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 of Group II, claims 21-22, in the reply filed on 06/15/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
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.
Claims 21-22 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.
Regarding claim 21, the term "remaining exchange sites of the metal/zeolite catalytic material" lacks antecedent basis and is further unclear. The term is not supported from claim 12 because it is not clear at which point the "exchange sites" are being generated and therefore it is not clear what “remaining sites” are being exchanged. Further, the term “remaining” implies some sites are occupied and only those left are exchanged. For example, exchange sites could be generated during the dealumination as well as during the calcination. Further, claim 21 attempts to incorporate the method of claim 12, which is a product-by-process limitation. While the product-by-process limitation is not indefinite, it does add a lack of clarity to the claims in that a skilled artisan would not know whether the "at least 80% of remaining exchange sites" are present after performing the dealumination/treatment/calcination of claim 12, or if the claim is intending that the treatment after dealumination and before calcination results in the "at least 80% of remaining exchange sites" being occupied. In the interest of compact prosecution and in view of the instant specification, the later interpretation is applied to the claims where the claim is intending that the treatment after dealumination and before calcination results in the "at least 80% of remaining exchange sites" being occupied. This is supported in at least Pg. 12, line 19-Pg. 13, line 15 and Table 1 of the instant specification.
Claim 22 depends from claim 21 and is also rendered indefinite.
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.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (Chinese J. Cat. 2016, 37, 898-907).
Regarding claim 21, Examiner notes the preamble states the metal/zeolite catalytic material is for “selective catalytic reduction of NOx contained in an exhaust gas stream”. 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. Accordingly, performing selective catalytic reduction of NOx contained in an exhaust gas stream does not provide any clear structural limitations to the catalyst as claimed and the preamble was not considered a limitation in applying prior art. See 2111.02.
Wu teaches an iron-zeolite catalyst for the decomposition of nitrous oxide where following dealumination with acid, exchange sites generated by the dealumination treatment are exchanged with an iron complex (Fe(NO3)3) to provide a catalyst with 100% iron exchanged relative to replaced aluminum (Abstract; Table 1, Entry Fe-beta-24; Pg. 800, 2.1. Catalyst Preparation). Wu teaches the Fe species were isolated Fe species in the exchange sites (Pg. 904, left col.).
Although Wu does not explicitly disclose performing the process of claim 12, 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 Wu meets the structural requirements of the claimed metal/zeolite catalyst, Wu is considered to anticipate the instant metal/zeolite catalytic material.
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (Chinese J. Cat. 2016, 37, 898-907) in view of Hu et al. (Chem.Select 2018, 3, 4439-4447)
Regarding claim 22, Wu anticipates the metal/zeolite catalytic material of claim 21 and the claim further requires “the zeolite is ZSM-5 (zeolite Socony Mobil-5) and that the metal is (Fe).” Wu teaches the catalyst is comprised of ZSM-5 zeolite and Fe metal, however Wu does not explicitly teach arriving at a catalyst comprised of ZSM-5 and Fe that contains 80% of exchange sites containing Fe. Wu teaches the Fe-ZSM-5 catalyst contains 5.6% exchange relative to Al (Table 1).
Hu teaches dealuminated Fe-ZSM-5 catalyst (abbreviated Fe/deAlZSM-5) that is prepared by dealuminated of ZSM-5 with HNO3 (nitric acid) that leads to the formation of many vacant T sites (tetrahedral sites) in the zeolite (Abstract; Pg. 4445-4446). Hu teaches that after loading Fe species into the dealuminated ZSM-5 framework, all of the mesopores associated with aluminum loss disappear and that many of the vacant T sites are incorporated with Fe (Pg. 4445-4446; Table 3; Figure 5). The disappearance of the mesopores and the incorporation of Fe into the vacant T sites is consistent with nearly quantitative Fe exchange into the zeolite (i.e. about 100% exchange sites occupied) such that a skilled artisan would expect at least about 80% of the sites are occupied in Hu.
Advantageously, providing a dealuminated Fe-ZSM-5 catalyst with nearly all of the vacant exchange sites occupied by Fe provides a catalyst with confined Fe particles in the zeolite structure that infers high catalytic activity and excellent stability to the catalyst (Abstract; Pg. 4446, left and right col.).
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 nearly fully exchanged catalytic material comprising ZSM-5 zeolite and Fe metal in the catalyst of Wu in order to provide a catalyst with high catalytic activity and excellent stability, as taught by Hu.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gac et al. (App. Cat. B Environ. 2014, 146, 227-236); Gac teaches a metal-containing zeolite method of preparing a metal-containing zeolite where the metal (nickel) is incorporated into the zeolite following a two-step post-synthetic treatment method that includes treating tetraethylammonium BEA (TEABEA) zeolite with HNO3 aqueous solution to obtain dealuminated zeolite (abbreviated SiBEA) that was then recovered, washed, and dried prior to adding Ni(NO3) complex to incorporate Ni into the zeolite (Pg. 228, 2.1, Sample Preparation). Grosso-Giordano et al. (Chem. Mater. 2017, 29, 64806); Grosso-Giordano teaches a method of preparing zeolites with NaFeEDTA complex as the exchange reagent (Abstract; Pg. 6483, right col.).
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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/JORDAN W TAYLOR/Examiner, Art Unit 1738
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