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.
Terminal Disclaimer
Applicant’s terminal disclaimers disclaiming the terminal part of the statutory term of any patent granted on this application that would extend beyond the expiration date of any patent granted on application numbers 17/584, 803 and 17/390,199 have been recorded. The prior non-statutory double patenting rejection over these applications are withdrawn.
Information Disclosure Statements
The Information Disclosure Statements filed on 16 October 2025 and 8 July 2025 have been received and considered by the Examiner.
Claim Amendments
Applicant’s amendments to claims 22 and 32 in the reply filed on 23 December 2025 have been received and considered for this action. These amendments overcome the prior claim objections, which are withdrawn.
Response to Arguments
Applicant’s arguments, see pages 6-8 of the reply filed 23 December 2025, with respect to the rejection of claims 21-32 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the prior rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made in view of Mädler et al. (NPL document 1 on the IDS filed 8 July 2025), Millet (EP 0347349 A1), and Han et al. (J. Prosthetic Dentistry, 2008, 100(6), 465-473), as analyzed below.
Applicant’s arguments regarding unexpected results, see pages 8-9 of the reply filed 23 December 2025, have been fully considered but are not persuasive. The fact that introduction of cerium nanoparticles to elastomeric polymers can improve their mechanical properties is known in the art (e.g.: Han et al. J. Prosthetic Dentistry, 2008, 100(6), 465-473; Xie, et al. Rare Met. 2021, 40(12), 3685–3693). Applicant’s observation of the same results is therefore not unexpected.
Applicant’s arguments with respect to the non-statutory double patenting rejections over applications 17/737,021 and 17/584,803 have been considered but are not persuasive at this time. Though these applications do have later filing dates than the present applications, the NSDP rejections will be maintained until they are the only remaining rejections of the claims in the present application, at which time they will be withdrawn, or until Applicant otherwise overcomes these rejections. MPEP 804(I)(B)(1)(b)(i).
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 21-32 are rejected under 35 U.S.C. 103 as being unpatentable over Mädler et al. (NPL document 1 on the IDS filed 8 July 2025) in view of Millet (EP 0347349 A1). The provided English machine translation of Millet (EP 0347349 A1) is relied upon in the analysis below.
Regarding claim 21, Mädler teaches a composition comprising cerium oxide nanoparticles (abstract) which are nanoporous (Fig. 10) and assembled into macro-structures (aggregates; p. 1360, col. 2, ¶ 1). Mädler further teaches the composition comprising cerium oxide nanoparticles having an average diameter of approximately 15.5 nm with no large crystals (a single average crystal size of 15.5 nm and no large crystals; Figs. 4), which will meet the limitation of a plurality of particles having a size in the range of 10 nm to 100 nm, as further supported by Fig. 9. Mädler further teaches that the aggregates (macro-structures) have average pore diameters of about 30 nm (p. 1360, col. 2, ¶ 1), which falls in the instantly claimed range of 10 nm to 1100 nm. While Mädler is silent on the size of the pre-calcined aggregates, they also teach that the cerium oxide composition does not undergo structural collapse (p. 1362, ¶ 1) and show that the post-calcined composition is comprised of porous macrostructures of nanoparticles less than 100 nm with sizes in the claimed range (Fig. 12). It is therefore reasonable to conclude that the pre-calcined structures have similar sizes.
Alternatively, the post-calcined material depicted in Fig. 12 is also comprised of nanoporous cerium oxide nanoparticle macro-structures, comprising a plurality of cerium oxide nanoparticles having a diameter in the range of 10 nm to 100 nm present as a macro-structure having macro-structure diameter in the range of 50 nm to 30,000 nm and macro-structure pore diameter in the range of 10 nm to 1100 nm.
Mädler also teaches that their cerium oxide composition has high surface area (abstract), but does not teach the cerium oxide structures in a polymeric elastomer.
