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 .
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 (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 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.
Claims 1-5, 7 and 9-20 are rejected under 35 U.S.C. 103 as obvious over Fan et al. (CN104826666) (for applicant’s convenience, machine translation has been used for citations) in view of Oliveri (WO2012/122208).
Fan et al. teaches a process of producing NaY type molecular sieves (i.e. a zeolite Y) comprising A. preparing a guiding agent using a silicon source, an aluminum source, B. preparing an amorphous silicon-aluminum precursor by introducing a part of silicon containing material into an aluminum containing material before gelation and /or in the gel-forming process, C. forming a silica-alumina gel via adding water, silicon source, the guiding agent formed in A and the silicon-aluminum precursor obtained in B, D dynamically crystallizing the reaction mixture obtained in C via two step crystallization, wherein the first step of performing dynamic crystallization is as follows: the temperature is controlled at 50 to 90 ° C (i.e. first heating), and the crystallization time is 0.5 to 18 hours; and the conditions for the second step of dynamic crystallization are as follows: the temperature is controlled at 80 to 140 ° C (i.e. second heating) (claim 1, 11, description page 3 line 20-page 5 line 32). Fan et al. also teaches in the step A, the aluminum source is selected from the group consisting of sodium metaaluminate, and in the step B, the aluminum-containing material is one or more of Al 2 (SO4)3, AlCl3, Al(NO3)3 and NaAlO2 (claim 5-6, examples 1-9). Therefore, Fan et al. teaches a first alumina compound and a second compound wherein the second alumina compound having a different chemical structure than the first alumina compound.
Fan et al. also teaches crystallization being performed in a stainless-steel reaction vessel (page 9 lines 26-36) wherein no autoclave condition being required.
As for the claimed forming the zeolite precursor solution and the first heating treatment being performed in the same vessel, it would have been obvious for one of ordinary skill in the art to adopt a same vessel used for crystallization ( first heating) for forming a zeolite precursor solution as well because by doing so can help simply the requirement of two different apparatuses for forming zeolite precursor solution and crystallization such zeolite precursor solution thus saving cost for such process.
Regarding claim 1, Fan et al. does not teach the second heating being under autoclaving conditions.
However, it is well known that zeolite Y crystallization can be carried out under autoclave conditions (para. [0080], [0082], [0085] etc.) as shown by Oliveri.
It would have been obvious for one of ordinary skill in the art to adopt such well-known autoclave conditions as shown by Oliveri to modify the second crystallization step of Fan et al. because adopting such well-known autoclave conditions technique to a well-known crystallization of zeolite Y process for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 2-3 and 5, Fan et al. already teaches such limitations as discussed above.
Regarding claim 4, Fan et al already teaches using NaAlO2 as first alumina compound, with specific amount of 2.5gx45%, while 0.17 L Al2(SO4)3 being added to 100 g Al2O3/L solution (example 1), wherein Al2(SO4)3 (second alumina compound) contains about 29.8 wt.% of Al2O3, therefore, the molar ratio of first alumina compound to the second alumina compound being 2.5x45%/0.17x100x29.8=0.222, which is within the claimed molar ratio of the first alumina compound to the second alumina compound. Fen et al. expressly teaches the obtained zeolite Y having a high Si/Al ratio (page 3 lines 9-14, page 7 line 7). Since Fan et al already teaches using a same or substantially the same first alumina compound, and a same or substantially the same second alumina compound with a same or substantially the same first alumina to second alumina molar ratio as that of instantly claimed to produce a zeolite Y having high Si/Al ratio, therefore, same or substantially the same “the silica-to-alumina ratio of the zeolite-Y particles is greater than a silica-to-alumina ratio of zeolite-Y particles formed under identical conditions with the exception of substituting the second alumina compound with an additional amount of the NaAlO2, wherein the additional amount of the NaAlO2 is an aluminum molar amount equivalent to the aluminum molar amount of the second alumina compound that is substituted” as that of instantly claimed is expected.
Regarding claim 7, Fan et al. already teaches similar first heating time as discussed above. As for the claimed second heating time being from 12 to 24 hours, Fan et al. teaches the second crystallization time can be from 3 to 10 hours. It would have been obvious for one of ordinary skill in the art at the time of invention filed to adopt same time range being as that of instantly claimed because using longer time for efficiently crystallizing all the reaction mixture thus obtaining as much as possible desired zeolite Y crystal product is desired and only involves routine experimentation for one of ordinary skill in the art. Furthermore, such crystallization time range is just a design parameter, it would have been obvious for one of ordinary skill in the art to adopt same crystallization time range as that of instantly claimed via routine experimentation (see MPEP 2144. 05 II) for obtaining as much as possible final zeolite Y crystal product.
Regarding claim 9, Fan et al further teaches the silica source being one or more of water glass, silica sol and organic silicon-containing compound like silyl ether etc. (claim 6).
