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 .
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.
Claims 1 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 10 of copending Application No. 18/713,332. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application recites catalyst comprising Y zeolite and zeolite beta in ratios of from 1 to 40 which overlaps the claimed range and wherein the zeolite Y has an initial lattice parameter a0 of the unite cell of strictly less than 24.40 A, which does not overlap the claimed limitation. While the claims recite an initial lattice parameter a0 of the unit cell is greater than 24.42A, the quantities are so close as to be obvious. The process of hydrocracking using the catalyst is also taught.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 18 of copending Application No. 18/713,994 Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application recites almost identical composition but requires that the zeolite Y has an initial lattice parameter of the unit cell of greater than 24.50A, and the ratio of zeolite Y to zeolite beta is from 5 to 12 which does not overlap the claimed limitation of strictly greater than 12. However, a limitation of 5 to 12 is obviates the limitation of strictly greater than 12 since they are so close. For instance, 12 and 12.00001 which is strictly greater than 12 are obvious. The process of hydrocracking using the catalyst is also taught.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 2 – 5, 9 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation 0.5 to 8%, and the claim also recites 0.5 to 6% which is the narrower statement of the range/limitation. Claims 3 – 5, 9 also recite broader and narrower preferred ranges. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2007/0102321)
In regards to claim 1, Wang teaches hydrocracking catalyst containing beta and Y zeolites for producing naphtha wherein the Y zeolite has a unit cell size from 24.38 to 24.50 angstrom (A) and the catalyst has a ratio of Y zeolite to beta zeolite of from 5 to 12, and which contains a metal such as cobalt, nickel, tungsten or molybdenum and their combinations which provide Group VIb non-noble metals and/or Group VII metals [title, 0007]. While the lattice parameter of the unit cell of strictly greater than 24.50 is not overlapped, the value of 24.50 is very close as to be obvious. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In regards to claims 2, 3, Wang teaches the catalyst wherein the hydrogenation metals including tungsten, molybdenum, cobalt and/or nickel is/are present at from 10 to 30%, and the tungsten (i.e., Group VIb) can be present at from 8 to 22%, which provides a balance of other metals such as including the Group VIII metals of from 8 to 22% [0041].
In regards to claim 5, Wang teaches the catalyst having the claimed limitation as previously stated.
In regards to claim 6, 7, Wang teaches the catalyst having zeolite Y in amounts of from about 45% to about 60% by weight of the catalyst [0039]. Since the ratio of zeolite Y to beta is 5 to 12, the amount of zeolite beta would be within the claimed range as well.
In regards to claim 8, Wang teaches the catalyst which comprises the zeolites in amounts overlapping the claimed range [0039]. Zeolites are porous mineral matrices.
In regards to claim 9, Wang teaches the catalyst having the claimed limitation as previously stated.
In regards to claim 10, Wang teaches the process of hydrocracking comprising providing hydrocarbon feed having boiling point of above 340C and ending at below about 565C or below about 482C, and wherein hydrogen is fed at a rate of about 168 to about 1884 ltr/ltr of the feed, and the process takes place at 232C up to 454C at pressures of 5171 kpa (5.171 MPa) to 24132 kpa (24.132 MPa), and having a feed rate of 0.3 to 3 hr-1 [0046, 0047].
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771