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 .
Use Claims
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.
Claim 14 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
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.
Claim 14 provides for the use of a composition, 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 18 is rejected under 35 U.S.C. 101 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 for example Ex 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).
In order to overcome this rejection, it is advised that the applicant change “use” language in Claim 14 recite a process, and add process steps.
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 1-17 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.
In claims 1, 4-6, 8-10, 12, 16-17, and their dependent claims, the terms “preferably” and “further preferably” render the claims indefinite since it is unclear whether the limitations following “preferably” and “further preferably” are part of the claim. For the purposes of examination, the limitations following “preferably” and “further preferably” have been disregarded.
Allowable Subject Matter
Claims 1-13 and 15-17 would be allowable if rewritten or amended 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. Claim 14 would also be allowable if the additional rejection under 35 USC 101 regarding the use claim language were overcome. The prior art does not teach or render obvious a silicon-aluminum zeolite having the claimed silicon/aluminum ratio and diffraction peaks having the recited relative intensity characteristics. Additionally, the closest prior art does not teach obtaining a silicon-aluminum zeolite from a method using the combination of structure directing agents recited in claim 7. Burton (U.S. Pat. No. 9,504,995) discloses a method of synthesizing a crystalline molecular sieve from a reaction mixture comprising a tetravalent element which can be silicon and a trivalent element which can be aluminum, where a combination of structure directing agents can be used, but the first structure directing agent of Burton is a tetraethylammonium rather than a tetramethylammonium, and the second structure directing agent of Burton is a saturated heterocyclic nitrogen compound rather than a pyridinium-based compound. The resulting zeolites of Burton, even when silicon, aluminum, and both structural agents are used, would therefore not produce zeolites having the claimed diffraction peaks and relative intensities.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771