DETAILED ACTION
Claims 1-24 are pending
Claims 1-24 are subject to a restriction requirement
Claims 1-13, 22-24 are withdrawn
Claims 14-21 are rejected
Notice of Pre-AIA or AIA Status
1. 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
2. REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
3. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-10, drawn to a molecular sieve comprising an MTT-type framework.
Group II, claims 11-13, drawn to a method of preparing the molecular sieve of claim 1.
Group III, claims 14-21, drawn to a process for converting hydrocarbons.
Group IV, claims 22-24, drawn to a method of preparing molecular sieve SSZ-94.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-IV lack unity of invention because even though the inventions of these groups require the technical feature of a molecular sieve comprising an MTT-type framework comprising silicon oxide, aluminum oxide, and magnesium, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Zones et. al. (US 20050092651 A1) (Zones).
Zones teaches a small crystal SSZ-32 zeolite (i.e. molecular sieve), known as SSZ-32X (Zones, Abstract), which is an example of MTT-type zeolites (Zones, [0044]).
wherein the zeolite (i.e. molecular sieve) has a mole ratio of silicon oxide to aluminum oxide greater than about 20:1 to less than 40:1 (Zones, p. 12, claim 1) and further comprising modifying metal such as magnesium (Zones, p. 24, claim 17).
Given that Zones discloses the SSZ-32X zeolite that overlaps the presently claimed MTT-type zeolite comprising silicon oxide, aluminum oxide, and magnesium, it therefore would be obvious to one of ordinary skill in the art, to use the magnesium as the modifying metal, which is both disclosed by Zones and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
4. Therefore, since the limitations fail to define a contribution over Zones, they failed to
constitute a special technical feature and hence there is lack of unity between the cited claims.
5. During a telephone conversation with Mark Warzel on January 27, 2026 a provisional election was made with traverse to prosecute the invention of group III, claims 14-21. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-13 and 22-24 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
6. Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
7. The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Double Patenting
8. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
9. A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
10. Claims 1-23 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-23 of prior U.S. Patent No. US 11220435 B1 (US’435). This is a statutory double patenting rejection.
11. Regarding claim 1, US’435 a molecular sieve comprising an MTT-type framework, a mole ratio of from about 15 to about 100 of silicon oxide to aluminum oxide, a total micropore volume of between 0.02 and 0.05 cc/g, external surface area of between 80 and 120 m2/g and magnesium (US’435, Claim 1)
12. Regarding claim 2, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.005 to about 0.4 (Claim 2).
13. Regarding claim 3, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.01 to about 0.25 (Claim 3).
14. Regarding claim 4, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.04 to about 0.22 (Claim 4).
15. Regarding claim 5, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.05 to about 0.2 (Claim 5).
16. Regarding claim 6, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve has a silicon oxide to aluminum oxide mole ratio of 25-50 (Claim 6).
17. Regarding claim 7, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve is a product of a reaction mixture comprising a molar ratio of SiO2/Al2O3 of from about 15 to about 100, of M/SiO2 of from about 0.05 to about 0.4, of Q/SiO2 of from about 0.05 to about 0.5, of OH/SiO2 of from about 0.1 to about 0.4, of MgO/SiO2 of from 0.005 to about 0.4, and of H20/SiO2 of from about 10 to about 300, wherein M is selected from Groups 1 and 2 of the Periodic Table and Q is a hexamethonium cation. (Claim 7).
18. Regarding claim 8, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve is a product of a reaction mixture comprising a molar ratio of SiO2/Al2O3 of from about 25 to about 50, of M/SiO2 of from about 0.075 to about 0.3, of Q/SiO2 of from about 0.1 to about 0.30, of OH/SiO2 of from about 0.15 to about 0.30, of MgO/SiO2 of from 0.01 to about 0.25, and of H2O/SiO2 of from about 10 to about 70 wherein M is selected from Groups 1 and 2 of the Periodic Table and Q is a hexamethonium cation (Claim 8).
19. Regarding claim 9, US’435 teaches the molecular sieve of claim 1, which further comprises palladium, platinum, or a mixture thereof (Claim 9).
20. Regarding claim 10, US’435 teaches the molecular sieve of claim 1, wherein the molecular sieve has an external surface area of between 80 and 110 m2/g (Claim 10).
