DETAILED ACTION
This is the initial Office action for application SN 18/719,462 having an effective date of 13 June 2024 and a Foreign priority date of 17 December 2021 (European Patent Office). A preliminary amendment was filed on 13 June 2024. Claims 1-19 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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, 3, 5, 7-10, 13 and 15 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 claim 2, there is no proper antecedent basis for “the molar proportion of olefinic hydrocarbons” (emphasis added) in independent claim 1 since “olefinic hydrocarbons” is not found in claim 1.
In claim 3, “preferably” is indefinite.
In claim 5, “in particular” is indefinite.
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).
Claim 7 recites “the gaseous stream is at least partially recycled to the main reactor stage” and the claim also recites “preferably that the recycled gaseous stream is compressed by a recycle gas blower” which is the narrower statement of the range/limitation.
Claim 8 recites the broad recitation “at least one of the at least one transport fuel streams” and the claim also recites “preferably the jet fuel precursor stream” which is the narrower statement of the range/limitation.
Claim 9 recites the broad recitation “wherein one of the transport fuel streams” and the claim also recites “preferably the jet fuel precursor stream” which is the narrower statement of the range/limitation.
Claim 10 recites the broad recitation “wherein the reactant is methanol or dimethyl ether” and the claim also recites “preferably that the dimethyl ether is derived from methanol” which is the narrower statement of the range/limitation.
Claim 13 recites the broad recitation “a silico-alumino-phosphate molecular sieve catalyst” and the claim also recites “particularly a SAPO-34-catalyst, or a zeolite catalyst” and the claim also recites “in particular a zeolite catalyst of the ZSM-5 type is used” which are narrower statements of the range/limitation.
Claim 15 recites four different occurrences of the broad recitation “an aryl group” and the claim also recites “in particular a phenyl group” which is the narrower statement of the range/limitation.
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.
Regarding claim 15, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim(s) 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rothamel et al. (US 2009/0050531) in view of Han et al (US 2022/0401936).
Rothamel et al. [“Rothamel”] disclose a multistep method for producing synthetic fuels from oxygenates such as methanol and/or dimethyl ether in order to optimize the yield of diesel fuel. Rothamel discloses that synthetic fuels are understood to mean diesel fuel, kero-jet fuel and gasoline [0001].
Rothamel discloses a method for producing synthetic fuels wherein in a first method step a gas mixture composed of methanol and/or dimethyl ether in addition to steam is reacted at temperatures between 300 and 600°C to form olefins preferably containing 2 to 8 carbon atoms [0016], and in a second method step the olefin mixture obtained is oligomerized at elevated pressure to form higher olefins, predominantly containing more than 5, and preferably 10 to 20 carbon atoms [0017].
Rothamel teaches that in both steps a pentasil-type zeolite, silicalite or SAPO is used as a catalyst [0025]. The oligomerization step takes place at a temperature of 200 to 450°C [0031]. Rothamel teaches that after the second method step, a separation of the higher hydrocarbons obtained are separated into a light fraction, a gasoline fraction, and a heavy fraction. Rothamel teaches that after hydrogenation, the heavy fraction forms diesel fuel end product, and with suitable separation, kerojet fuel as well [0003].
Rothamel does not disclose the molar proportion of at least 55 percent of C2 to C5 hydrocarbons in the intermediate product stream. However, since the starting materials of methanol and/or dimethyl ether and the reaction conditions may be the same, it would appear that the molar proportion of C2 to C5 hydrocarbons is the same or similar. Since Rothamel teaches that the oligomerized product of the second method step is preferably 10 to 20 carbon atoms, it would appear that the weight proportion of C10 to C16 hydrocarbons would be at least 15 percent.
Applicant’s method set forth in independent claim 1 differs by using a metal organic framework (MOF) catalyst in the main reactor wherein the intermediate product stream is oligomerized, whereas Rothamel uses a pentasil-type zeolite, silicalite or SAPO as a catalyst. However, Han et al [“Han”] is added to teach that metal organic framework (MOF) catalysts are known in the art for oligomerization of olefins.
Han discloses a heterogeneous oligomerization catalyst including a metal organic framework that includes a plurality of first metal ions coordinated to one or more ligands that have only one N-heterocyclic aromatic group. Han discloses a method of oligomerization that comprises contacting one or more olefins with the heterogeneous oligomerization catalyst to form one or more oligomers, wherein the heterogeneous catalyst comprises the metal organic framework (MOF) and an optional support (Abstract). Han discloses that the metal organic frameworks perform exceptionally well as heterogeneous catalysts for the oligomerization of olefins [0032].
Thus, having the prior art references before the inventors at the time the invention was made it would have been obvious to have used the metal organic framework catalysts taught by Han, as the oligomerization catalyst in the method of Rothamel, with a reasonable expectation of success since Han discloses that such catalysts perform exceptionally well for the oligomerization of olefins.
Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success. The reasonable expectation of success requirement refers to "the likelihood of success” in combining or modifying prior art disclosures to meet the limitations of the claimed invention. See Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375, 2023 USPQ2d 1100 (Fed. Cir. 2023) and Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367, 119 USPQ2d 1171, 1176 (Fed. Cir. 2016).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
April 7, 2026
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