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 .
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.
Claim Amendments
Applicant’s amendments to the claims in the reply filed on 22 July 2026 have been received and considered for this action.
Election/Restrictions
Claims 33-37 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 27 May 2025.
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 21, 23-32 and 39 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.
Claim 21 is rejected because the body of the claim begins with a comma and does not specify what is contained in the polymeric elastomer that comprises the additional features recited. Claims 23-32 and 39 depend upon claim 21 without clarifying what is in the polymeric elastomer and are likewise rejected.
Based on the history of the claims, it appears that the phrase “nanoporous cerium oxide nanoparticle macro-structures” was accidentally deleted. This was confirmed as an inadvertent error by Mr. Steven Grossman in a phone call on 10 September 2026. Therefore, for the purposes of applying prior art, the claim will be interpreted as containing this phrase, but Applicant is requested to re-insert the phrase in any subsequent filing.
Claim Rejections - 35 USC § 102
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 21, 26-28 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie et al. (Rare Met. 2021, 40(12), 3685–3693).
Regarding claim 21, Xie teaches nanoporous cerium oxide nanoparticle macro-structures (abstract and Fig. 4a-4c, copied below), in a polymeric elastomer (polyurethane; Section 2.2.2-2.2.3), comprising a plurality of cerium oxide nanoparticles having a diameter of approximately 50 nm to 100 nm present as a macrostructures having macrostructure diameters of approximately 300 nm to 1200 nm and macrostructure pore diameters of ~10 nm to ~200 nm, as shown in Fig. 4a-c, each of which fall in the instantly claimed ranges.
Xie further teaches these nanoporous cerium oxide nanoparticle macrostructure being present in said polymeric elastomer at levels of 1 wt%, 3 wt% and 5 wt% (Fig. 4, Fig. 7, and Section 2.2.3) and that incorporating the cerium nanoparticle macrostructure at 5 wt% increases the ultimate tensile strength by 36% (from 6.4 MPa to 8.7 MPa; Table S1), increases the elastomer ultimate elongation from 904% to 1174%, and reduces the polymeric elastomer modulus at 100% elongation by about 70% (from ~0.2 MPa to ~0.06 MPa), as determined by comparing the slopes of the stress-strain curves at 100% elongation in Fig. 7a.
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Regarding claims 26-28, Xie teaches the composition of claim 1 where the pore diameters appear to be in the range of 10 nm to 200 nm (Fig 4 a-c), which lie in each of the instantly claimed ranges.
Regarding claim 32, Xie teaches the composition of claim 1 where the polymeric elastomer is polyurethane thermoplastic elastomer (Section 2.2.2-2.2.3).
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.
Claims 23-25 and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (Rare Met. 2021, 40(12), 3685–3693).
Regarding claims 23-25, Xie teaches the composition of claim 21, where the cerium nanoparticles macrostructures formed from octahedral cerium oxide are comprised of a plurality of cerium oxide nanoparticles with diameters of approximately 50-100 nm, as shown in Fig. 4a-c. Xie also teaches that irregular, smaller cerium nanoparticles with sizes of approximately 10 nm can be incorporated into the polymeric elastomer (Fig. 4d-f and Section 2.2.1). Xie further teaches that the elastomers that comprising the macrostructures formed from these nanoparticles have similar properties (Fig. 4d-f, Fig. 7b and Conclusion). In effect, Xie teaches that macrostructures formed from particles of 10-100 nm all have similar effects on elastomer properties.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use macrostructures comprised of nanoparticles anywhere in this range. One of ordinary skill in the art would have been motivated to do so because Xie teaches that one can be substituted for the other with similar effects on the properties of the elastomers.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed ranges of nanoparticles sizes merely represent an obvious variant and/or routine optimization of the sizes in the cited prior art.
Regarding claims 29-31, Xie teaches the composition of claim 21, where the sample with octahedral cerium oxide have pores of approximately 10-200 nm, as viewed in Fig. 4a-c. Xie also teaches macrostructures with smaller pore sizes, as shown in Fig 4d-f.
Xie further teaches that the elastomers formed from these macrostructures with these different pore sizes have similar properties (Fig. 7b and Conclusion).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use macrostructures comprised of macrostructures with pores anywhere in the range of less than 10 to about 200 nm, which overlaps with the instantly claimed range of pore diameters. One of ordinary skill in the art would have been motivated to do so because Xie teaches that such structures can be substituted for the other with similar effects on the properties of the elastomers.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed ranges of pore diameters merely represent an obvious variant and/or routine optimization of the diameters in the cited prior art.
Allowable Subject Matter
Claim 39 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Xie is the closest prior art and teaches all the limitations of the base claim. However, Xie does not teach the cerium oxide nanoparticle macrostructures having a binary size distribution with one set of macrostructures having diameters in the range of 10 nm to 300 nm and pores of 5 nm to 30 nm and another set of macrostructures having diameters in the range of 5,000-30,000 nm with pores in the range of 900 nm to 1100 nm. Nor is there any teaching, suggestion, or motivation in the prior art to include macroparticles with such a distribution in a polymeric elastomer.
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 21 and 23-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/817,858.
The claims of the ‘858 application, and claim 8 in particular, teach all of the limitations of the instant claims, including the presence of a polymer elastomer and the size of limitations and the weight percents of instant claim 21 (claim 10). The remaining narrower size ranges of instant claims 23-31 are obvious variations. The properties recited in claim 21 are expected to follow from forming the compositions recited in the claims of the ‘858 application.
This is a provisional nonstatutory double patenting rejection.
Claims 21 and 23-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-55 of copending Application No. 18/737,021.
Regarding instant claim 21 and 32, the claims of the ‘021 application, in particular claims 4, 16-18 and 20-21, teach all of the limitations of the instant claims. The remaining narrower size ranges of instant claims 23-31 are obvious variations in view of those disclosed in the ‘021 application. The properties recited in claim 21 are expected to follow from forming the compositions recited in the claims of the ‘021 application.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments with respect to point 1, pages 7-8 of the reply filed 22 July 2026, have been fully considered but they are not persuasive.
Applicant argues under “Point 1” that because Millet is not specific that their teaching applies to cerium “macro-structures” that one of ordinary skill in the art would not have found it obvious to incorporate the cerium structures of Madler at the levels suggested by Millet. This is not persuasive because there is nothing in Millet to suggest that the levels of cerium they teach are applicable only to cerium nanoparticles. Instead, Millet teaches a weight percent of high surface area cerium oxide that should be used ([0034]), the macrostructures of Madler are one example of a high-surface area cerium oxide, and therefore it would have been obvious to incorporate the macrostructures of Madler at the levels suggested by Millet.
Applicant's arguments with respect to point 2, pages 8-9 of the reply filed 22 July 2026, have been fully considered and are persuasive in that Madler and Millet alone do not teach all the features of the amended claim. Therefore, the prior rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made view of Xie, as analyzed above.
Applicant’s arguments with respect to point 3, page 9 of the reply, have been fully considered, but are moot with respect to Han and unpersuasive with respect to Xie.
While Xie may cite some properties specific to the nanoparticles, and not macrostructures, it is noted that the elastomers of Xie do include macrostructures of the sizes required by the instant claims, as evidenced by Figure 4 of Xie and further analyzed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