However, Millet teaches that high surface area cerium oxide significantly improves the flame resistance of elastomers ([0003]), and that it is preferable to use cerium oxide with a surface area greater than 85 m2/gm ([0034]), a property possessed by the cerium nanoparticle macrostructures of Mädler.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the porous cerium oxide nanoparticle macrostructure of Mädler in a polymeric elastomer, as taught by Millet. One of ordinary skill in the art would have been motivated to do so in order to produce elastomers with improved flame resistance, as taught by Millet.
Regarding claim 22, modified Mädler teaches the composition of claim 21, and Millet further teaches the cerium oxides being present at between 0.1 and 25 parts per 100 parts by weight of polymer ([0034]), which overlaps with the instantly claimed range of 0.1% to 5.0%.
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 merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claims 23-24, modified Mädler teaches the composition of claim 21 where the average cerium oxide nanoparticle size is about 15.5 nm, and where the particle size is relatively uniform (Fig. 4). As such, the composition appears to have a plurality of the nanoparticles with sizes inside the ranges of the instant claims.
Regarding claim 25, modified Mädler teaches the composition of claim 21 where the average cerium oxide nanoparticle size is about 15.5 nm, which lies near but outside the range of 20 nm to 30 nm recited in the claim, and where the particle size is relatively uniform (Fig. 4). Mädler also teaches that surface area and crystal size can be controlled by the liquid feed rate and oxygen dispersion gas flow rate (p. 1359, col. 2, ¶ 1), and that larger particles (with smaller surface area) have greater thermal stability (lower initial As (8Ce3) was more stable than the 5Ce5 powder; p. 1361, col. 1, ¶ 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to vary the size of the nanoparticles prepared by method of Mädler, including to within the claimed range of 20 nm to 30 nm. One of ordinary skill in the art would have been motivated to do so in order to optimize the thermal stability of the particles with the properties of the elastomers incorporating them.
It is also noted that the courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed range of particle size merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claims 26-31, modified Mädler teaches composition of claim 21 where the macro-structure pore diameter is in the range of about 30 nm (p. 1360, col. 2, ¶ 1), which lies within each of the macro-structure pore diameter ranges recited in claims 26-30 and just outside the range of 10 nm-25 nm recited in claim 31.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, 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). One skilled in the art would expect structures with pores of 30 nm to have substantially similar properties to a structure with pores of 25 nm.
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 32, modified Mädler teaches the composition of claim 21 where Millet teaches the polymeric elastomer is a polysiloxane elastomer ([0014], [0049]).
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Mädler et al. (NPL document 1 on the IDS filed 8 July 2025) in view of Millet (EP 0347349 A1), as applied to claim 22 above, and further in view of Han et al. (J. Prosthetic Dentistry, 2008, 100(6), 465-473). The provided English machine translation of Millet (EP 0347349 A1) is relied upon in the analysis below.
Regarding claim 38, modified Mädler teaches the composition of claim 22 including incorporating the macrostructure at said level of 0.1 wt% to 5.0 wt%, as analyzed for claim 22, but is silent with regards to the properties of tensile strength, elongation, and modulus recited in the instant claim.
Han is also directed to improving elastomer properties through additives and further teaches that addition of cerium nanoparticles into a silicone elastomer at levels of 2.0% increases the elongation of the elastomer by 32% (Table IX), and that the level of improvement in elongation depends on the level of the additive, as seen in Table IX.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the level of the cerium nanoparticles in the elastomers by routine experimentation in order to achieve the optimal increase in elongation, including into the claimed range. One of ordinary skill in the art would have been motivated to do so in order to improve the mechanical properties, and elongation in particular, of the elastomeric product.
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 21-32 and 38 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, the size of limitations of instant claim 21, and the weight percents of instant claim 22 (claim 10). The remaining narrower size ranges of instant claims 23-31 are obvious variations. The properties recited in claim 38 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 21-32 and 38 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, 22 and 33, 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 38 are expected to follow from forming the compositions recited in the claims of the ‘021 application.
This is a provisional nonstatutory double patenting rejection.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Xie et al. (Rare Met. 2021, 40(12), 3685–3693) discloses cerium oxide nanoparticle macrostructures (aggregates) incorporated into elastomers with improved mechanical properties.
Conclusion
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735