matter.
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.
Claim(s) 1-7, 10-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Timken et al US 6,902,664.
With respect to claim 1, Timken discloses a hydrocracking catalyst, comprising:
a base material comprising an alumina, an amorphous silica-alumina, and a Y zeolite, wherein the Y zeolite is in the range of about 40-70 wt.% (see col 13 lines 30-55 and col 14 lines 5-25); and a bimetallic platinum-palladium modifier metal composition dispersed on and/or impregnated within the base material (see col 6 lines 54-65 and col 14 lines 5-20).
Timken does not disclose wherein, the catalyst provides a higher jet yield than a corresponding non-bimetallic catalyst when both catalysts are separately contacted with the same hydrocarbonaceous feed under the same process conditions, wherein the non-bimetallic catalyst differs only in that it is not bimetallic and includes only platinum as the modifier metal, and/or the catalyst provides greater sulfur tolerance than a corresponding non-bimetallic catalyst when both catalysts are separately contacted with the same hydrocarbonaceous feed under the same process conditions, wherein the non-bimetallic catalyst differs from the catalyst only in that it is not bimetallic and includes only platinum as the modifier metal.
Examiner notes, the functional limitations are only relevant with respect to the process of use claims (here, claims 13-16). Those same limitations are not relevant with respect to the catalyst composition claims as they do not further limit any of the actual recited components of the claimed catalyst.
Thus, the prior art applied to the process of use claims must teach/suggest the functional limitations for the rejection to be maintained, as it can be reasonably argued that the catalyst of the prior art which is the same as recited in the claims, used under the same process conditions on the same feed, thus the person having ordinary skill in the art would readily expect that a scenario leading to identical results being obtained, i.e. a higher jet yield obtained even though the reference does not explicitly mention this to be the case.
With respect to claim 2, Timken discloses the limitation of claim 1. Timken further discloses wherein the modifier comprises platinum and palladium in a molar ratio of .75:1 (see col 14 lines 5-20).
With respect to claim 3, Timken discloses the limitation of claim 1. Timken further discloses wherein the content of the modifier metal composition is in the range of about 0.1 to 5 wt.% (see col 6 lines 55-60 and col 14 lines 5-20).
With respect to claim 4, Timken discloses the limitation of claim 1. Timken further discloses wherein the base material is formed as a blended and extruded support (see col 13 lines 30-55).
With respect to claim 5, Timken discloses the limitation of claim 1. Timken further discloses wherein the catalyst is formed by impregnating the base material with an impregnation solution comprising platinum and palladium compounds, followed by drying of the impregnated base material for a sufficient time and at a suitable temperature, and subsequently calcining the dried impregnated base material (see col 14 lines 5-30).
With respect to claim 6, Timken discloses the limitation of claim 5. Timken further discloses wherein the impregnation solution comprises an aqueous solution of Pt(NH3)4(NO3)2 and Pd(NH3)4(NO3)2 (see col 14 lines 5-30).
With respect to claim 7, Timken discloses the limitation of claim 5. Timken further discloses wherein the impregnated base material is dried for about 1-24 hrs at a temperature in the range of about 121°C (250°F) and then calcined for about 1.0 hrs at a temperature in the range of about 398°C (750°F) (see col 14 lines 5-25).
With respect to claim 10, Timken discloses the limitation of claim 1. Timken further discloses wherein the alumina content is in the range of about 10-30 wt.%, the amorphous silica-alumina content is in the range of about 10-30 wt.%, and the Y zeolite content is in the range of about 40-70 wt.% (see col 5 lines 50-60 and col 6 lines 1-25).
With respect to claim 11, Timken discloses a process of making a catalyst, comprising:
combining an alumina, an amorphous silica-alumina (ASA), and a Y zeolite to form a blended extrudable composition (see col 13 lines 30-50);
extruding the composition to form an extruded base material (see col 13 lines 30-50);
contacting the extruded base material with an impregnation solution comprising an aqueous solution of Pt(NH3)4(NO3)2 and Pd(NH3)4(NO3)2 (see col 14, lines 5-25),
drying the impregnated base material at a temperature sufficient to form dried extruded base material (see col 14, lines 5-20); and calcining the dried base material (see col 14, lines 5-20).
With respect to claim 12, Timken discloses the limitation of claim 11. Timken discloses wherein the impregnated base material is dried for about 1-24 hrs at a temperature in the range of about 121°C (250°F) and then calcined for about 1.0 hrs at a temperature in the range of about 398°C (750°F) (see col 14 lines 5-25).
With respect to claim 13, Timken discloses a process for hydrocracking a hydrocarbonaceous feedstock, the process comprising contacting the catalyst of claim 1
Timken does not disclose wherein, the catalyst provides a higher jet yield than a corresponding non-bimetallic catalyst when both catalysts are separately contacted with the same hydrocarbonaceous feed under the same process conditions, wherein the non-bimetallic catalyst differs only in that it is not bimetallic and includes only platinum as the modifier metal, and/or the catalyst provides greater sulfur tolerance than a corresponding non-bimetallic catalyst when both catalysts are separately contacted with the same hydrocarbonaceous feed under the same process conditions, wherein the non-bimetallic catalyst differs from the catalyst only in that it is not bimetallic and includes only platinum as the modifier metal.
