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 .
Claims 1-14 are presently pending in this application.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 is missing a period (“.”) at the end thereof.
Appropriate correction is required.
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 5-7 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.
Claims 5-7 are indefinite for the phrases “rod like” (claim 5) and “plate-like” (claim 7), which are relative phrases. In these phrases, the word “like” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of Applicants’ invention.
Additionally, claims 5 and 7 lack antecedent basis for the claim limitation “molecular sieve crystals”; claim 1, from which claims 5 and 7 depend, does not recite this limitation.
Claim 6, which depends from claim 5, does not cure the deficiencies therein, and is thus included in this rejection.
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.
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.
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.
Claims 1-3, 5, 6, 8, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over “A Facile and Green Method for the Synthesis of SFE Borosilicate Zeolite and Its Heteroatom-Substituted Analogues with Promising Catalytic Performances,” by Yi Luo et al. (hereinafter “Luo et al.”; Applicants’ submitted art).
Regarding claims 1 and 3, Luo et al. teach SFE-type zeolites (“molecular sieve”) in as-made (“as-synthesized”) and calcined forms, having X-ray diffraction pattern peaks comparable to that recited in Applicants’ claims 1 and 3, wherein the zeolites additionally contain boron (B) and aluminum (Al), and are defined as B-SFE and Al,B-SFE. See Figure 3 Luo et al., and page 308, right column.
Regarding claim 2, Luo et al. teach heteroatom incorporated SFE-type zeolite analogues, wherein sources of, for example, Ti, are added to B-SFE. See page 309, right column, and Figure 4 of Luo et al.
Regarding claims 5 and 6, Luo et al. teach that the aforementioned SFE-type zeolites exhibit “a typical needle-like morphology, with a uniform size of about 0.05 x 1.00 µm (Figure 38a), while the needle-like crystals of Al,B-SFE are much shorter, only…100-300 nm in length…”. See Figure 3B and page 308 of Luo et al., right column. From this teaching, the skilled artisan would have been motivated to reasonably expect the zeolites disclosed in Luo et al. to exhibit an aspect ratio comparable to that of from more than 1 to 10, absent the showing of convincing evidence to the contrary.
Regarding claim 8, Luo et al. teach that the aforementioned SFE-type zeolite Al,B-SFE exhibits Si/B molar ratios of 84 and Si/Al molar ratios of 57. See Table 2 of Luo et al.
Regarding claim 14, Luo et al. teach the feasibility in the aforementioned zeolites being employed in the disproportionation of isopropylnaphthalene (IPN). See the Abstract of Luo et al., as well as Table 2 and pages 308-310.
While Luo et al. teach X-ray diffraction pattern peaks comparable to that recited in Applicants’ claims 1 and 3, this reference does not explicitly teach or suggest the respectively claimed relative intensities recited therein. However, it is considered that because Luo et al. teach SFE-type zeolites comparable to that instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the SFE-type zeolites disclosed in Luo et al. to exhibit relative intensities comparable to that recited in Applicants’ claims, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2144.09(I).
Allowable Subject Matter
Claims 4 and 9-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Luo et al. do not teach or suggest the limitations of Applicants’ claims 4, 7, and 9-13. For example, Luo et al. do not teach or suggest the structure directing agent comprising at least one cation of Formulae I through V recited therein. Luo et al. employ 4-dimethylaminopyridine as a structure directing agent. See page 307 and Figure 1 of Luo et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pham et al. (WO 2026/059887) teaches the preparation of molecular sieves using 1,2-dimethylimidazo[1,2-a]pyridin-l-ium cation as a structure directing agent (Abstract). However, this reference was published on March 19, 2026, which is after the effective filing date of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 June 17, 2026
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