21. Regarding claim 11, US’435 teaches a method of preparing the molecular sieve of claim 1, comprising: (a) preparing a reaction mixture containing: at least one source of silicon, at least one source of aluminum, at least one source of an element selected from Groups 1 and 2 of the Periodic Table, at least one source of magnesium, hydroxide ions, hexamethonium cations, and water; and (b) subjecting the reaction mixture to crystallization conditions sufficient to form crystals of the molecular sieve (Claim 11).
22. Regarding claim 12, US’435 teaches the method of claim 11 wherein the molecular sieve is prepared from a reaction mixture comprising a molar ratio of SiO2/Al2O3 of from about 15 to about 100, of M/SiO2 of from about 0.05 to about 0.4, of Q/SiO2 of from about 0.05 to about 0.5, of OH/SiO2 of from about 0.1 to about 0.4, of MgO/SiO2 of from 0.005 to about 0.4 and of H2O/SiO2 of from about 10 to about 300 wherein M is selected from Groups 1 and 2 of the Periodic Table and Q is a hexamethonium cation (Claim 12).
23. Regarding claim 13, US’435 teaches the method of claim 11 wherein the molecular sieve is prepared from a reaction mixture comprising a molar ratio of SiO2/Al2O3 of from about 25 to about 50, of M/SiO2 of from about 0.075 to about 0.3, of Q/SiO2 of from about 0.1 to about 0.30, of OH/SiO2 of from about 0.15 to about 0.30, of MgO/SiO2 of from 0.01 to about 0.25 and of H2O/SiO2 of from about 10 to about 70 wherein M is selected from Groups 1 and 2 of the Periodic Table and Q is a hexamethonium cation (Claim 13).
23. Regarding claim 14, US’435 teaches a process for converting hydrocarbons, comprising contacting a hydrocarbonaceous feed under hydrocarbon converting conditions with a catalyst comprising a molecular sieve, the molecular sieve comprising an MTT-type framework, a mole ratio of from about 15 to about 100 of silicon oxide to aluminum oxide, a total micropore volume of between 0.02 and 0.05 cc/g, an external surface area of between 80 and 120 m2/g, and magnesium. (Claim 14).
24. Regarding claim 15, US’435 teaches the process of claim 14, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.005 to about 0.4. (Claim 15).
25. Regarding claim 16, US’435 teaches the process of claim 14, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.01 to about 0.25 (Claim 16).
26. Regarding claim 17, US’435 teaches the process of claim 14, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.04 to about 0.22. (Claim 17).
27. Regarding claim 18, US’435 teaches the process of claim 14, wherein the molecular sieve comprises a magnesium oxide to silicon dioxide ratio of from about 0.05 to about 0.2. (Claim 18).
28. Regarding claim 19, US’435 teaches the process of claim 14, wherein the molecular sieve has a silicon oxide to aluminum oxide mole ratio of 25 to 50 (Claim 19).
29. Regarding claim 20, US’435 teaches the process of claim 14, wherein the process has at least 3% better selectivity at 96% isomerization conversion than a comparable process employing a comparable catalyst that lacks magnesium (Claim 20).
30. Regarding claim 21, US’435 teaches the process of claim 14, wherein the process has at least 6% better selectivity at 96% isomerization conversion than a comparable process employing a comparable catalyst that lacks magnesium (Claim 21).
31. Regarding claim 22, US’435 teaches a method of preparing molecular sieve SSZ-94, comprising:
(a) preparing a reaction mixture comprising:
(i) at least one active source of silicon;
(ii) at least one active source of aluminum;
(iii) at least one active source of magnesium;
(iv) at least one active source of an alkali metal;
(v) hydroxide ions; and
(vi) an organic templating agent consisting of at least one small, neutral amine capable of forming the zeolite, said amine containing four to about eight carbon atoms and (a) only carbon, nitrogen, and hydrogen atoms, (b) one primary, secondary or tertiary, but not quaternary, amino group, and (c) a tertiary nitrogen atom, or at least one tertiary carbon atom, or a nitrogen atom bonded directly to at least one secondary carbon atom;
(b) maintaining the reaction mixture under conditions sufficient to form crystals of the zeolite wherein the zeolite is prepared in the absence of an amine component.
(c) recovering the crystals of the zeolite (Claim 22).
32. Regarding claim 23, US’435 teaches the method of claim 22, wherein the reaction mixture has a composition in terms of mole ratios falling within the ranges below (Claim 23).
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209
445
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33. Regarding claim 24, US’435 teaches wherein the zeolite has, in the calcined form, an X-ray diffraction pattern substantially as shown in the following table (Claim 24).