However, it would have been obvious to one with ordinary skill in the art , before the effective filing date, that the prior art applied to the process of use claims must teach/suggest the functional limitations for the rejection to be maintained, as it can be reasonably argued that the catalyst of the prior art which is the same as recited in the claims, used under the same process conditions on the same feed, thus the person having ordinary skill in the art would readily expect that a scenario leading to identical results being obtained, i.e. a higher jet yield obtained even though the reference does not explicitly mention this to be the case.
With respect to claim 14, Timken discloses the limitation of claim 13.
Timken does not explicitly disclose wherein the embodiment is a two-stage hydrocracking process.
However, Timken discloses wherein said catalyst is applicable to hydrocracking process is a two-stage hydrocracking process (see col 8 lines 1-20).
Thus, it would have been obvious to one with ordinary skill in the art, before the effective filing date of the invention to modify the process with a two-stage hydrocracking, as Timken discloses wherein said catalyst is applicable to hydrocracking process is a two-stage hydrocracking process.
With respect to claim 15, Timken discloses the limitation of claim 13. Timken further discloses wherein the S and N content of the hydrocarbonaceous feedstock are individually or both less than about 200 ppm (see col 14 lines 30-45).
With respect to claim 16, Timken discloses the limitation of claim 13. Timken further discloses wherein the feedstock includes, gas oils, vacuum gas oils, deasphalted oils, long residues, catalytically cracked cycle oils, coker gas oils and other thermally cracked gas oils and syncrude, optionally originating from tar sands, shale oils, waxy hydrocarbons from Fischer-Tropsch hydrocarbon synthesis process, residue upgrading processes or biomass (see col 8 lines 10-25).
Response to Arguments
With respect to catalyst claims 1-7 and 10-12, the Examiner understands the Applicant Argument to be :
Timken does not evidently provide any guidance, suggestion, or motivation, to use particular modifying metals to make catalysts that provide improved product characteristics over other catalysts that might be within the scope of Timken's disclosure. More specifically, there is no apparent teaching, suggestion or motivation to use a bimetallic Pt-Pd catalyst to achieve improved jet yield and/or to improve the sulfur tolerance of other catalysts that might be within the scope of Timken's disclosure.
With respect to the argument above:
The functional limitations are only relevant with respect to the process of use claims (here, claims 13-16). Those same limitations are not relevant with respect to the catalyst composition claims as they do not further limit any of the actual recited components of the claimed catalyst.
Thus, the prior art applied to the process of use claims must teach/suggest the functional limitations for the rejection to be maintained, as it can be reasonably argued that the catalyst of the prior art which is the same as recited in the claims, used under the same process conditions on the same feed, thus the person having ordinary skill in the art would readily expect that a scenario leading to identical results being obtained, i.e. a higher jet yield obtained even though the reference does not explicitly mention this to be the case.
With respect to catalyst claims 13-16, the Examiner understands the Applicant Argument to be :
Timken does not evidently provide any guidance, suggestion, or motivation, to use particular modifying metals to make catalysts that provide improved product characteristics over other catalysts that might be within the scope of Timken's disclosure.
More specifically, there is no apparent teaching, suggestion or motivation to use a bimetallic Pt-Pd catalyst to achieve improved jet yield and/or to improve the sulfur tolerance of other catalysts that might be within the scope of Timken's disclosure.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, the prior art applied to the process of use claims must teach/suggest the functional limitations for the rejection to be maintained, as it can be reasonably argued that the catalyst of the prior art which is the same as recited in the claims, used under the same process conditions on the same feed, thus the person having ordinary skill in the art would readily expect that a scenario leading to identical results being obtained, i.e. a higher jet yield obtained even though the reference does not explicitly mention this to be the case.
Applicant's discovery, however, that bimetallic Pt-Pd catalysts provide significantly improved jet fuel yield, as well as improved sulfur tolerance, compared with monometallic Pt catalysts, should be considered to be evidence of non-obviousness that patentably distinguishes over Timken.
Applicant's results demonstrate improved jet yield and sulfur tolerance, which should be considered to be non-obvious beneficial results not disclosed or suggested by Timken.
For example, in Tables 5 and 6, it is seen that inventive catalysts A and B, both bimetallic Pt-Pd catalysts, demonstrate significantly improved jet yield compared to monometallic catalyst comparative catalyst C. Tables 7 and 8 further demonstrate that inventive catalysts A and B provide improved sulfur tolerance compared with monometallic comparative catalyst C.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Examiner notes, with respect to tables 5-8, comparative catalyst C, base case for which the Applicant is basing their argument on, is a catalyst that does not contain any platinum metals, the only metal present in the comparative example is Pd (palladium), thus Applicant's amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant notes that Timken refers to lower preferred Y zeolite contents, e.g., 1-20 wt.% (col. 5, lines 51-55). Although Timken does appear to disclose a Pt-Pd catalyst in Catalyst D (e.g., Table 4), the Y zeolite content is indicated to be very low, i.e., 3 %. By comparison, Applicant's claims are directed to second stage hydrocracking catalyst and processes with higher Y zeolite contents in the range of 40-70 wt.%.
With respect to the argument above:
Examiner notes, Timken discloses wherein the USY is present in an amount of 0.5 -70 % by weight (see col 5 lines 50-60) and wherein noble metal is used, the catalyst compositions in accordance with the present invention comprise about 0.1%-5% by weight of platinum, or palladium, or a combination of Pt and Pd (see col 6 lines 50-62).
Thus, Applicant remarks are not persuasive.
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.
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/JUAN C VALENCIA/ Examiner, Art Unit 1771
/PREM C SINGH/ Supervisory Patent Examiner, Art Unit 1771