Regarding claim 10-11 and 17, such limitations are met as discussed above.
Regarding claim 12, Fan et al. also teaches mixing a basic (e.g. sodium hydroxide) compound, the silica source material, and the alumina source material into a solvent to form a mixture (example 1-9, claims 1, 5-6), stirring at 30 °C and aging the mixture. Fan et al. does not expressly teach aging the zeolite precursor material for at least 10 hours. However, Fan et al. already teaches stirring a reaction mixture and aging such mixture for as long as 8 hours (claim 9, page 5 lines 16-17). It would have been obvious for one of ordinary skill in the art to adopt such well-known stirring and aging to homogenously mixing all the reaction mixture because adopting such well-known stirring and aging techniques to a well-known process of forming of zeolite precursor for improvement would have predictable results (see MPEP §2143 KSR). It would have been obvious for one of ordinary skill in the art to adopt same stirring and aging time range as that of instantly claimed via routine experimentation (see MPEP 2144. 05 II) for homogeneous mixing all reaction mixture in the zeolite precursor thus obtaining desired zeolite Y particles.
Regarding claim 13-16, such limitations are met as discussed above.
Regarding claim 18-20, Fan et al. further teaches washing, drying and calcining the obtained zeolite Y particles and the obtained zeolite Y particles have specific surface area at least 970 m2/g, average diameter of 400 nm (claim 20, page 5 lines 34-41, example 1-9, table 1). Fan also teaches the obtained NaY zeolite having improved relative crystallinity after calcining (page 5 3rd last para.). Furthermore, Fan et al. already teaches a same or substantially the same method, therefore, same or substantially the same zeolite Y particles, i.e. having same or substantially the same of average diameter, surface area, pore size, relative crystallinity etc. as that of instantly claimed is expected.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-5, 7 and 9-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/426,059 (reference application) in view of Fan et al. (CN104826666) and Oliveri (WO2012/122208). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’059 teaches a substantially the same method of forming a zeolite precursor, aging to gel, two-stage thermally treating the gel mixture as that of instantly claimed, except first alumina compound being different as compared to second alumina compound, 2nd thermal treating being performed under autoclave conditions. but such limitations have been respectively taught by Fan et al. and Oliveri as discussed above. It would have been obvious for one of ordinary skill in the art to adopt two different alumina compounds as shown by Fan et al. for help obtaining a desired zeolite Y product with high Si/Al ratio as suggested by Fan et al. It would have been obvious for one of ordinary skill in the art to adopt such well-known autoclave conditions as shown by Oliveri to modify the second crystallization step of co-pending application of ‘059 because adopting such well-known autoclave conditions technique to a well-known crystallization of zeolite Y process for improvement would have predictable results (see MPEP §2143 KSR).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5, 7 and 9-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/500,496 (reference application) in view of Fan et al. (CN104826666). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’496 teaches a substantially the same method of forming a zeolite precursor, two-stage thermally treating the mixture as that of instantly claimed, except first alumina compound being different as compared to second alumina compound. but such limitation has been respectively taught by Fan et al. as discussed above. It would have been obvious for one of ordinary skill in the art to adopt two different alumina compounds as shown by Fan et al. for help obtaining a desired zeolite Y product with high Si/Al ratio as suggested by Fan et al.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5, 7 and 9-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/500,513 (reference application) in view of Fan et al. (CN104826666) and Oliveri (WO2012/122208). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’513 teaches a substantially the same method of forming a zeolite precursor, two-stage thermally treating the mixture as that of instantly claimed, except first alumina compound being different as compared to second alumina compound, or 2nd thermal treating being performed under autoclave conditions. but such limitations have been respectively taught by Fan et al. and Oliveri as discussed above. It would have been obvious for one of ordinary skill in the art to adopt two different alumina compounds as shown by Fan et al. for help obtaining a desired zeolite Y product with high Si/Al ratio as suggested by Fan et al. It would have been obvious for one of ordinary skill in the art to adopt such well-known autoclave conditions as shown by Oliveri to modify the second crystallization step of co-pending application of ‘513 because adopting such well-known autoclave conditions technique to a well-known crystallization of zeolite Y process for improvement would have predictable results (see MPEP §2143 KSR).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-2, 5, 7 and 9-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7, 9 and 11-15, 19-20 of copending Application No. 18/638,105 (reference application) in view of Oliveri (WO2012/122208). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’105 teaches a substantially the same method of forming a zeolite precursor, two-stage thermally treating the mixture as that of instantly claimed, except 2nd thermal treating being performed under autoclave conditions. but such limitations have been respectively taught by Oliveri as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well-known autoclave conditions as shown by Oliveri to modify the second crystallization step of co-pending application of ‘105 because adopting such well-known autoclave conditions technique to a well-known crystallization of zeolite Y process for improvement would have predictable results (see MPEP §2143 KSR).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
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