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 .
Election/Restrictions
Applicant’s election without traverse of species A1 (claim 15) in the reply filed on 08/24/2026 is acknowledged, therefore, claims 1-5, 7, 9 and 11-15, 19-20 are presented for examination on merit.
Claims 16-18 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected elected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/24/2026.
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, 9 and 11-15, 19-20 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).
Fan et al. teaches a process of producing NaY type molecular sieves (i.e. a zeolite Y) comprising forming a zeolite precursor solution using a silica source material , an alumina source material, and water (a solvent), then forming a reaction mixture comprising such zeolite precursor solution, dynamically crystallizing the obtained reaction mixture 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) for 3 to 10 hours (claim 1, 11, description page 3 line 20-page 5 line 32). Fan et al. also teaches 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). Fan et al further teaches the obtained zeolite NaY molecular sieves (i.e. zeolite Y) particles having SiO2/Al2O3 molar ratio of 5 to 9 (description page 5 3rd last para.).
Regarding claim 1, Fan et al does not expressly teach the second heating time for being 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 2-3 and 4-5, Fan et al. also teaches 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). As for claim 4 and 5 recited alumina source material “consists of aluminum nitrate” or “consists of aluminum sulfate”, it would have been obvious for one of ordinary skill in the art “obvious to try” aluminum nitrate or aluminum sulfate as aluminum source material because choosing aluminum nitrate or aluminum sulfate as aluminum source material from a finite number of identified, predictable solutions of aluminum source material would have a reasonable expectation of success (see MPEP §2143 KSR). Thus aluminum source material “consists of aluminum nitrate” or “consists of aluminum sulfate” is envisioned rom fan’s teachings.
Regarding claim 7, Fan et al further teaches the silica source being one or more of water glass, silica sol (i.e. colloidal silica) and organic silicon-containing compound like silyl ether etc. (claim 6).
Regarding claim 9 and 11-12, Fan et al already teaches such limitations.
Regarding claim 13-14, Fan et al also teaches using a basic compound, e.g. sodium hydroxide (claim 6 and 13, description page 5 2nd last para., examples 1-9).
Regarding claim 15, Fan et al does not require using an organic structure-directing agent, therefore, such limitation has been met.
Regarding claim 19, 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 20, Fan et al. further teaches washing, drying and calcining the obtained zeolite Y particles (claim 20, page 5 lines 34-41, example 1-9, table 1). Furthermore, adopting well-known washing to obtain zeolite Y particles with undesired impurities and remaining reactants or byproducts being washed away , drying and calcining to obtain a zeolite Y product with final properties, such as surface area etc. is well within the scope of one of ordinary skill in the art.
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, 9 and 11-15, 19-20 are 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, currently allowed) 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’059 teaches a substantially the same method of making zeolite Y particles comprising forming a zeolite precursor, two-stage thermally treating the reaction solution as that of instantly claimed, except aluminum source materials as that of instantly claimed as claims 2-5. But such limitations have 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 aluminum source material 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, 9 and 11-15, 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 and 15-21 of copending Application No. 18/480,949 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’949 teaches a substantially the same method of making zeolite Y particles comprising forming a zeolite precursor solution, two-stage thermally treating the gel mixture as that of instantly claimed (claim 12) as that of instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5, 7, 9 and 11-15, 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-21 of copending Application No. 18/500,496 (reference application). 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 making zeolite Y particles comprising forming a zeolite precursor solution, two-stage thermally treating the gel mixture as that of instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5, 7, 9 and 11-15, 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-22 of copending Application No. 18/500,513 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’513 teaches a same or substantially the same method of making zeolite Y particles comprising forming a zeolite precursor, two-stage thermally treating (claim 7-8) the mixture as that of instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5, 7, 9 and 11-15, 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 and 19-20 of copending Application No. 18/502,495 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’495 teaches a same or substantially the same method of making zeolite Y particles comprising forming a zeolite precursor, two-stage thermally treating the mixture as that of instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-5, 7, 9 and 11-15, 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 7 and 9-21 of copending Application No. 18/585,488 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’588 teaches a same or substantially the same method of making zeolite Y particles comprising forming a zeolite precursor, two-stage thermally treating the mixture as that of instantly claimed.
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