PNG
media_image2.png
474
472
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Greyscale
PNG
media_image3.png
175
361
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media_image4.png
75
422
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Greyscale
Claim Rejections - 35 USC § 112
34. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
35. Claims 15-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
36. Each of claims 15-18 recites “ratio”. However, it is unclear what “ratio” refers to, e.g., mass ratio, mole ratio, volume ratio, etc. Specifically, there is no definition of “ratio” disclosed in the Specification. The examiner interprets as the “ratio” in the claims as “mole ratio”. Clarification is requested.
37. If the interpretation is correct, it is advised applicant to provide support “ratio” in the claims refer to “mole ratio”.
Claim Rejections - 35 USC § 103
38. 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.
39. 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.
40. Claim 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Zones.
41. Regarding claim 14, Zones teaches a catalyst suitable for use (Zones, Abstract) in the process of converting of hydrocarbons (Zones, title);
wherein the process includes contacting a feed under isomerization conditions in the presence of hydrogen (i.e. hydrocarbon converting conditions) (Zones, p. 12, claim 18)
wherein the feed includes straight chain and slightly branched paraffins having 10 or more carbon atoms (i.e. contacting a hydrocarbonaceous feed) (Zones, p. 12, claim 18).
Zones further teaches the catalyst comprises an intermediate pore size molecular sieve (Zones, p. 12, Claim 18)
wherein the molecular sieve is a small crystal SSZ-32 zeolite, known as SSZ-32X (Zones, Abstract), which is an example of an MTT-type zeolite (Zones, [0044]).
Zones further teaches the dewaxing process (i.e. process for converting hydrocarbons) of claim 18 wherein the zeolite is SSZ-32X (i.e. molecular sieve comprising an MTT framework) (Zones, p. 13, claim 19);
wherein the mole ratio of silicon oxide to aluminum oxide greater than about 20:1 to less than 40:1, which falls within the claimed range (Zones, p. 12, claim 18).
wherein the minimum micropore volume is 0.02 cc/gm (i.e. cc/g) (Zones, p. 6, claim 2) for the SSZ-32X zeolite (Zones, p. 12, claim 7), which encompasses the claimed range
wherein the zeolite (i.e. molecular sieve comprising an MTT framework) includes an external surface area in the range from 80 to 300 m2/gm (i.e. m2/g), which encompasses the claimed range (Zones, p. 11, claim 5)
wherein the metals added to affect the overall functioning of the catalyst include magnesium (Zones, [0027]).
Given that Zones discloses the zeolite that overlaps the presently claimed molecular sieve, including magnesium as the metal, it therefore would be obvious to one of ordinary skill in the art, to use the zeolite, which is both disclosed by Zones and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
42. Regarding claims 15-18, Zones further teaches, SSZ-32X being commonly composited with porous matrix materials and mixtures of matrix materials such as silica-alumina-magnesia (Zones [0032]).
As Zone expressly teaches, metals added to affect the overall functioning of the catalyst (including enhancement of isomerization and reduction of cracking activity) include magnesium (Zones, [0027]). It is possible to add metals for the enhancement of catalytic performance, during the actual synthesis of SSZ-32X, as well as during later steps in catalyst preparation (Zones, [0032]).
Given Zones teaches the addition of Mg affects the overall functioning of the catalyst (including enhancement of isomerization and reduction of cracking activity) as set forth above, it would have been obvious to one of ordinary skill in the art to adjust the ratio of the magnesia and the silica in the catalyst, including that presently claimed, in order to sufficiently affect the overall functioning of the catalyst, including to provide desired enhancement of isomerization and reduction of cracking activity, and thereby arrive at the claimed invention.
43. Regarding Claim 19, Zones further teaches the mole ratio of silicon oxide to aluminum oxide greater than about 20:1 to less than 40:1, which falls within the claimed range (Zones, p. 12, claim 18).
44. Regarding claims 20-21, given Zones teaches, the addition of Mg affects the overall functioning of the catalyst (including enhancement of isomerization and reduction of cracking activity) (Zones, [0027]), it would have been obvious to one of ordinary skill in the art to adjust the amount of Mg in the catalyst to provide improved selectivity at 96% isomerization conversion, included that presently claimed, and thereby arrived at the claimed invention.
Conclusion
45. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Remy Frederic Lalisse whose telephone number is (571)272-1819. The examiner can normally be reached Monday - Friday, 10:00 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.F.L./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732