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 Objections
Claims 1-10 are objected to because of the following informalities: Appropriate correction is required.
Claims 1-10 should each start with “A”.
In line 4 of claim 1, “and” should be inserted before “a zeolite Y”.
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 1-10 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 1-3 and their dependent claims do not use proper Markush language. The hydrogenating-dehydrogenating element of claim 1 should be “selected from the group consisting of the elements of group VIB, the non-noble elements of group VIII, and mixtures thereof”. The group VIII elements of claim 2 should be “selected from the group consisting of iron, cobalt, nickel, and mixtures thereof”. The group VIB elements of claim 3 should be “selected from the group consisting of tungsten, molybdenum, and mixtures thereof”.
In claims 2-5, the terms “preferably”, “very preferably”, and “even more preferably” render the claims indefinite because it is unclear whether the limitations following those terms are part of the claim. For the purposes of examination, the limitations following “preferably”, “very preferably”, and “even more preferably” have been disregarded.
In claim 1, it is not meant by “at least 50% of the compounds have an initial boiling point above 300° C and a final boiling point below 650° C”, since a hydrocarbon compound will have a specific boiling point and not a boiling range. For the purposes of examination, the claim has been interpreted as requiring at least 50% of the hydrocarbon feedstock to boil between 300° C and 650° C.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 requires zeolite Y to have a Bronsted acidity of greater than 300 micromol/g, but this limitation is already present in claim 1, from which claim 4 depends. As noted in paragraph 4 above, the narrower preferred ranges recited in claim 4 are indefinite and do not further limit the claims. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (U.S. Pat. No. 2002/0094931).
In paragraphs 98-99 (Examples 13-14) and Table 4 (Catalysts A and B) Wang discloses catalysts comprising a zeolite SSY3 or SSY2, porous alumina, and amorphous silica-alumina, which are formed into supports and impregnated with a solution comprising tungsten and nickel, which meet the limitations of the group VIB and group VIII elements of claim 1. The porous alumina and amorphous silica-alumina is a mineral matrix, as recited in claim 1. In Table 1 (following paragraph 55) Wang discloses that SSY2 has a lattice parameter (unit cell size) of 24.37Å, within the ranges recited in claims 1 and 5, a specific surface area of 738 m2/g, within the range recited in claim 1, a pore volume of 0.362 ml/g, within the range recited in claim 1, and an infrared acidity of 684 micromol/g (0.684 mmol/g), which is more than 95% Bronsted acid (paragraph 11 of Wang), leading to a Bronsted acidity within the ranges recited in claims 1 and 4. Wang further discloses in Table 1 that SSY3 has a lattice parameter (unit cell size) of 24.33Å, within the ranges recited in claims 1 and 5, a specific surface area of 704 m2/g, within the range recited in claim 1, a pore volume of 0.336 ml/g, within the range recited in claim 1, and an infrared acidity of 482 micromol/g (0.482 mmol/g), leading to a Bronsted acidity within the ranges recited in claims 1 and 4.
In Table 4 Wang discloses that catalyst A (Example 13) has a nickel oxide content of 5.6% and a tungsten oxide content of 22.8%, within the ranges recited in claims 2-3, and catalyst B (Example 14) has a nickel oxide content of 4.8% and a tungsten oxide content of 19.6%, also within the ranges recited in claims 2-3.
The catalysts of Wang also comprise a zeolite beta, and the weight ratio of zeolite SSY3 (corresponding to zeolite Y of the claims), to zeolite beta is 1.53 in Example 13, within the range recited in claim 6.
In Table 4 Wang discloses that the support of Catalyst A comprises 20% by weight of zeolite Y, 13% by weight of zeolite beta, and 67% by weight of the mineral matrix. Since the tungsten and nickel oxide make up a total of 28.4% by weight of Catalyst A, the support is 71.6% by weight of Catalyst a, and the concentrations of zeolite Y, zeolite beta, and mineral matrix relative to the overall Catalyst A are therefore about 14.3%, about 9.3%, and about 47.7% by weight respectively, all within the ranges recited in claims 7-9. A similar calculation for Catalyst B leads to a zeolite Y concentration of about 11.3%, a zeolite beta concentration of about 11.3%, and a mineral matrix concentration of about 52.9%, again within the ranges recited in claims 7-9.
