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 .
Summary
This is the initial Office action based on application 18888998 filed 9/18/24.
Claims 1-20 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 12/23/2025 and 10/14/2024 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
Drawings
The Drawings filed on 9/18/2024 are acknowledged and accepted by the examiner.
Specification
The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01
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 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 of this title, 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over AL-SHAFEI ET AL. (US PG PUB 20210130178) in its entirety. Hereby referred to as AL-SHAFEI.
Regarding claims 1-20:
AL-SHAFEI teaches in para [0010] Applicant has recognized a need for systems and methods to continuously and consistently produce characterizable nano-sized BEA zeolite crystals at desired size ranges including a metal oxide, for example a transition metal oxide. Prior art technical problems include producing consistently sized nano-sized BEA zeolite crystals and continuously producing such BEA zeolite crystals to obtain, and characterize, them at a large industrial scale. There exists a need for framework structure improvements and re-stabilization of the zeolite via specific treatment and incorporation with selected metal oxides in order for BEA zeolite to be applied for hydrocarbon conversion reactions with or without steam cracking. The produced nano-sized BEA zeolite crystals with a metal oxide disclosed here are characterized and can be used in oil upgrading technologies and other petrochemical applications, for example as greatly dispersible catalysts.
AL-SHAFEI teaches in para [0013] Systems and methods can be applied to nano-sized crystals of BEA (beta) zeolite in a size range of about 100 nm to about 900 nm in order to convert the zeolite into hydrophobic-like zeolite catalysts through five treatment stages. The produced modified zeolite can then be effectively used for steam cracking for oil conversions, and for other petroleum refinery processing and petrochemical applications.
AL-SHAFEI teaches in para [0020] the step of incorporating at least one metal oxide incorporates a metal oxide selected from the group consisting of: cobalt oxide, nickel oxide, vanadium oxide, zinc oxide, tungsten oxide, niobium oxide, gallium oxide, copper oxide, iron oxide, palladium oxide, platinum oxide, iridium oxide, ruthenium oxide, rhodium oxide, and combinations thereof. Still in other embodiments, the step of incorporating at least one metal oxide includes the use of a metal nitrate solution between about 0.4 M and about 1.2 M, and where the temperature during the step is between about 55° C. and about 75° C., and where the step proceeds for between about 60 min. and about 240 min. In certain embodiments, the step of protonating includes the use of an ammonium nitrate solution, and the ammonium nitrate solution is mixed with the BEA zeolite at a temperature between about 75° C. and about 95° C. for about 3 hours. Still in other embodiments, inline centrifugation is carried out following the steps of desilicating, incorporating at least one metal oxide, and protonating to separate out the BEA zeolite.
AL-SHAFEI teaches in para [0079] suitable feedstocks for conversion include paraffinic hydrocarbons, but feedstocks need not be limited to pure paraffinics. In some embodiments, the feedstock has at least, 5 wt. % paraffins (as measured by high pressure liquid chromatography (HPLC) methods using ASTM D7419) preferably about 10 wt. % paraffins. Feedstocks can be originated from petroleum-based crude oil, refinery streams, gas-to-liquids (GTL) processes, biomass conversion processes, natural gas conversion processes, or other known processes in the art. In some embodiments, paraffins are in the feedstock ranging from C.sub.4 and C.sub.4+, and ethane and propane are less than about 1 wt. % each in the feedstock.
AL-SHAFEI teaches in para [0083] that the term “about” when used with respect to a value or range refers to values including plus and minus 5% of the given value or range. (see also para [0010] – [0083])
Therefore, from the teachings of the references it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
Furthermore, "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417.
In addition, one of ordinary skilled in the art would recognize that adding duplicate / repeating process steps or recognizing additional instrumentation for analysis or additional analysis would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the claim limitations would merely have been expected to have the same functional properties as the prior art product.
Further, the claimed changes in the sequence of performing steps is considered to be prima facie obvious because the time at which a particular step is performed is simply a matter of operator preference, especially since the same result is obtained regardless of when the step occurs. See Ex parte RUBIN, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). With regard to any differences in the claimed conversion amounts, the skilled artisan would have found it obvious to modify the process conditions in order to obtain the desired conversions. Additionally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33 (CCPA 1937). In re Russel, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971)
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical product, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see in re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”).
In conclusion, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985).
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771
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