CTNF 18/569,345 CTNF 85517 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Status Claims 16-30 , as amended December 12, 2023, are currently pending. Claims 1-15 are canceled. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Drawings 06-22 AIA The drawings are objected to because Figures 2 and 3 include text which is arranged in a different orientation than the view numbers. See 37 CFR 1.84(p)(1) . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections - 35 USC § 112 and 101 07-30-02 AIA 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. 07-04-01 AIA 07-04 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 07-34-01 Claim 30 is 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. Claim 30 provides for the use of a zeolitic material, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim 30 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See, e.g. , parte Dunki , 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner , 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA Claim s 16, 18-23, and 25-30 are rejected under 35 U.S.C. 102( a)(1)/(a)(2 ) as being anticipated by Nicolas et al. (U.S. Pat. Publ’n No. 2020/0010330) (“Nicolas”) . Regarding claim 16 , Nicolas discloses a continuous process for the preparation of a zeolitic material comprising SiO 2 in its framework structure (abstract; [0015]; [0030]). The process includes the steps of (i) continuously preparing a mixture comprising one or more solvents, one or more structure directing agents, and one or more sources of SiO 2 ([0030], [0031], [0033]; disclosing structure directing agent and silica as aqueous solutions, such that the solvent is water); (ii) continuously feeding the mixture prepared in (i) into one or more continuous flow reactors ([0015]; [0040]; [0046]-[0047]; Example 1, [0085]-[0098]); and (iii) heating the mixture in the one or more continuous flow reactors for continuously obtaining a zeolitic material comprising SiO 2 in its framework structure ([0046]; preferably at temperatures between 80ºC and 160ºC; Example 1, [0085]-[0098]). Nicolas further teaches that the mixture contained in the one or more continuous flow reactors is subject to a pulsatile flow regime ([0062]-[0068]; Example 1, [0085]-[0098]). Regarding claim 18 , Nicolas further discloses that the mixture continuously prepared in step (i) is continuously fed into one continuous flow reactor (Example 1, [0085]-[0098]). Regarding claim 19 , Nicolas further discloses that the pulsatile flow regime is achieved by a semi-continuous flow regime in, or in and against, the general direction of flow, wherein the general direction of flow is defined by an inlet end of each of the one or more continuous flow reactors into which the mixture prepared in (i) is continuously fed and an outlet end of each of the one or more continuous flow reactors from which the zeolitic material obtained in (iii) is continuously collected ([0015]; [0040]; [0062]-[0071]; Example 1, [0085]-[0098]). Regarding claim 20 , Nicolas further discloses that the pulsatile flow regime is achieved by a pulsating movement in, or in and against, the general direction of flow ([0064]-[0069]; [0071]; Example 1, [0085]-[0098]). Regarding claim 21 , Nicolas further discloses that the frequency of the pulsation is in the range of from 0.001 to 1 s -1 ([0062]-[0071]; Example 1, [0096], frequency of 0.4 Hz, equivalent to 0.4 s -1 ). Regarding claim 22 , Nicolas further discloses that the mixture inside the reactor may be heated to a temperature in the range of from 90 to 280°C ([0046]; Example 1, [0096], reactor temperature of 100ºC). Regarding claim 23 , Nicolas further discloses that the in step (iii), the mixture is heated under autogenous pressure ([0047]). Regarding claim 25 , Nicolas further discloses that the continuous flow reactor is selected among a tubular reactor, a ring reactor, and a continuously oscillating reactor ([0064]-[0071]; Example 1, [0085]-[0098]). Regarding claim 26 and 27 , Nicolas further discloses that the zeolitic material further comprises Al 2 O 3 in its framework structure and that this is included within the mixture in step (i) (([0030], [0031], [0033]; Example 1, [0085]-[0098]; [0086]-[0087]) Regarding claim 28 , Nicolas further discloses that the zeolitic material may further comprises TiO 2 in its framework structure, and wherein the mixture in (i) further comprises one or more sources of TiO2 ([0030]; [0035]; zeolitic material formed may comprise titanosilicalites which necessarily includes TiO 2 in its framework structure and a source of TiO 2 in the mixture used to form the zeolite). Regarding claim 29 , Nicolas discloses a zeolitic material as obtainable and/or obtained according to the process of claim 16 ([0015]; [0040]; [0046]-[0047]; Example 1, [0085]-[0098]). Regarding claim 30 , the zeolitic material according to claim 29 inherently finds use as a molecular sieve, as an adsorbent, for ion-exchange, or as a catalyst and/or as a catalyst support ([0030]-[0038]; [0051], may be modified for cation exchange) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 17 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Nicolas et al. (U.S. Pat. Publ’n No. 2020/0010330) (“Nicolas”), as applied to claims above . Regarding claim 17 , Nicolas discloses all of the limitations as set forth above. While the reference does not explicitly disclose that the mixture continuously prepared in step (i) is continuously fed into the one or more continuous flow reactors at a rate of from 10 to 2,000 kg/h, the reference does teach that the net flow velocity may be optimized into order to achieve the desired net Reynolds number ([0072]; discussing impacts to Reynolds number, fouling, and crystallization). Thus, as the crystallization of the zeolite and fouling of the reactor are variables that can be modified, among others, by adjusting said flow rate of the mixture into the reactor, the precise flow rate would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed flow rate cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the flow rate of the mixture entering the reactor in the process of Nicolas to obtain the desired Reynolds number as well as balancing the crystallization of the zeolite against potential fouling of the reactor ( In re Boesch , 617 F.2d. 272, 205 USPQ 215 (C.C.P.A. 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller , 105 USPQ 223 (C.C.P.A. 1955)). Regarding claim 24 , Nicolas discloses all of the limitations as set forth above. While the reference does not explicitly disclose that the mixture prepared in step (i) may be continuously fed into the continuous flow reactor for a duration ranging from 5 to 365 days, the reference does teach that the process may run continuously and, due to optimized stirring and oscillation conditions, fouling phenomena can be avoided while still retaining excellent quality of zeolite crystals formed ([0027]). Nicolas also discloses that the process is useful for the synthesis of zeolite on an industrial scale ([0001]). As the amount of zeolite synthesized through the continuous flow reactor is a variable that can be modified, among others, by adjusting the duration of continuous operation, the precise duration of continuous operation would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed duration of continuous operation cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the duration of continuous operation to obtain the desired amount of zeolite synthesized while also monitoring the quality of the zeolite formed and the condition of the reactor ( In re Boesch , 617 F.2d. 272, 205 USPQ 215 (C.C.P.A. 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller , 105 USPQ 223 (C.C.P.A. 1955)). Conclusion While not relied upon in a separate rejection under 35 U.S.C. 102 and/or 103, it is noted that Tannuous et al. (U.S. Pat. No. 6,656,447), cited by applicant, also teaches a continuous process for the preparation of a zeolitic material in a manner generally described by the claims ( see, e.g. , C3/L40-56; C4/L13-35, structure directing agent; C4/L36-45, sources of silica and alumina; C5/L4-47, mixture with solvent, addition to reactor, heating, pressure pulses; C6/L51-54, pressure). Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE M ZALASKY MCDONALD whose telephone number is (571)270-7064. The examiner can normally be reached M-F, 9:00 AM to 5:30 PM. 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, JACOB BETIT can be reached at (571) 272-4075. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KATHERINE ZALASKY MCDONALD/Primary Examiner, Art Unit 6221
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