In light of the above, claims 1-9 are anticipated by Wang.
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 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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of O’Hara (U.S. Pat. No. 4,309,277).
The discussion of Wang in paragraph 9 above is incorporated here by reference. Wang discloses a catalyst meeting the limitations of claim 1. In paragraph 102 and Tables 5-6 (paragraphs 105-106) Wang discloses using the catalyst of Example 13 (Catalyst A) as a hydrocracking catalyst for the hydrocracking of a vacuum gas oil (VGO). In Table 5 and paragraph 48 Wang discloses that 50% of the distillate has a boiling range between 426° and 551° C, within the range recited in claim 10, and in Table 6 Wang discloses that the hydrocracking is carried out at a pressure of 147 MPa, a hydrogen to hydrocarbon volume feedstock of 1500, and an HSV of 1.5 h-1, all within the ranges recited in claim 10. Wang does not specifically disclose the reaction temperature for the hydrocracking reaction.
O’Hara, in column 1 lines 44-62, discloses the conversion of hydrocarbons in the presence of a catalyst comprising alumina, zeolite, and at least one group VIB or VIII metal, similar to the catalyst of Wang. In column 6 lines 13-20 O’Hara discloses hydrocracking a vacuum gas oil in the presence of the catalyst at a temperature of about 377° C (710° F), within the range recited in claim 10. In column 5 lines 1-6 O’Hara discloses broader “typical hydrocracking conditions”, including a temperature of about 204° C (400° F) to about 482° C (900° F), heavily overlapping the range recited in claim 10. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Carrying out the hydrocracking reaction of Wang at the temperature disclosed by O’Hara therefore meets the limitations of claim 10.
It would have been obvious to one of ordinary skill in the art to carry out the hydrocracking reaction of Wang at the temperature disclosed by O’Hara, since O’Hara teaches that it is a suitable reaction temperature for hydrocracking of a vacuum gas oil in the presence of a similar catalyst to Wang.
Claims 1-5, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (U.S. PG Pub. No. 2016/0121313).
In paragraph 1 Zhang discloses an improve hydrocracking catalyst comprising a stabilized Y zeolite. In paragraph 47 Zhang discloses that the catalyst comprises the zeolite, a support component, an amorphous silica alumina material, and one or more metals. The amorphous silica alumina and the supports disclosed in paragraph 55 of Zhang meet the limitations of the porous mineral matrix of claim 1. In paragraph 60 Zhang discloses that the metals are selected from group VIB (group 6) or group VIII (groups 8 through 10) of the periodic table, as recited in claim 1, and discloses various exemplary metals and combinations of metals. In Table 3 (paragraph 58), Zhang discloses that the molecular sieve can have a lattice parameter (unit cell size) of 24.15 to 24.35Å, within the range recited in claim 1 and overlapping the range recited in claim 5, a surface area of 600 to 900 m2/g, overlapping the range recited in claim 1, a micropore volume of 0.25 to 0.40 mL/g, overlapping the range recited in claim 1, and a Bronsted acidity of 200 to 1200 micromol/g (0.2 to 1.2 mmol/g), overlapping the ranges recited in claims 1 and 4.
In paragraph 61 Zhang discloses that the catalyst can comprise 3 to 5% by weight of nickel oxide, within the range recited in claim 2, and 15 to 35% by weight of tungsten oxide, overlapping the range recited in claim 3. In paragraph 57 Zhang discloses that the molecular sieve material (zeolite Y) in the catalyst can be 5 to 60% by weight, overlapping the range recited in claim 7. In Table 1 (paragraph 47) Zhang discloses that the support and amorphous silica-alumina (ASA) are present in concentration ranges leading to a porous mineral matrix content overlapping the range recited in claim 9.
The difference between Zhang and the currently presented claims is that some of the ranges of Zhang overlap the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);”
Conclusion
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771