DETAILED ACTION
This is the initial Office action for application SN 18/880,257 having an effective date of 30 December 2024 and a provisional priority date of 30 June 2022. A preliminary amendment was filed on 30 December 2022. Claims 1-25 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 10, 12, 15, 16, 20, 22 and 25 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.
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 10 recites the broad recitation “a temperature in the range of about 300°F to about 800°F (149°C to 427°C)”, and the claim also recites “or 450°F to 750°F (232°C to 399°C)” which is the narrower statement of the range/limitation.
Claim 12 recites the broad recitation “a temperature in the range of about 300°F to about 800°F (149°C to 427°C)”, and the claim also recites “or 450°F to 750°F (232°C to 399°C)” which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “zeolite SSZ 91 having a silicon oxide to aluminum oxide ratio of 40 to 220”, and the claim also recites “or 70 to 160, or 80 to 160, or 80 to 140, or 100 to 160” which is the narrower statement of the range/limitation.
Claim 16 recites the broad recitation “zeolite SSZ 91 having at least about 80% polytype 6 of the total ZSM-48-type material present in the zeolite SSZ-91”, and the claim also recites “or at least about 90% polytype 6 of the total ZSM-48-type material present in the zeolite SSZ-91” which is the narrower statement of the range/limitation.
Claim 20 recites the broad recitation “a silicon oxide to aluminum oxide ratio of 40 to 220”, and the claim also recites “or 70 to 160” which is the narrower statement of the range/limitation.
Claim 25 recites the broad recitation “the diesel fuel exhibits a cloud point at least 10°C lower than the cloud point of the hydrotreated feedstock and a pour point at least 10°C lower than the pour point of the hydrotreated feedstock”, and the claim also recites a cloud point and a pour point 20°C lower, and a cloud point and pour point at least 30°C lower, 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 22, the phrase "for example" in line 3 renders the claim indefinite because it is unclear whether the limitation(s) 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) 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Helton et al (US 2010/0084313) in view of OJO et al (US 2020/0299142).
Helton et al [“Helton”] disclose a process for improving the yield and properties of jet fuel from a kerosene feedstock, wherein the kerosene feedstock is hydrotreated and dewaxed (hydroisomerized) to produce a jet fuel having improved properties [0001].
In one embodiment, Helton discloses that suitable feedstocks include conventional crude-oil derived kerosene as well as paraffinic hydrocarbons from other refinery sources such as hydrocracker kerosene. Helton discloses that other process feeds may include paraffinic hydrocarbons derived from bio-component sources such as triglyceride vegetable and animal fats, including related compounds such as fatty acid methyl esters, and oil producing algae. Helton discloses that for feeds containing oxygenates, it is preferable to pretreat the feed via hydrogenation to remove oxygen and to convert unsaturated side chains to paraffinic hydrocarbons. Helton discloses that conversion of paraffinic hydrocarbons to jet fuel via hydroisomerization is a special feature of the process and catalyst system of the invention [0012].
Helton discloses that another benefit of the inventive process is that it could extend the yield of dual-purpose kerosene, i.e., kerosene that may be used as No.1 diesel for winter blending or jet fuel depending upon the market need [0015].
Helton discloses that kerosene feedstocks typically contain sulfur and/or nitrogen contaminants in an amount that is unacceptable for jet fuels and, accordingly, the kerosene feedstocks are contacted with a hydrotreating catalyst [0016]-[0022]. Helton discloses that the hydrotreating catalyst contain at least one Group 6 metal and at least one Group 8-10 metal [0016]. Helton discloses that hydrotreating conditions include temperatures in the range of 240°C to 400°C, at pressures in the range from 200 to 3000 psig, a space velocity of from 0.1 to 10 LHSV, and a hydrogen treat gas rate of from 18 to 890 m3/m3 [0019].
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Helton discloses that the effluent from the hydrotreater is then contacted with a hydroisomerization dewaxing catalyst to produce a hydrodewaxed kerosene feedstock [0023]. Helton discloses that the dewaxing catalyst typically contains a metal hydrogenation component and a 10 member ring 1-D molecular sieve supported on a refractory metal oxide [0023]. Helton discloses that the 10-member ring molecular sieve is preferably ZSM-48 [0025].
Helton discloses that effective hydrodewaxing conditions include temperatures in the range of 240°C to 400°C, at pressures in the range from 200 to 3000 psig, a space velocity of from 0.1 to 10 LHSV, and a hydrogen treat gas rate of from 18 to 890 m3/m3 [0028].
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Applicant’s independent claims 1, 2 and 3 differ from the process disclosed in Helton wherein the hydroconversion catalyst comprises zeolite SSZ-91. Although not disclosed in Helton, OJO et al [“OJO”] is added to teach that a family of new crystalline molecular sieves designated as SSZ-91, which are structurally similar to sieves falling within the ZSM-48 family of molecular sieves, may be used in hydrocarbon conversions. OJO discloses that the term “molecular sieve” and “zeolite” are synonymous [0038].
OJO discloses that molecular sieve SSZ-91 is useful for a variety of hydrocarbon conversion reactions such as hydrocracking, dewaxing, olefin isomerization, alkylation and isomerization or aromatic compounds, and the like [0072].
OJO discloses that molecular sieve SSZ-91 is characterized as: (1) having a low degree of faulting, (2) a low aspect ratio that inhibits hydrocracking as compared to conventional ZSM-48 materials having an aspect ratio of greater than 8, and (3) is substantially phase pure [0015]. OJO discloses that in one aspect, there is provided a molecular sieve having a mole ratio of 40 to 200 of silicon oxide to aluminum oxide [0017]. OJO discloses that SSZ-91 materials are composed of at least 70% polytype 6 of the total ZSM-48 type material presented in the product [0018]. In one embodiment, OJO teaches that the SSZ-91 is composed of at least 80% polytype 6 of the total ZSM-48-type material present in the product. In another embodiment, OJO teaches that the SSZ-91 material is composed of at least 90% polytype 6 of the total ZSM-48-type material present in the product [0074].
OJO discloses that the X-ray diffraction pattern lines of Table 3 are representative of calcined SSZ-91 made in accordance with the methods described herein, which is identical to the X-ray diffraction pattern set forth in the Table of dependent claim 14.
Thus, the examiner is of the position that at the time the invention was made it would have been obvious to have used molecular sieve SSZ-91 disclosed in OJO, in place molecular sieve ZSM-48-type disclosed in Helton, if the known imparted properties were so desired. OJO discloses that molecular sieve SSZ-91 is characterized as: (1) having a low degree of faulting, (2) a low aspect ratio that inhibits hydrocracking as compared to conventional ZSM-48 materials having an aspect ratio of greater than 8, and (3) is substantially phase pure [0015].
Further, 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
August 13, 2026
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